`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 51
`Date: September 21, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2022-01299
`PATENT 7,761,127 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`On September 8, 2023, Patent Owner sent an e-mail to the Board
`requesting authorization to file (1) a motion to strike portions of the
`Petitioner Reply (Paper 45) and evidence submitted with the Reply
`specifically, Exhibits 1050–1054, and paragraphs 32–52 of Dr. Anthony’s
`Supplemental Declaration (Ex. 1055); and (2) a new expert witness
`declaration with its sur-reply responsive to those portions of the Petitioner
`Reply and evidence. Ex. 3004.
`On September 14, 2023, the Board (Judges Cocks and Pollock) held a
`telephone conference with counsel for both parties to discuss Patent Owner’s
`requests. Patent Owner’s counsel had arranged for a court reporter to
`transcribe the phone call. Accordingly, we instructed Patent Owner to file
`the resulting transcript as an exhibit. Once filed, that transcript will
`constitute the official record of the telephone conference.
`In this Order, we discuss the results of the telephone conference as to
`each of Patent Owner’s requests (1) and (2).
`
`(1) REQUESTED MOTION TO STRIKE
`We denied Patent Owner’s request for authorization to file a motion to
`strike portions of the Petitioner Reply, and evidence submitted with the
`Reply. Based on our review of the Reply and the evidence submitted with
`the Reply, and our consideration of the arguments presented during the
`telephone conference, we concluded that Patent Owner’s already-authorized
`sur-reply is a sufficient procedural vehicle for Patent Owner to discuss the
`issues underlying the requested motion to strike.
`
`2
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`(2) REQUESTED SUBMISSION OF NEW EVIDENCE WITH
`PATENT OWNER SUR-REPLY
`During the telephone conference, we took under advisement Patent
`Owner’s request for authorization to file a new expert witness declaration
`with its sur-reply. We hereby authorize Patent Owner to file a new expert
`witness declaration with its sur-reply directed to the objected-to portions of
`the Petitioner Reply and evidence addressed therein. As a default rule, a
`sur-reply “may not be accompanied by new evidence other than deposition
`transcripts of the cross-examination of any reply witness.” 37 C.F.R.
`§ 42.23(b); see PTAB Consolidated Trial Practice Guide (Nov. 2019)
`(“CTPG”)1, 73–74. However, we have authority to waive or suspend that
`limitation in specific cases and to place conditions on the waiver or
`suspension. See, e.g., 37 C.F.R. § 42.5(b). We do so in this case, for the
`following reasons.
`The parties dispute whether a person of ordinary skill in the art at the
`time of the invention would have been motivated to use a bulk temperature
`from a thermal mass to estimate LED operating wavelengths, based on the
`state of the art prior to the effective filing date of the US 7,761,127 B2
`patent.
`In its Response, Patent Owner relied on Dr. King’s expert testimony
`to support its arguments. See Paper 37, 51–57 (citing Ex. 2151 ¶¶ 177–183).
`In addressing the state of the art prior to the ’127 patent, Dr. King’s
`testimony discussed additional references not cited by Petitioner. Ex. 2151
`¶¶ 40, 47–51.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`In its Reply, Petitioner submitted new evidence responding to Patent
`Owner’s arguments in the Response and the evidence submitted with the
`Response concerning the state of the art prior to the ’127 patent. Relevant
`here, the Reply included Exhibits 1050–1054, and paragraphs 32–52 of
`Dr. Anthony’s Supplemental Declaration.
`Although the objected-to Exhibits and testimony appear to be
`reasonably responsive to issues raised by Patent Owner and Dr. King,
`resolution of the dispute presented in this case would benefit from further
`expert testimony on behalf of Patent Owner. In addition to our default
`restriction that a “sur-reply may only respond to arguments raised in the
`corresponding reply,” any such additional testimony shall be limited to the
`subject matter identified in Patent Owner’s email of September 8. See
`37 C.F.R. § 42.23(b); Ex. 3004.
`
`(3) BRIEFING AND CASE SCHEDULE CONSIDERATIONS
`During the September 14 telephone conference, we instructed the
`parties to submit by email a joint proposal with respect to briefing
`procedures and scheduling to accommodate Patent Owner’s filing of a new
`expert witness declaration with its sur-reply. Unable to reach consensus, the
`parties provided separate proposals. Ex. 3005. Upon consideration of the
`parties’ proposals, we generally adopt Patent Owner’s proposal, with the
`caveat that no additional words or pages are authorized for the sur-reply.
`Accordingly, Patent Owner will adhere to the existing October 11,
`2023 deadline for filing its sur-reply, along with the new expert witness
`declaration we have authorized. See Paper 40. The sur-reply will comply
`with the Board’s default 5,600-word count limitation. See 37 C.F.R.
`§ 42.24(c)(4).
`
`4
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`
`Petitioner may cross-examine Patent Owner’s declarant via
`deposition, regarding testimony proffered with Patent Owner’s sur-reply.
`The deposition shall take place on or before October 17, 2023.
`Petitioner also is authorized to file observations on cross-examination
`from that testimony, not to exceed 7 pages. Any such observations shall be
`filed on or before October 23, 2023.
`At this time, we do not discern a need to delay oral argument,
`currently scheduled for November 1, 2023. Additionally, service of oral
`argument demonstratives will remain due on or before October 25, 2023.
`
`(4) ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s e-mail request for authorization to
`file a motion to strike is denied;
`FURTHER ORDERED that Patent Owner is authorized to file a new
`expert witness declaration with its sur-reply on or before October 11, 2023;
`FURTHER ORDERED that Petitioner is authorized to cross-examine
`Patent Owner’s witness via deposition regarding testimony proffered with
`the Patent Owner sur-reply on or before October 17, 2023; and
`FURTHER ORDERED that Petitioner is authorized to file
`observations on the cross-examination of Patent Owner’s declarant not to
`exceed 7 pages on or before October 23, 2023.
`
`
`5
`
`
`
`IPR2022-01299
`Patent 7,761,127 B2
`
`FOR PETITIONER:
`
`Walter Renner
`Nicholas Stephens
`Andrew Patrick
`Dan Smith
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`dsmith@fr.com
`
`
`FOR PATENT OWNER:
`
`Irfan Lateef
`Ted M.Cannon
`Jarom Kesler
`Jacob Peterson
`KNOBBE, MARTENS,
` OLSON & BEAR, LLP
`2ial@knobbe.com
`2tmc@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`6
`
`
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