`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 54
`Entered: October 5, 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 GEORGE R. HOSKINS and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings and Trial Hearing
`37 C.F.R. §§ 42.5 & 42.70
`
`
`
`
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`
`On September 27, 2023, the Board held a telephone conference with
`counsel for both parties to discuss scheduling for this case, as well as
`parallel cases IPR2022-01291 and IPR2022-01465. 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 in
`each proceeding. That transcript, once filed, will constitute the official
`record of the telephone conference.
`This Order: (1) memorializes the result of the telephone conference as
`to Due Date 8 and certain elements of the briefing schedule and (2) sets forth
`various procedures for preparing for and conducting oral argument.
`
`(1) DUE DATE 8 and BRIEFING SCHEDULE
`In their joint email of September 27, the parties jointly proposed a
`change in DUE DATE 8 from Wednesday, November 1 to Friday,
`November 17, as indicated below, as well as certain changes in the proposed
`briefing schedule for this proceeding. See Ex. 3006. The parties’ joint
`requests are granted.
`
`(2) ORAL ARGUMENT
`
`Time and Format
`A.
`Consistent with the above, oral argument will begin at 10:00 AM
`EASTERN TIME on November 17, 2023. Petitioner requested that the
`hearing be conducted virtually by videoconference (Paper 48, 1), whereas
`Patent Owner stated that an in-person oral hearing was preferred (Paper 50,
`1). Both parties requested 60 minutes of argument time per side. Upon
`consideration, the Board will hold the hearing by videoconference. The
`
`2
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`Board will provide a court reporter for the hearing, and the reporter’s
`transcript will constitute the official record of the hearing. Each party shall
`have 60 minutes to present its case.
`As the party with the burden of proof and persuasion, Petitioner will
`proceed first to present its case with regard to the challenged claims and
`grounds set forth in the Petition. Patent Owner then may present its own
`case, and respond to Petitioner’s argument. Petitioner and Patent Owner
`may reserve some, but no more than half, of the allotted time for rebuttal and
`sur-rebuttal, respectively. The parties are reminded that arguments made
`during rebuttal and sur-rebuttal periods must be responsive to arguments the
`opposing party made in its immediately preceding presentation. The parties
`are also reminded that during the hearing, the parties “may only present
`arguments relied upon in the papers previously submitted.” PTAB
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 86. 1
`During the September 27 telephone conference, Petitioner indicated
`the parties may desire to discuss confidential information which we have
`placed under seal, during the oral argument. Accordingly, the hearing will
`proceed in two phases. In a first phase that will be open to the public, each
`party will present its argument as to publicly available information, in the
`back-and-forth manner described in the previous paragraph of this Order. In
`a second phase the hearing will be closed to any person not qualified to
`receive sealed information pursuant to the Board’s Protective Order. See
`Paper 30, Ex. 2094. The public line(s) will be terminated prior to the
`beginning of the second phase, to preserve confidentiality. Accordingly, at
`the beginning of the hearing, we will ask counsel for each party whether
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`they wish to reserve some of their argument time for the second session.
`Any such reservation may be modified, either up or down, as the hearing
`progresses.
`The parties may request a pre-hearing conference in advance of the
`hearing. See CTPG 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the hearing, and to seek the Board’s guidance as to particular
`issues that the panel would like addressed by the parties.” Id. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`
`B. Demonstrative Exhibit(s)
`Each party shall serve on the other party any demonstrative exhibit(s)
`it intends to use during the hearing on or before November 13, 2023. See
`37 C.F.R. § 42.70(b); Ex. 3006. Each party shall file any demonstrative
`exhibits it intends to use during the hearing as an exhibit on or before
`November 15, 2023. Ex. 3006.
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and are not evidence. Accordingly, demonstrative exhibits shall
`be clearly marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. Demonstrative exhibits cannot be used to
`advance arguments or introduce evidence not previously presented in the
`record. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir.
`2018) (holding that the Board is obligated under its own regulations to
`dismiss untimely argument “raised for the first time during oral argument”).
`“[N]o new evidence may be presented at the oral argument.” CTPG 86; see
`
`4
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`also St. Jude Med., Cardiology Div., Inc. v. The Bd. of Regents of the Univ.
`of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB Jan. 27, 2014) (explaining
`that “new” evidence includes evidence already of record but not previously
`discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one sentence
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and may
`reserve ruling on the objections.2 Any objection to demonstratives that is
`not timely presented will be considered waived.
`
`2 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`5
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`Presenting Counsel
`C.
`The Board generally expects lead counsel for each party to be present
`at the hearing via video. See CTPG 11. Any counsel of record may present
`the party’s argument as long as that counsel is present by video.
`
`Video Hearing Details
`D.
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five business days prior to the hearing
`date to receive video set-up information. As a reminder, all arrangements
`and the expenses involved with appearing by video, such as the selection of
`the facility from which a party will attend by video, must be borne by that
`party. If a video connection cannot be established, the parties will be
`provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`
`6
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.3
`
`Remote Attendance Requests
`E.
`Members of the public may request to listen to and/or view non-
`confidential portions of this hearing. If resources are available, the Board
`generally expects to grant such requests, subject to the limitations discussed
`above regarding confidential information. If either party objects to the
`Board granting such requests, the party must notify the Board at
`PTABHearings@uspto.gov at least ten business days prior to the hearing
`date.
`
`Audio/Visual Equipment Requests
`F.
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video hearing, such as a request to accommodate
`
`
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`7
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`visual or hearing impairments, and indicate how the PTAB may
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five business days before the hearing date.
`
`Legal Experience and Advancement Program
`G.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. The Board defines a LEAP
`practitioner as a patent agent or attorney having three or fewer substantive
`oral arguments in any federal tribunal, including PTAB.4
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen minutes of additional argument
`time to that party, depending on the length of the proceeding and the Board’s
`hearing schedule. A party should submit a request, no later than at least five
`business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.5
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`
`4 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`5 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`8
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.6 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements due to the number of “substantive” oral hearing arguments, but
`nonetheless has a basis for considering themselves to be in the category of
`advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided when the advocate does not qualify for
`LEAP, a party may share argument time among counsel and the Board will
`permit the more experienced counsel to provide some assistance, if
`necessary, during oral argument, and to clarify any statements on the record
`before the conclusion of the oral argument.
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`
`
`6 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of
`non-obviousness.
`
`9
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent.
`
`(3) ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the briefing schedule for these two proceedings is
`amended as proposed in Exhibit 3006, and as set forth above in Section (1);
`and
`
`FURTHER ORDERED that oral argument for this proceeding shall
`commence at 10:00 AM EASTERN TIME on November 17, 2023, and
`proceed in the manner set forth in Section (2) above.
`
`10
`
`
`
`
`
`IPR2022-01299
`PATENT 7,761,127 B2
`
`FOR PETITIONER:
`
`W. Karl Renner
`Nicholas Stephens
`Andrew B. Patrick
`Patrick J. King
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`pking@fr.com
`
`FOR PATENT OWNER:
`
`Irfan Lateef
`Ted M. Cannon
`Jarom Kesler
`Jacob L. Peterson
`Jeremiah S. Helm
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2ial@knobbe.com
`2tmc@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`2jgh@knobbe.com
`
`
`
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
