Filed: November 4, 2022
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Irfan A. Lateef (Reg. No. 51,922)
`Ted M. Cannon (Reg. No. 55,036)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR127-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01300
`U.S. Patent 7,761,127
`
`
`
`
`
`
`RESPONSE TO PETITIONER’S RANKING OF PETITIONS
`
`-1-
`
`
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Irfan A. Lateef (Reg. No. 51,922)
`Ted M. Cannon (Reg. No. 55,036)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR127-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01300
`U.S. Patent 7,761,127
`
`
`
`
`
`
`RESPONSE TO PETITIONER’S RANKING OF PETITIONS
`
`-1-
`
`
`
`IPR2022-01300
`Apple Inc. v. Masimo Corporation
`
`Patent Owner (“Masimo”) and Petitioner (“Apple”) already litigated the
`
`validity of U.S. Patent No. 7,761,127 (the “’127 Patent”) through an evidentiary
`
`hearing in ITC Investigation No. 337-TA-1276 (the “Investigation”). After that
`
`hearing concluded, and after Apple represented to the ITC that it was presenting its
`
`“best evidence,” Apple filed
`
`two petitions challenging
`
`the ’127 Patent:
`
`IPR2022-01299 and IPR2022-01300.
`
`In each IPR, Masimo is concurrently filing a POPR explaining why the
`
`Board should deny institution. For the reasons in its POPRs, Masimo submits that
`
`the Board should deny institution of both IPRs. In the alternative, if the Board
`
`exercises its discretion to institute either IPR, it should institute just one of them.
`
`The Trial Practice Guide states: “Based on the Board’s experience, one
`
`petition should be sufficient to challenge the claims of a patent in most situations.
`
`… In addition, multiple petitions by a petitioner are not necessary in the vast
`
`majority of cases.” Trial Practice Guide, 59. While “the Board recognizes that
`
`there may be circumstances in which more than one petition may be necessary”
`
`(id.), this case presents none of those circumstances.
`
`Masimo has not “asserted a large number of claims in litigation” of the ’127
`
`patent. See id. Indeed, Apple acknowledges that Masimo has asserted “just [a]
`
`single claim in the ITC.” Notice, 5. Moreover, the evidentiary hearing finished
`
`before Apple filed these Petitions. Masimo has not asserted the ’127 Patent in any
`
`-1-
`
`
`
`IPR2022-01300
`Apple Inc. v. Masimo Corporation
`
`other litigation. Apple speculates that Masimo might assert more ’127 patent
`
`claims in “future district court actions.” Id. (emphasis added). Such speculation
`
`does not justify two petitions. Further, Apple has not raised any “dispute about
`
`priority date[s] requiring arguments under multiple prior art references.” See Trial
`
`Practice Guide, 59.
`
`The Trial Practice Guide also directs petitioners to explain “the differences
`
`between the petitions” and why those differences are material. Id., 60. Apple
`
`failed to identify, much less explain, any material differences between the two
`
`petitions. Instead, Apple described the primary references (Yamada and Dietiker)
`
`at a high level. See Notice, 2-3. Thus, Apple failed to establish any need for two
`
`petitions.
`
`Apple admits the real reason it “needed” to file two petitions was to get
`
`around “word count constraints.” Notice, 5. Evading word counts is not a valid
`
`reason to file multiple petitions. Further, Apple cannot credibly claim two IPR
`
`petitions “were needed to address Apple’s arguments.” Notice, 5. Apple already
`
`presented essentially the same Yamada grounds in the ITC as it now presents in
`
`IPR2022-01299. EX1012, 239-243 (asserting obviousness in view of Yamada,
`
`Noguchi, and Scarlett). Apple relied on Scarlett as allegedly disclosing a “thermal
`
`core,” that allegedly could be combined with Yamada’s circuit board. Id., 240. In
`
`IPR2022-01299, Apple relies on essentially the same combination, but with
`
`-2-
`
`
`
`IPR2022-01300
`Apple Inc. v. Masimo Corporation
`
`Chadwick allegedly disclosing the “thermal core.” IPR2022-01299 Pet., 15.
`
`Giving Apple a second bite at its Yamada grounds does not justify the Board
`
`expending additional resources to institute two IPRs.
`
`Accordingly, Apple’s Notice fails to justify institution of two IPRs against
`
`the ’127 patent.
`
`Dated: November 4, 2022
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`-3-
`
`
`
`IPR2022-01300
`Apple Inc. v. Masimo Corporation
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of RESPONSE TO
`
`PETITIONER’S RANKING OF PETITIONS is being served electronically on
`
`November 4, 2022, to the e-mail addresses shown below:
`
`W. Karl Renner
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: IPR50095-0046IP1@fr.com
`
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax:877-769-7945Email:
`PTABInbound@fr.com
`
`Dated: November 4, 2022
`
`56584314
`
`
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`-4-
`
`
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