`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 43
`Date: September 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)1
`
`____________
`
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This order is being filed in each proceeding listed in the caption, due to the
`common issues addressed. The parties are not authorized to use a combined
`caption in these proceedings.
`
`
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`On August 28, 2023, Patent Owner sent an e-mail communication to
`the Board concerning these two proceedings. A copy of the e-mail has been
`entered into the record of each proceeding as Exhibit 3002. Via the e-mail,
`Patent Owner requested authorization to file two motions in each
`proceeding: (1) a Motion to Strike portions of the Petitioner Reply, and
`evidence submitted with the Reply; and (2) a Motion to Submit New
`Evidence with Patent Owner’s Sur-reply. See, e.g., 37 C.F.R. § 42.20(b)
`(“A motion will not be entered without Board authorization,” which may be
`“provided in an order of general applicability or during the proceeding.”);
`PTAB Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)2, 37–38.
`On September 1, 2023, the Board held a telephone conference with
`counsel for both parties to discuss Patent Owner’s e-mail 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 in each proceeding. That transcript, once filed, 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
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`Sur-reply is a sufficient procedural vehicle for Patent Owner to press the
`issues underlying the requested Motion to Strike.
`
`(2) REQUESTED MOTION TO SUBMIT NEW EVIDENCE WITH
`PATENT OWNER SUR-REPLY
`We also denied Patent Owner’s request for authorization to file a
`Motion to Submit New Evidence with the Patent Owner Sur-reply.
`However, we authorized Patent Owner to file a new expert witness
`declaration with the Sur-reply. 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
`CTPG 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 hotly dispute whether a person of ordinary skill in the art
`would have been motivated to measure oxygen saturation at the subject’s
`wrist (as opposed to the subject’s finger or forehead), with a reasonable
`expectation of success, based on the state of the art at the effective filing
`date of the ’745 patent. These are issues where expert testimony is critical to
`reaching a correct conclusion.
`Petitioner submitted a substantial amount of evidence with each Reply
`to address these issues. Specifically, each Reply included Exhibit 1042 (the
`same document in both cases), a new Supplemental Declaration from
`Petitioner’s proffered expert witness adding over 90 pages of expert
`testimony to the proceedings. Each Reply also included new Exhibits 1043–
`1058 and 1060–1080 (the same documents in both cases), to support various
`arguments concerning the state of the art prior to the ’745 patent.
`3
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`We concluded that resolution of the motivation to combine and
`reasonable expectation of success disputes presented in these particular cases
`would benefit from further expert testimony on behalf of Patent Owner, to
`address the substantial amount of testimonial and documentary evidence
`added via the Petitioner Reply. To be clear, however, we did not place any
`restrictions on the scope of the new expert testimony, apart from the Board’s
`default restriction that a “sur-reply may only respond to arguments raised in
`the corresponding reply.” 37 C.F.R. § 42.23(b).
`During the telephone conference, we did not authorize Patent Owner
`to submit new documentary evidence with the Sur-reply. When asked
`whether Patent Owner had any specific documents in mind for filing with
`the Sur-reply, counsel said no, and argued principally for leave to file a new
`expert declaration which we have granted as set forth above.
`
`(3) BRIEFING AND CASE SCHEDULE CONSIDERATIONS
`During the telephone conference, Patent Owner’s counsel stated
`Patent Owner should be able to comply with the existing October 2, 2023
`deadline for filing the Patent Owner Sur-reply, along with the new expert
`witness declaration we have authorized. See Paper 26 (Stipulation regarding
`Due Dates).
`We instructed the parties to contact the Board to schedule a telephone
`conference to occur on or before September 27, 2023, to discuss a potential
`increase of the Board’s default 5,600 word count limitation for Sur-replies.
`See 37 C.F.R. § 42.24(a)(2) (stating that waiver of word count limitation
`must be granted in advance of the filing of a sur-reply), § 42.24(c)(4)
`(providing default word count limitation for Patent Owner Sur-reply).
`
`4
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`Upon further consideration of the telephone conference, the Board
`hereby authorizes Petitioner to cross-examine Patent Owner’s witness via
`deposition, regarding testimony proffered with the Patent Owner Sur-reply.
`Petitioner also is authorized to file a Response to Expert Testimony, not to
`exceed 10 pages, to address the testimony proffered with the Patent Owner
`Sur-reply. Petitioner will not be authorized to provide further expert witness
`testimony with the Response to Expert Testimony. The parties should be
`prepared to discuss, during the late September telephone conference
`discussed above: (i) dates when the deposition might take place; (ii) a filing
`deadline for the Response to Expert Testimony; and (iii) whether oral
`argument in these two cases might be delayed by a few weeks to
`accommodate the deposition date and the filing deadline.3
`During the September 1, 2023, telephone conference, we tentatively
`set another telephone conference for Monday, October 9, 2023. In light of
`the foregoing, the October 9 telephone conference is canceled.
`
`(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 in these proceedings is denied;
`FURTHER ORDERED that Patent Owner’s e-mail request for
`authorization to file a Motion to Submit New Evidence in these proceedings
`is denied;
`FURTHER ORDERED that Patent Owner is authorized to file a new
`expert witness declaration with its Sur-reply in each proceeding;
`
`
`3 At this time, we do not discern a need to delay oral argument in
`IPR2022-01299, even if oral argument in these two proceedings is delayed.
`5
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`FURTHER ORDERED that Petitioner is authorized to cross-examine
`Patent Owner’s witness via deposition regarding testimony proffered with
`the Patent Owner Sur-reply, and to file a Response to Expert Testimony not
`to exceed 10 pages, on dates to be scheduled later as set forth above; and
`FURTHER ORDERED that the parties shall contact the Board to
`schedule a telephone conference to occur on or before September 27, 2023,
`as set forth above.
`
`FOR PETITIONER:
`
`W. Karl Renner
`Nicholas Stephens
`Andrew B. Patrick
`Kim Leung
`Patrick J. Bisenius
`Patrick J. King
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`leung@fr.com
`bisenius@fr.com
`pking@fr.com
`
`FOR PATENT OWNER:
`
`Brian C. Claassen
`Carol Pitzel Cruz
`Daniel C. Kiang
`Jeremiah S. Helm
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2bcc@knobbe.com
`2cmp@knobbe.com
`2dck@knobbe.com
`2jgh@knobbe.com
`
`
`6
`
`
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