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Filed: September 22, 2023
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel C. Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR745-3@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`
`
`
`
`
`
`PATENT OWNER REQUEST FOR ORAL ARGUMENT
`
`
`
`

`

`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order (Paper 16), Patent
`
`Owner Masimo Corporation respectfully requests that the Board hear oral argument
`
`in person on the instituted grounds in IPR2022-01465 regarding U.S. Patent No.
`
`10,687,745 (“’745 Patent”). The Board has currently scheduled oral argument for
`
`November 1, 2023. (Paper 16).
`
`The Board has also scheduled oral argument in IPR2022-01291 for November
`
`1, 2023. See IPR2022-01291, Paper 16. IPR2022-01291 involves additional claims
`
`of the ’745 Patent and substantially the same obviousness grounds. Due to the
`
`overlap in issues between the two IPRs, Patent Owner respectfully requests that the
`
`oral argument for IPR2022-01291 and IPR2022-01465 be consolidated into one oral
`
`argument. Patent Owner requests that the Board allot each party sixty (60) minutes
`
`for a consolidated oral argument, or thirty (30) minutes if the arguments are not
`
`consolidated.
`
`Patent Owner requests (without waiving consideration of any issue not listed
`
`below) to address the following issues with respect to IPR2022-01465:
`
`
`
`The proper construction of the challenged claims;
`
` Whether Claims 2, 3, 5, 6, 8, 10-12, and 14 would have been obvious
`
`over Iwamiya and Sarantos;
`
` Whether Claims 4, 17, 19, and 21-26 would have been obvious over
`
`Iwamiya, Sarantos, and Venkatraman;
`
`-1-
`
`

`

`IPR2022-01465
`Apple Inc. v. Masimo Corporation
` Whether Claims 2, 5, 6, 8, 10-11, 13-14, 17, and 19 would have been
`
`obvious over Sarantos and Shie;
`
` Whether Claims 3-4, 17, 19, and 21-26 would have been obvious over
`
`Sarantos, Shie, and Venkatraman;
`
` Whether Claim 12 would have been obvious over Sarantos, Shie, and
`
`Savant;
`
` Whether a POSITA would have had a reasonable expectation of success
`
`in combining the references asserted in the Petition to obtain the
`
`claimed inventions;
`
` Whether Petitioner’s Reply improperly raises new arguments and new
`
`evidence that exceed the proper scope of reply;
`
` Whether Petitioner’s Reply improperly exceeds the word limit for a
`
`Reply by incorporating by reference arguments from the supplemental
`
`expert declaration (EX1042);
`
`
`
`
`
`
`
`Any other issues in papers yet to be filed, such as Motions to Exclude
`
`and any Petitioner paper filed after Masimo’s Sur-Reply;
`
`Any rebuttal to Petitioner’s presentation on any issue; and
`
`Any other issues the Board deems necessary for issuing a final written
`
`decision.
`
`-2-
`
`

`

`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`Patent Owner currently anticipates that four (4) individuals will attend the oral
`
`argument on its behalf. Patent Owner requests permission to use audio/visual
`
`equipment to display demonstrative exhibits, including the projector and screens in
`
`the hearing room to project PowerPoint slides or other electronic materials.
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`Dated: September 22, 2023
`
`
`
`
`
`-3-
`
`

`

`IPR2022-01465
`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 REQUEST FOR ORAL
`
`ARGUMENT is being served electronically on September 22, 2023, 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: IPR50095-0045IP3@fr.com
`
`Dated: September 22, 2023
`
`Nicholas Stephens
`Andrew B. Patrick
`Kim Leung
`Patrick J. Bisenius
`Patrick J. King
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: PTABInbound@fr.com
`
`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`-4-
`
`

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