throbber
Trials@uspto.gov
`Tel: 571-272-7822
` 
`
`
` Paper: 9
`Entered: September 28, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2022-01271 (Patent 10,912,501 B2)
`IPR2022-01272 (Patent 10,912,501 B2)
`IPR2022-01273 (Patent 10,912,502 B2)
`IPR2022-01274 (Patent 10,912,502 B2)
`IPR2022-01275 (Patent 10,945,648 B2)
`
`
`
`
`IPR2022-01276 (Patent 10,945,648 B2)
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01292 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`IPR2022-01466 (Patent 10,687,745 B1)1
`
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.2
`
`COCKS, Administrative Patent Judge.
`
`
`
`                                                            
`1 This Order applies to the above-listed proceedings. We exercise our
`discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`2 The panel has not been expanded for any of the noted proceedings. The
`listing of four judges accounts for variation in paneling as between the
`proceedings.
`
`

`

`IPR2022-01271 (Patent 10,912,501 B2)
`IPR2022-01272 (Patent 10,912,501 B2)
`IPR2022-01273 (Patent 10,912,502 B2)
`IPR2022-01274 (Patent 10,912,502 B2)
`IPR2022-01275 (Patent 10,945,648 B2)
`IPR2022-01276 (Patent 10,945,648 B2)
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01292 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`IPR2022-01466 (Patent 10,687,745 B1)
` 
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1. Introduction
`A conference call was held on September 23, 2022, between counsel
`for the respective parties and Judges Cocks, Powell, and Tartal.3 Petitioner,
`Apple Inc., was represented by Daniel Smith and Karl Renner. Patent
`Owner, Massimo Corporation, was represented by Jacob Peterson and
`Jeremiah Helm. The purpose of the call was to discuss Patent Owner’s
`request to file a motion for additional discovery under 37 C.F.R.
`§ 42.51(b)(2) in each of the noted proceedings.
`
`2. Discussion
`During the call, Patent Owner expressed that it was seeking, as a part
`of its requested motion for additional discovery, to obtain information
`relevant to objective indicia of non-obviousness. Patent Owner explained
`that such information had been identified in publicly available materials as a
`part of a related, ongoing International Trade Commission (ITC) proceeding,
`
`                                                            
`3 Judge Pollock is a panel member on two of the noted proceedings but was
`unavailable for the conference call.
`
`

`

`IPR2022-01271 (Patent 10,912,501 B2)
`IPR2022-01272 (Patent 10,912,501 B2)
`IPR2022-01273 (Patent 10,912,502 B2)
`IPR2022-01274 (Patent 10,912,502 B2)
`IPR2022-01275 (Patent 10,945,648 B2)
`IPR2022-01276 (Patent 10,945,648 B2)
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01292 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`IPR2022-01466 (Patent 10,687,745 B1)
` 
`but that the material, itself, was not publicly available. Petitioner indicated
`that it opposed Patent Owner’s request.
`Generally, our rules contemplate that matters of discovery, if
`applicable, emerge in a proceeding once a panel has determined that
`institution of a trial is warranted. Here, a determination whether to institute
`a trial in any of the noted proceedings has not yet been made. During the
`call, we noted that Patent Owner’s request, at this stage, appeared to be
`premature. Patent Owner acknowledged that its request likely was
`premature. Additionally, both parties indicated that the material sought by
`Patent Owner was presently the subject of a protective order in the relevant
`ITC proceeding. Patent Owner indicated that it had filed a motion in that
`ITC proceeding to amend the protective order to allow for submission of the
`pertinent material in these inter partes review (IPR) proceedings. Both
`parties acknowledged that the ITC’s determination as to the request to
`amend the relevant protective order may have an impact on Patent Owner’s
`request to file a motion for additional discovery.
`Given the circumstances present here, we deny Patent Owner’s
`request to file a motion for additional discovery in any of the noted IPR
`proceedings. In the event of a change in circumstances, Patent Owner may
`renew its request at a later time.
`
`

`

`IPR2022-01271 (Patent 10,912,501 B2)
`IPR2022-01272 (Patent 10,912,501 B2)
`IPR2022-01273 (Patent 10,912,502 B2)
`IPR2022-01274 (Patent 10,912,502 B2)
`IPR2022-01275 (Patent 10,945,648 B2)
`IPR2022-01276 (Patent 10,945,648 B2)
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01292 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`IPR2022-01466 (Patent 10,687,745 B1)
` 
`
`3. Order
`
`It is
`ORDERED that Patent Owner’s request to file a motion for additional
`discovery in any of the noted IPR proceedings is denied without prejudice.
`
`PETITIONER:
`
`W. Karl Renner
`Andrew Patrick
`Daniel D. Smith
`Hyun Jin In
`Grace Kim
`Gretchen DeVries
`Fish & Richardson P.C.
`IPR50095-0042IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`patrick@fr.com
`in@fr.com
`gkim@fr.com
`dsmith@fr.com
`devries@fr.com
`
`
`
`
`
`

`

`IPR2022-01271 (Patent 10,912,501 B2)
`IPR2022-01272 (Patent 10,912,501 B2)
`IPR2022-01273 (Patent 10,912,502 B2)
`IPR2022-01274 (Patent 10,912,502 B2)
`IPR2022-01275 (Patent 10,945,648 B2)
`IPR2022-01276 (Patent 10,945,648 B2)
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01292 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`IPR2022-01466 (Patent 10,687,745 B1)
` 
`PATENT OWNER:
`Stephen W. Larson
`Jarom D. Kesler
`Irfan A. Lateef
`Brian C. Claassen
`Jacob L. Peterson
`Knobbe, Martens, Olson, & Bear, LLP
`2swl@knobbe.com
`2jzk@knobbe.com
`2ial@knobbe.com
`2bcc@knobbe.com
`2jup@knobbe.com
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket