`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
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`Filed: December 13, 2022
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR745-4@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner.
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`
`
`Case IPR2022-01466
`U.S. Patent 10,687,745
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`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICES
`RANKING PETITIONS
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
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`Patent Owner (“Masimo”) and Petitioner (“Apple”) already litigated the
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`validity of U.S. Patent No. 10,687,745 (the “’745 Patent”) through an evidentiary
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`hearing in ITC Investigation No. 337-TA-1276 (the “Investigation”). After that
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`hearing concluded, and after Apple represented to the ITC that it was presenting its
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`best evidence, Apple filed four petitions challenging the ’745 Patent: IPR2022-
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`01291, 1292, 1465, and 1466. Apple staggered the petitions, filing the 1291 and
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`1292 Petitions on July 22, 2022, and then filing the 1465 and 1466 Petitions on
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`August 26, 2022.
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`A. Apple Failed to Properly Rank Its Petitions
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`Apple filed four petitions against the ’745 Patent, separating its arguments
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`across them. Where “a petitioner files two or more petitions challenging the same
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`patent, then the petitioner should … identify … a ranking of the petitions in the
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`order in which it wishes the Board to consider the merits.” Consolidated Trial
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`Practice Guide (Nov. 2019) (“TPG”), 59-60. But Apple did not rank all four
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`petitions. Instead, Apple ranks the petitions in two groups of two:
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`See 1291 Notice; 1465 Notice. Confusingly, Apple’s listing of primary references
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`for the 1291 Petition actually lists the primary references for the 1292 Petition, and
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
`vice versa. So, it is unclear which petition Apple meant to rank first between those
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`two.
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`Apple attempts to excuse its failure to rank all four petitions by stating that
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`they challenge “a different subset of claims.” 1465 Notice, 2 n.1. The Board has
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`denied institution based on similar arguments. See Fantasia Trading LLC v.
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`CogniPower, LLC, IPR2021-00068, Paper 22 at 6-13 (PTAB May 12, 2021).
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`In the later filed petitions, Apple explains it “strongly desires substantive
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`review of the first-ranked IPR2022-01465 petition.” 1465 Notice, 4. That notice
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`also describes the interrelationship between all four petitions. Id. 2 n.1. Thus,
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`from that notice, Apple appears to rank the 1465 Petition above all the others.
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`B. Apple Fails to Establish the Necessity for Four Petitions
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`Notably, Apple could have asserted at least one ground against each
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`challenged claim in a single petition. Apple provides no excuse for needlessly
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`multiplying the burden on the Board and Masimo by filing four petitions.
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`Apple segregated its petitions both by claim and references. Its first two
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`petitions, 1291 and 1292, challenged the three claims asserted in the Investigation
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`(9, 18, and 27) and their corresponding independent claims (1, 15, and 20). In the
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`1465 and 1466 Petitions, Apple challenges only dependent claims not asserted in
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`the Investigation. Apple also used the same references across these petitions—the
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
`1291 and the 1465 Petitions present substantially identical arguments based on the
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`same combinations of art. The same is also true of the 1292 and 1466 Petitions.
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`Apple ignores the Board’s guidance that it is “unlikely that circumstances
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`will arise where three or more petitions by a petitioner with respect to a particular
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`patent will be appropriate.” TPG, 59. Multiple petitions may be appropriate:
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`“when the patent owner has asserted a large number of claims in litigation or when
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`there is a dispute about priority date requiring arguments under multiple prior art
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`references.” Id. Neither situation is present here.
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`First, in the Investigation, Masimo asserted only three claims of the ’745
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`Patent: Claims 9, 18, and 27. EX2011, 185. Moreover, the evidentiary hearing
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`finished before Apple filed these Petitions. Second, Apple also does not identify
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`any dispute about the ’745 Patent priority date necessitating an additional petition.
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`The TPG also directs petitioners to explain “the differences between the
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`petitions” and why those differences are material. TPG, 60. Apple failed to
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`identify, much less explain, any material differences amongst all four petitions.
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`Instead, Apple described the primary references (Iwamiya, Sarantos, and
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`Ackermans) at a high level without identifying any material differences between
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`them. 1465 Notice, 3. Thus, Apple failed to establish any need for four petitions.
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
`C. The Petitions Are Needlessly Duplicative
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`Apple fails to show that “it was necessary to distribute its challenges across
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`four petitions in order to present one ground of unpatentability for each challenged
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`claim.” Fantasia Trading, IPR2021-00068, Paper 22 at 6-13. The 1465 and 1466
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`Petitions regurgitate the same invalidity arguments that Apple presented in the
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`1291 and 1292 Petitions for independent Claims 1, 15, and 20. Compare 1465
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`Petition at 7-18, 25-32, 39-44, 53-55, 59-62 with 1291 Petition at 8-19, 21-28, 30-
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`43; compare 1466 Petition at 12-23, 30-38, 45-47 with 1292 Petition at 12-31, 35-
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`37.
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`Apple’s duplication reveals that Apple could have addressed every
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`challenged claim in a single petition. Apple filed the 1291 and 1465 Petitions
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`based on substantially the same art. The only claims not addressed in the 1465
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`Petition are Claims 9, 18, and 27. Apple addressed Claim 9 in the 1291 Petition in
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`roughly one page (at 19-20), Claim 18 in a one-line cross-reference to Claim 9 (at
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`27), and Claim 27 with the same argument Apple presented in the 1465 Petition for
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`Claim 2 (compare 1291 Pet. at 29 with 1465 Pet. at 18). Thus, Apple could have
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`addressed all challenged claims in a single petition with little effort, which would
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`have resulted in a substantially simplified proceeding. Similar reasoning applies to
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`the other segregated grounds and petitions.
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
`Moreover, Apple alleges that the 1465 and 1466 Petitions address only
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`dependent claims 2-6, 8, 10-14, 17, 19, and 21-26. 1465 Petition, 75
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`(characterizing the earlier and later petitions as containing “mutually exclusive sets
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`of claim challenges”); 1466 Petition, 66 (same). Yet, Apple duplicated the entirety
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`of the arguments regarding the allegedly unchallenged independent claims.
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`Apple’s argument is unpersuasive. The Board will have to address the merits of
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`the independent claims to address the dependent claims because the dependent
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`claims include all the limitations of the claims from which they depend.
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`D.
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`Four Petitions on the ’745 Patent Are Unnecessary
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`As an excuse for filing additional petitions, Apple argues that Masimo could
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`assert “the additional claims challenged in the present petitions (which are not
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`presently asserted at the ITC) in a future district court action.” 1465 Notice, 4.
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`But that excuse does not address any material difference between the petitions.
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`Apple fails to explain why it did not challenge the additional claims in its first
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`petition along with the claims asserted in the ITC. Apple has provided no reason
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`for the Board to “exercise its discretion to institute additional petitions.” TPG, 60.
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`All four petitions lack merit and Masimo respectfully requests that the Board
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`deny institution. However, if the Board decides to institute on one, Apple has
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`asserted a strong desire that it be IPR2022-01465.
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
`Respectfully submitted,
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`Dated: December 13, 2022
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`
`
`/ Brian C. Claassen /
`Brian C. Claassen (Reg. No. 63,051)
`Customer No. 64,735
`Attorney for Patent Owner
`Masimo Corporation
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`-6-
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`IPR2022-01466
`Apple Inc. v. Masimo Corporation
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
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`of counsel for Petitioner, a true and correct copy of PATENT OWNER’S
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`RESPONSE TO PETITIONER’S NOTICES RANKING PETITIONS is being
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`served electronically on December 13, 2022, to the e-mail addresses shown below:
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`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: IPR50095-0045IP4@fr.com
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`Dated: December 13, 2022
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`56186353
`
`Nicholas Stephens, Reg. No. 74,320
`Daniel D. Smith, Reg No. 71,278
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: PTABInbound@fr.com
`
`
`
`/ Brian C. Claassen /
`Brian C. Claassen (Reg. No. 63,051)
`
`Attorney for Patent Owner
`Masimo Corporation
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`-7-
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