Trials@uspto.gov
`571-272-7822
`
`Paper 19
`Date: May 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`
`
`
`
`
`
`
`
`
`Before GEORGE R. HOSKINS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`
`In each captioned proceeding, we entered a Decision to Institute the
`requested inter partes review. See, e.g., IPR2020-01538, Paper 8.1 On
`April 2, 2021, Petitioner requested authorization to file a motion to submit
`supplemental information in each proceeding, and we granted authorization
`by email.
`On April 22, 2021, Petitioner filed a Motion to Submit Supplemental
`Information in each proceeding. See, e.g., IPR2020-01538, Paper 20
`(“Mot.” or “Motion”). In its Motion, Petitioner moves to submit a
`Declaration of Jacob Munford (“Declaration”) into the record as
`supplemental information, to be entered as, e.g., Exhibit 1038 in IPR2020-
`01538. Mot. 1. Petitioner contends that the Declaration “provides further
`testimony supporting the public accessibility and authenticity of the prior art
`references relied upon in the challenges set forth in [each] Petition,” and is
`offered in response to Patent Owner’s objections, which were served on
`Petitioner on March 16, 2021.2 Id. at 2. Petitioner contends that its Motion
`
`1 In this Order, we provide citations to the record of IPR2020-01538.
`Similar papers appear in the record of each captioned proceeding.
`2 On March 16, 2021, Patent Owner entered into the record, as Paper 10, a
`document purporting to be “PO’s Objections to Evidence.” However, the
`actual document that was entered into the PTAB E2E system bears the title
`“Masimo Corporation Notice of Waiver of Patent Owner Preliminary
`Response,” and does not include objections. See, e.g., IPR2020-01538,
`Paper 10. As it appears that Patent Owner’s Objections were properly
`served on Petitioner, see Mot. 2 (“On March 16, 2021 . . . Patent Owner
`served Petitioner with objections to evidence.”), Patent Owner is authorized
`to file a Motion for Late Entry to perfect entry of the objections into the
`record of each proceeding. See infra at 3 (“ORDER”); 37 C.F.R. §§ 42.5,
`42.64(b)(1).
`
`2
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`meets the requirements for submission of supplemental information as set
`forth in 37 C.F.R. § 42.123(a) because the Motion is timely and the
`Declaration is relevant to a claim for which trial has been instituted. Id. at
`3–4. Petitioner represents that Patent Owner does not oppose the Motion.
`Id. at 1.
`As the Motion is unopposed and otherwise satisfies the requirements
`of § 42.123(a), we grant Petitioner’s Motion.3
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is granted in each proceeding; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`Motion for Late Entry of Objections in each proceeding, within ten (10)
`business days of this Order, wherein the Motion must indicate whether it is
`opposed by Petitioner.
`
`
`
`
`3 The Declaration responds to Patent Owner’s evidentiary objections and
`was served on Patent Owner in accordance with 37 C.F.R. § 42.64. Mot. 2.
`As such, the Declaration is supplemental evidence governed by 37 C.F.R.
`§ 42.64(b)(2). See id. (“Petitioner served Patent Owner with supplemental
`evidence including [the Declaration].”). Because the parties agree to entry
`of the Declaration as supplemental information, governed by 37 C.F.R.
`§ 42.123(a), we grant Petitioner’s Motion, regardless of the fact that the
`Declaration could instead be entered with Petitioner’s opposition to a motion
`to exclude, in the event such a motion is filed by Patent Owner. See 37
`C.F.R. § 42.5.
`
`3
`
`

`

`IPR2020-01520 (Patent 10,258,265 B1)
`IPR2020-01536 (Patent 10,588,553 B2)
`IPR2020-01537 (Patent 10,588,553 B2)
`IPR2020-01538 (Patent 10,588,554 B2)
`IPR2020-01539 (Patent 10,588,554 B2)
`
`PETITIONER:
`
`W. Karl Renner
`Roberto J. Devoto
`Hyun Jin In
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`in@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`
`Joseph R. Re
`Stephen W. Larson
`Jarom D. Kesler
`Jacob L. Peterson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2jzk@knobbe.com
`2jup@jknobbe.com
`
`
`4
`
`