Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 37
`Date: November 1, 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.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 37
`Date: November 1, 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.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`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)
`
`Time and Format
`
`ORAL ARGUMENT
`
`Pursuant to Petitioner’s and Patent Owner’s requests (IPR2020-01520,
`
`“1520 IPR,” Papers 29 and 30),1 oral arguments will commence at 11:00 am
`
`Eastern Time on December 7, 2021, by videoconference.2 USPTO
`
`facilities remain closed to the public due to the state of affairs relating to
`
`COVID-19. The Board will provide a court reporter for the hearing, and the
`
`reporter’s transcript will constitute the official record of the hearing.
`
`Each of Petitioner’s requests seek “no more than one hour per side
`
`[for] oral argument time.” 1520 IPR, Paper 29. It is not clear whether
`
`Petitioner wants one hour per proceeding, therefore totaling five hours, or
`
`one hour to address all five proceedings together. See id. Patent Owner’s
`
`requests expressly seek a consolidated oral argument, with each party
`
`allotted 60 minutes to address all five proceedings together, due to “the
`
`extensive overlap in” the proceedings. 1520 IPR, Paper 30.
`
`Upon considering these requests, we grant Petitioner a total of
`
`seventy-five (75) minutes to present argument addressing all five
`
`proceedings together, and we grant Patent Owner a total of seventy-five (75)
`
`
`1 The requests in the 1520 IPR proceeding are representative of requests
`filed in all five of these related proceedings. We cite only the 1520 IPR
`proceeding requests for convenience.
`
`2 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`
`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)
`
`minutes to respond. Petitioner will open the hearing by presenting its case
`
`for unpatentability of the three challenged patents. Thereafter, Patent Owner
`
`will respond to Petitioner’s argument. Petitioner may reserve rebuttal time
`
`to respond to arguments presented by Patent Owner. In accordance with the
`
`Consolidated Trial Practice Guide3 (“CTPG”), issued in November 2019,
`
`Patent Owner may request to reserve time for a brief sur-rebuttal. See
`
`CTPG 83. Given the overlap in these proceedings, the panel expects that
`
`statements made during the hearing are applicable to all captioned
`
`proceedings, unless it is explicitly noted that a statement applies to a specific
`
`proceeding only.
`
`The parties may request a pre-hearing conference in advance of the
`
`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
`
`afford the parties the opportunity to preview (but not argue) the issues to be
`
`discussed at the oral hearing, and to seek the Board’s guidance as to
`
`particular issues that the panel would like addressed by the parties.” Id. If
`
`either party desires a pre-hearing conference, the parties should jointly
`
`contact the Board at Trials@uspto.gov at least seven (7) business days
`
`before the hearing date to request a conference call for that purpose.
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`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)
`
`Demonstratives
`
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`
`opposing counsel at least seven (7) business days before the hearing date and
`
`filed on or before Friday, December 3, 2021.4
`
`Demonstratives are not a mechanism for making new arguments.
`
`Demonstratives are also not evidence, and will not be relied upon as
`
`evidence. Rather, demonstratives are visual aids to a party’s oral
`
`presentation regarding arguments and evidence previously presented and
`
`discussed in the papers. Accordingly, demonstratives shall be clearly
`
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`
`regulations to dismiss untimely argument “raised for the first time during
`
`oral argument”). “[N]o new evidence may be presented at the oral
`
`argument.” CTPG 85–86; see also St. Jude Med., Cardiology Div., Inc. v.
`
`The Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3
`
`(PTAB Jan. 27, 2014) (explaining that “new” evidence includes evidence
`
`already of record but not previously discussed in any paper of record).
`
`Furthermore, because of the strict prohibition against the presentation
`
`of new evidence or arguments at a hearing, it is strongly recommended that
`
`each demonstrative includes a citation to a paper in the record, which allows
`
`
`4 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request the Board to modify the schedule for filing
`demonstratives, at least seven (7) business days before the hearing date.
`
`4
`
`
`
`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)
`
`the Board to easily ascertain whether a given demonstrative contains “new”
`
`argument or evidence or, instead, contains only that which is developed in
`
`the existing record.
`
`Due to the nature of the Board’s consideration of demonstratives and
`
`the opportunity afforded for the parties to reach an agreement without
`
`involving the Board, the Board does not anticipate that objections to
`
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`
`party objects to the propriety of any demonstrative, the parties shall meet
`
`and confer in good faith to resolve any objections to demonstratives prior to
`
`filing the objections with the Board. If such objections cannot be resolved,
`
`the parties may file any objections to demonstratives with the Board no later
`
`than the time of the hearing. The objections shall identify with particularity
`
`which portions of the demonstratives are subject to objection and include a
`
`one (1) sentence statement of the reason for each objection. No argument or
`
`further explanation is permitted. The Board will consider any objections,
`
`and may reserve ruling on the objections.5 Any objection to demonstratives
`
`that is not timely presented will be considered waived.
`
`Finally, the parties are reminded that each presenter should identify
`
`clearly and specifically each paper (e.g., by slide or screen number for a
`
`demonstrative) referenced during the hearing to ensure the clarity and
`
`
`5 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`5
`
`
`
`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)
`
`accuracy of the court reporter’s transcript and for the benefit of all
`
`participants appearing electronically.
`
`Presenting Counsel
`
`The Board generally expects lead counsel for each party to be present
`
`at the hearing. See CTPG 11. Any counsel of record may present the
`
`party’s argument as long as that counsel is present by video.
`
`Video Hearing Details
`
`To facilitate planning, each party must contact the Board at
`
`PTABHearings@uspto.gov at least five (5) business days prior to the
`
`hearing date to receive video set-up information. For example, “Patent
`
`Owner anticipates that five (5) individuals will attend the oral argument on
`
`its behalf.” 1520 IPR, Paper 30. Patent Owner should use this e-mail
`
`inquiry to make arrangements for that request.
`
`As a reminder, all arrangements and the expenses involved with
`
`appearing by video, such as the selection of the facility from which a party
`
`will attend by video, must be borne by that party. If a video connection
`
`cannot be established, the parties will be provided with dial-in connection
`
`information, and the hearing will be conducted telephonically.
`
`If one or both parties would prefer to participate in the hearing
`
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`
`least five (5) business days prior to the hearing date to receive dial-in
`
`connection information.
`
`6
`
`
`
`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)
`
`Counsel should unmute only when speaking. The panel will have
`
`access to all papers filed with the Board, including demonstratives. During
`
`the hearing, the parties are reminded to identify clearly and specifically each
`
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`
`benefit of all participants appearing electronically. In addition, the parties
`
`are advised to identify themselves each time they speak. Furthermore, the
`
`remote nature of the hearing may also result in an audio lag, and thus the
`
`parties are advised to observe a pause prior to speaking, so as to avoid
`
`speaking over others.
`
`If at any time during the hearing, counsel encounters technical or
`
`other difficulties that fundamentally undermine counsel’s ability to
`
`adequately represent its client, please let the panel know immediately, and
`
`adjustments will be made.6
`
`Remote Attendance Requests
`
`Members of the public may request to listen to this hearing. If
`
`resources are available, the Board generally expects to grant such requests.
`
`If either party objects to the Board granting such requests, for example,
`
`because confidential information may be discussed, the party must notify the
`
`Board at PTABHearings@uspto.gov at least ten (10) business days prior to
`
`the hearing date.
`
`
`6 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`7
`
`
`
`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)
`
`Audio / Visual Equipment Requests
`
`Any special requests for audio-visual equipment should be directed to
`
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`related to appearing at a video hearing, such as a request to accommodate
`
`visual or hearing impairments, and indicate how the PTAB may
`
`accommodate the special request. Any special requests must be presented in
`
`a separate communication at least five (5) business days before the hearing
`
`date.
`
`Legal Experience and Advancement Program (LEAP)
`
`The Board has established the “Legal Experience and Advancement
`
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`
`argue before the Board to develop their skills. Either party may request that
`
`a qualifying LEAP practitioner participate in the program and conduct at
`
`least a portion of the party’s oral argument. The Board will grant additional
`
`argument time to that party, depending on the length of the proceeding and
`
`the PTAB’s hearing schedule. A party should submit a request, no later than
`
`five (5) business days before the oral hearing, by email to the Board at
`
`PTABHearings@uspto.gov. Additional information and a combined LEAP
`
`Practitioner Request for Oral Hearing Participation and Verification Form is
`
`available on the LEAP website, www.uspto.gov/leap.
`
`8
`
`
`
`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)
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that oral argument for this proceeding shall commence at
`
`11:00 am Eastern Time on December 7, 2021, by videoconference, and
`
`proceed in the manner set forth herein.
`
`
`
`FOR PETITIONER:
`
`Walter Renner
`Roberto Devoto
`Hyun Jin In
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`in@fr.com
`
`FOR PATENT OWNER:
`
`Joseph Re
`Stephen Larson
`Jarom Kesler
`Jacob Peterson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`9
`
`
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