Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64(B)(1)
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64(B)(1)
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`Patent Owner Valencell, Inc. (“Patent Owner” or “Valencell”) hereby files
`
`the following objections to evidence under the Federal Rules of Evidence (“FRE”)
`
`and 37 C.F.R. § 42.62(b)(1) to the admissibility of the following evidence submitted
`
`by Apple Inc. (“Petitioner” or “Apple”) in support of its Petition for Inter Partes
`
`Review. Valencell files and serves Apple with these objections to provide notice that
`
`Valencell may move to exclude the challenged exhibits under 37 C.F.R. § 42.64(c).
`
`These objections are made within 10 business days from the June 5, 2017
`
`filing of Institution Decision (Paper 7). Patent Owner objects to and intends to seek
`
`the denial of the admission and consideration of the following documents:
`
`
`
`1004
`1005
`
`
`1018
`
`Exhibit No. Description
`1003
`Declaration of Dr. Brian W. Anthony in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,989,830
`(“Anthony Declaration”)
`Curriculum Vitae of Dr. Brian W. Anthony
`Asada, H. et al. “Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors,” IEEE Engineering in
`Medicine and Biology Magazine, May/June 2003; pp. 28-40
`(“Asada”)
`Declaration of Gerard P. Grenier in support of Asada, H. et al.
`“Mobile Monitoring with Wearable Photoplethysmographic
`Biosensors,” IEEE Engineering in Medicine and Biology
`Magazine, May/June 2003; pp. 28-40 (“Grenier Declaration”)
`U.S. Patent Application Publication No. 2007/0123763 to Al-Ali et
`al. titled “Optical Sensor Including Disposable and Reusable
`Elements,” published May 31, 2007 (“Al-Ali”)
`
`
`1011
`
`2
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`
`
`Excerpt from Merriam Webster’s Collegiate
`Dictionary, Eleventh Edition, 2008; p. 828 (“Merriam
`Webster”)
`Mendelson, Y. et al., “Skin Reflectance Pulse Oximetry: In Vivo
`Measurements from the Forearm and Calf,” Journal of Clinical
`Monitoring, Vol. 7, No. 1, January 1991; pp. 7-12 (“Mendelson
`1”)
`Konig, V. et al., “Reflectance Pulse Oximetry – Principles and
`Obstetric Application in the Zurich System,” Journal of Clinical
`Monitoring and Computing, Vol. 14, No. 6, August 1998; pp. 403-
`412 (“Konig”)
`Mendelson, Y. et al. “A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring,” Proceedings of the 28th IEEE
`EMBS Annual International Conference, New York City, New
`York, August 30-September 3, 2006; pp. 912-915 (“Mendelson 2”)
`U.S. Patent No. 6,608,562 to Kimura et al. titled “Vital Signal
`Detecting Apparatus,” issued August 19, 2003 (“Kimura”)
`
`Tremper, K. et al., “Pulse Oximetry,” Medical Intelligence Article,
`Anesthesiology, Vol. 70, No. 1, January 1989; pp. 98-108
`(“Tremper”)
`
`
`Patent Owner’s specific objections are provided below.
`
`Exhibit 1003 – Anthony Declaration
`
`
`
`Patent Owner objects to the Anthony Declaration as lacking foundation under
`
`FRE 702 and 705. For example, Dr. Anthony’s testimony about obviousness, in
`
`paragraphs 80-81, 94-95, 101 and 106, which purportedly shows the disclosures and
`
`motivations to combine the various prior art references, is conclusory and therefore
`
`inadmissible. Patent Owner likewise objects to the Anthony Declaration under FRE
`
`705 for failure to disclose any underlying facts or data for his conclusory statements.
`
`3
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`
`
`IPR2017-00317
`Patent 8,989,830
`
`Patent Owner further objects to conclusory paragraphs (e.g., ¶¶ 80-81, 94-95, 101
`
`and 106) under FRE 403 because the conclusory nature of the statements makes their
`
`probative value substantially outweighed by the danger of unfair prejudice,
`
`confusing the issues, unduly delay, wasting time, or needlessly presenting
`
`cumulative evidence.
`
`Exhibit 1004 – Curriculum Vitae of Dr. Brian W. Anthony
`
`Patent Owner objects to the Curriculum Vitae of Dr. Brian W. Anthony as
`
`inadmissible because it constitutes improper incorporation by reference under 37
`
`C.F.R. § 42.6(a)(3).
`
`Exhibit 1005 – Asada
`
`Patent Owner objects to Asada as inadmissible hearsay under FRE 801 and
`
`802 that does not fall under any hearsay exception, including those of FRE 803, 804,
`
`805, or 807.
`
`Patent Owner objects to Asada as not properly authenticated under FRE 901.
`
`The only evidence purporting to authenticate Asada is a Declaration (Exhibit 1018)
`
`that is not made on personal knowledge of the attested facts, and there is no evidence
`
`that the document is self-authenticating under FRE 902.
`
`Patent Owner objects to Asada under FRE 401-403 because its probative
`
`value is substantially outweighed by the danger of unfair prejudice, confusing the
`
`issues, unduly delay, wasting time, or needlessly presenting cumulative evidence.
`
`4
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`For example, Asada used to suggest the knowledge of one having ordinary skill in
`
`the art, yet it is clear that Asada represents knowledge of one having extraordinary
`
`skill in the art. For the same reasons, Patent Owner objects to Asada as irrelevant
`
`under FRE 401 and thus inadmissible under FRE 402. Patent Owner further objects
`
`to Asada as irrelevant under FRE 401 and thus inadmissible under FRE 402 to the
`
`extent that Asada is used as prior art, because Petitioner has produced no evidence
`
`that Asada was publicly available before the priority date of the ’830 Patent.
`
`Exhibit 1018 – Grenier Declaration (including attached exhibit)
`
`Patent Owner objects to the Grenier Declaration under FRE 602 because no
`
`evidence has been introduced to show the declarant had personal knowledge of the
`
`attested facts.
`
`Patent Owner objects to the Grenier Declaration as inadmissible hearsay
`
`under FRE 801 and 802 that does not fall under any hearsay exception, including
`
`those of FRE 803, 804, 805, or 807.
`
`Patent Owner objects to the Grenier Declaration as not properly authenticated
`
`under FRE 901. There is no evidence that the Grenier Declaration is authentic nor
`
`that the document is self-authenticating under FRE 902.
`
`Patent Owner objects to the Grenier Declaration under 1002 because it is not
`
`the best evidence of the content of the article that it seeks to support (Asada). Rather,
`
`the Asada article itself (Ex. 1005) is the best evidence of its own content.
`
`5
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`Exhibit 1011 – Al-Ali
`
`Patent Owner objects to Al-Ali as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
`
`Exhibit 1012 – Merriam Webster
`
`
`
`Patent Owner objects to Merriam Webster as not properly authenticated under
`
`FRE 901. There is no evidence that Merriam Webster is authentic nor that the
`
`document is self-authenticating under Federal Rule of Evidence 902.
`
`Patent Owner objects to Merriam Webster as inadmissible hearsay under FRE
`
`801 and 802 that does not fall under any hearsay exception, including those of FRE
`
`803, 804, 805, or 807.
`
`Exhibit 1013 – Mendelson 1
`
`Patent Owner objects to Mendelson 1 as not properly authenticated under FRE
`
`901. There is no evidence that Mendelson 1 is authentic nor that the document is
`
`self-authenticating under FRE 902.
`
`Patent Owner objects to Mendelson 1 as inadmissible hearsay under FRE 801
`
`and 802 that does not fall under any hearsay exception, including those of FRE 803,
`
`804, 805, or 807.
`
`Patent Owner objects to Mendelson 1 under FRE 401-403 because its
`
`probative value is substantially outweighed by the danger of unfair prejudice,
`
`confusing the issues, unduly delay, wasting time, or needlessly presenting
`
`6
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`cumulative evidence. For example, Mendelson 1 is used to suggest the knowledge
`
`of one having ordinary skill in the art, yet it is clear that Mendelson 1 represents
`
`knowledge of one having extraordinary skill in the art. For the same reasons, Patent
`
`Owner objects to Mendelson 1 as irrelevant under FRE 401 and thus inadmissible
`
`under FRE 402. Patent Owner further objects to Mendelson 1 as irrelevant under
`
`FRE 401 and thus inadmissible under FRE 402 to the extent that Mendelson 1 is
`
`used as prior art for any reason, because Petitioner has produced no evidence that
`
`Mendelson 1 was publicly available before the priority date of the ’830 Patent.
`
`Patent Owner objects to Mendelson 1 as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
`
`Exhibit 1014 – Konig
`
`Patent Owner objects to Konig as not properly authenticated under FRE 901.
`
`There is no evidence that Konig is authentic nor that the document is self-
`
`authenticating under FRE 902.
`
`Patent Owner objects to Konig as inadmissible hearsay under FRE 801 and
`
`802 that does not fall under any hearsay exception, including those of FRE 803, 804,
`
`805, or 807.
`
`Patent Owner objects to Konig under FRE 401-403 because its probative
`
`value is substantially outweighed by the danger of unfair prejudice, confusing the
`
`issues, unduly delay, wasting time, or needlessly presenting cumulative evidence.
`
`7
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`For example, Konig is used to suggest the knowledge of one having ordinary skill
`
`in the art, yet it is clear that Konig represents knowledge of one having extraordinary
`
`skill in the art. For the same reasons, Patent Owner objects to Konig as irrelevant
`
`under FRE 401 and thus inadmissible under FRE 402. Patent Owner further objects
`
`to Konig as irrelevant under FRE 401 and thus inadmissible under FRE 402 to the
`
`extent that Konig is used as prior art for any reason, because Petitioner has produced
`
`no evidence that Konig was publicly available before the priority date of the ’830
`
`Patent.
`
`Patent Owner objects to Konig as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3).
`
`Exhibit 1015 – Mendelson 2
`
`Patent Owner objects to Mendelson 2 as not properly authenticated under FRE
`
`901. There is no evidence that Mendelson 2 is authentic nor that the document is
`
`self-authenticating under FRE 902.
`
`Patent Owner objects to Mendelson 2 as inadmissible hearsay under FRE 801
`
`and 802 that does not fall under any hearsay exception, including those of FRE 803,
`
`804, 805, or 807.
`
`Patent Owner objects to Mendelson 2 under FRE 401-403 because its
`
`probative value is substantially outweighed by the danger of unfair prejudice,
`
`confusing the issues, unduly delay, wasting time, or needlessly presenting
`
`8
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`cumulative evidence. For example, Mendelson 2 is used to suggest the knowledge
`
`of one having ordinary skill in the art, yet it is clear that Mendelson 2 represents
`
`knowledge of one having extraordinary skill in the art. For the same reasons, Patent
`
`Owner objects to Mendelson 2 as irrelevant under FRE 401 and thus inadmissible
`
`under FRE 402. Patent Owner further objects to Mendelson 2 as irrelevant under
`
`FRE 401 and thus inadmissible under FRE 402 to the extent that Mendelson 2 is
`
`used as prior art for any reason, because Petitioner has produced no evidence that
`
`Mendelson 2 was publicly available before the priority date of the ’830 Patent.
`
`Patent Owner objects to Mendelson 2 as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
`
`Exhibit 1016 – Kimura
`
`Patent Owner objects to Kimura as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
`
`Exhibit 1017 – Tremper
`
`Patent Owner objects to Tremper as not properly authenticated under FRE
`
`901. There is no evidence that Tremper is authentic nor that the document is self-
`
`authenticating under FRE 902.
`
`Patent Owner objects to Tremper as inadmissible hearsay under FRE 801 and
`
`802 that does not fall under any hearsay exception, including those of FRE 803, 804,
`
`805, or 807.
`
`9
`
`
`
`IPR2017-00317
`Patent 8,989,830
`
`Patent Owner objects to Tremper under FRE 401-403 because its probative
`
`value is substantially outweighed by the danger of unfair prejudice, confusing the
`
`issues, unduly delay, wasting time, or needlessly presenting cumulative evidence.
`
`For example, Tremper is used to suggest the knowledge of one having ordinary skill
`
`in the art, yet it is clear that Tremper represents knowledge of one having
`
`extraordinary skill in the art. For the same reasons, Patent Owner objects to Tremper
`
`as irrelevant under FRE 401 and thus inadmissible under FRE 402. Patent Owner
`
`further objects to Tremper as irrelevant under FRE 401 and thus inadmissible under
`
`FRE 402 to the extent that Tremper is used as prior art for any reason, because
`
`Petitioner has produced no evidence that Tremper was publicly available before the
`
`priority date of the ’830 Patent.
`
`Patent Owner objects to Tremper as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
`
`
`Dated: June 19, 2017
`
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`
`
`Respectfully submitted,
`
`
`
`/Nicholas Kliewer/
`
`
`Nicholas C Kliewer
`Attorney for Patent Owner
`Registration No. 72,480
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
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`10
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`IPR2017-00317
`Patent 8,989,830
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that document has been served via electronic
`
`mail on June 19, 2017, to Petitioner at following email addresses pursuant to its
`
`consent
`
`in
`
`its Petition at p. 3: mspecht-PTAB@skgf.com, holoubek-
`
`PTAB@skgf.com, jfitzsimmons-PTAB@skgf.com, and PTAB@skgf.com.
`
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`/Nicholas Kliewer/
`
`
`Nicholas C Kliewer
`Attorney for Patent Owner
`Registration No. 72,480
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
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`11
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