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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`____________________
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`____________________
`
`
`PETITIONER’S OBJECTIONS TO PATENT OWNER’S
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`IPR2017-00317
`U.S. Patent No. 8,989,830
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Apple Inc. (“Apple”) hereby
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`objects under the Federal Rules of Evidence (“FRE”) and 37 C.F.R. § 42.62 to the
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`admissibility of Exhibits 2007, 2010-2012, 2105-2110, and 2128-2134 (the
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`“Challenged Exhibits”) cited in Valencell, Inc.’s Patent Owner’s Response (Paper
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`19) and Conditional Motion to Amend (Paper 20). These objections are being
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`timely filed within five (5) business days of the Patent Owner’s service of the
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`exhibits to which these objections are directed. Apple files and serves Valencell
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`with these objections to provide notice that Apple may move to exclude the
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`Challenged Exhibits under 37 C.F.R. § 42.64(c).
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`1.
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`Exhibit 2007
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`Petitioner objects to Exhibit 2007, specifically at least ¶¶ 72-79, 82, 84, 86,
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`91, 94, 96, 118, 138, 140-143, and 147-150 as improper expert testimony under
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`FRE 702 and 703. The testimony is based on insufficient facts or data, is not the
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`product of reliable principles and methods, and the expert has not reliably applied
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`the appropriate principles and methods to the facts of the case. For example, ¶ 82
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`refers to an Exhibit 2014, which was neither filed with the Board or served on
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`Petitioner’s counsel.
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`In addition, at least ¶¶ 79 and 106 are inadmissible as irrelevant pursuant to
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`FRE 401, 402, and 403 because they have not been relied upon in support of any
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`argument made in the Patent Owner Response or the Conditional Motion to
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`
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`- 1 -
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`
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`IPR2017-00317
`
`U.S. Patent No. 8,989,830
`Amend. Any arguments not made in the Patent Owner Response are deemed
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`
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`waived. See Paper 8 at 3.
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`Petitioner further objects to Exhibit 2007 to the extent it relies on any other
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`exhibit objected to as set forth herein.
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`2.
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`Exhibit 2010
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` Petitioner objects to Exhibit 2010 as irrelevant under FRE 402 and 403.
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`Exhibit 2010 is not cited in either the Patent Owner’s Response or the Conditional
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`Motion to Amend. In addition, even if relevant, the probative value of the
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`evidence is outweighed by its tendency to confuse the issues, cause undue delay,
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`and waste the time of the Board and Petitioner.
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`3.
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`Exhibit 2011
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`To the extent Patent Owner relies on the contents of Exhibit 2011 for the
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`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
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`those of FRE 803, 804, 805 or 807. Petitioner further objects to Exhibit 2011
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`under FRE 901 as lacking proper authentication. Patent Owner has failed to
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`produce any evidence to support a finding that this exhibit is what the Patent
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`Owner claims it is.
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`- 2 -
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`4.
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`Exhibit 2012
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`
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`IPR2017-00317
`
`U.S. Patent No. 8,989,830
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`To the extent Patent Owner relies on the contents of Exhibit 2012 for the
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`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
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`those of FRE 803, 804, 805 or 807. Petitioner further objects to Exhibit 2012 under
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`FRE 901 as lacking proper authentication. Patent Owner has failed to produce any
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`evidence to support a finding that this exhibit is what the Patent Owner claims it is.
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`5.
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`Exhibit 2105
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`Petitioner objects to Exhibit 2105 under 37 C.F.R. § 42.6(d), which states,
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`“[a] document already in the record of the proceeding must not be filed again, not
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`even as an exhibit or an appendix, without express Board authorization.” Exhibit
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`2105 appears to be a duplicate of previously-filed Exhibit 1001. Existence of such
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`a duplicate exhibit may lead to unnecessary confusion regarding the document
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`being referenced, and was not filed with express Board authorization as required
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`for such a duplicate exhibit.
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`6.
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`Exhibit 2106
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`To the extent Patent Owner relies on the contents of Exhibit 2106 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
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`
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`- 3 -
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`
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`IPR2017-00317
`
`U.S. Patent No. 8,989,830
`Petitioner objects to Exhibit 2106 under FRE 901 as lacking proper
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`
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`authentication. Patent Owner has failed to produce any evidence to support a
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`finding that this exhibit is what the Patent Owner claims it is.
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`7.
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`Exhibit 2107
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`To the extent Patent Owner relies on the contents of Exhibit 2107 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
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`Petitioner objects to Exhibit 2107 under FRE 901 as lacking proper
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`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
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`8.
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`Exhibit 2108
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`To the extent Patent Owner relies on the contents of Exhibit 2108 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
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`Petitioner objects to Exhibit 2108 under FRE 901 as lacking proper
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`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
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`
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`- 4 -
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`9.
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`Exhibit 2109
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`
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`IPR2017-00317
`
`U.S. Patent No. 8,989,830
`
`To the extent Patent Owner relies on the contents of Exhibit 2109 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`Petitioner objects to Exhibit 2109 under FRE 901 as lacking proper
`
`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
`
`10. Exhibit 2110
`Petitioner objects to Exhibit 2110, specifically at least ¶¶ 39-55, as improper
`
`expert testimony under FRE 702 and 703. The testimony is based on insufficient
`
`facts or data, is not the product of reliable principles and methods, and the expert
`
`has not reliably applied the appropriate principles and methods to the facts of the
`
`case.
`
`In addition, at least ¶¶ 41, 44, 48-55 are inadmissible pursuant to FRE 402
`
`because they have not been relied upon in support of any argument made in the
`
`Patent Owner Response or Conditional Motion to Amend.
`
`Petitioner further objects to Exhibit 2007 to the extent it relies on any other
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`exhibit objected to as set forth herein.
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`
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`- 5 -
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`
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`11. Exhibit 2128
`To the extent Patent Owner relies on the contents of Exhibit 2128 for the
`
`
`
`IPR2017-00317
`
`U.S. Patent No. 8,989,830
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`12. Exhibit 2129
`To the extent Patent Owner relies on the contents of Exhibit 2129 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`13. Exhibit 2130
`To the extent Patent Owner relies on the contents of Exhibit 2130 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`14. Exhibit 2131
`To the extent Patent Owner relies on the contents of Exhibit 2131 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
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`- 6 -
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`
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`15. Exhibit 2132
`To the extent Patent Owner relies on the contents of Exhibit 2132 for the
`
`
`
`IPR2017-00317
`
`U.S. Patent No. 8,989,830
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`Petitioner objects to Exhibit 2132 under FRE 901 as lacking proper
`
`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
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`Petitioner further objects to Exhibit 2132 under 37 C.F.R. § 42.63 as not
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`being listed in any Exhibit List, and under 37 C.F.R. § 42.6 as not being served on
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`Petitioner’s counsel.
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`16. Exhibit 2133
`To the extent Patent Owner relies on the contents of Exhibit 2133 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`Petitioner objects to Exhibit 2133 under FRE 901 as lacking proper
`
`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
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`- 7 -
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`
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`17. Exhibit 2134
`To the extent Patent Owner relies on the contents of Exhibit 2134 for the
`
`
`
`IPR2017-00317
`
`U.S. Patent No. 8,989,830
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`Petitioner objects to Exhibit 2134 under FRE 901 as lacking proper
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`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`
`
`
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner
`
`
`Date: September 29, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`
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`- 8 -
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`
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`IPR2017-00317
`U.S. Patent No. 8,989,830
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PETITIONER’S
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`OBJECTIONS TO PATENT OWNER’S EVIDENCE PURSUANT TO 37
`
`C.F.R. § 42.64(b)(1) was served electronically via e-mail on September 29, 2017,
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`in its entirety on the following counsel of record for Patent Owner:
`
`
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`
`
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`
`
`
`
`
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner
`
`
`
`
`
`
`Date: September 29, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`
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