`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 IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`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
`
`
`
`
`
`IPR2017-00318
`Patent 8,886,269
`
`Patent Owner Valencell, Inc. (“Patent Owner” or “Valencell”) hereby files
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`the following objections to evidence under the Federal Rules of Evidence (“FRE”)
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`and 37 C.F.R. § 42.62(b)(1) to the admissibility of the following evidence submitted
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`by Apple Inc. (“Petitioner” or “Apple”) in support of its Petition for Inter Partes
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`Review. Valencell files and serves Apple with these objections to provide notice that
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`Valencell may move to exclude the challenged exhibits under 37 C.F.R. § 42.64(c).
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`These objections are made within 10 business days from the June 5, 2017
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`filing of Institution Decision (Paper 7). Patent Owner objects to and intends to seek
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`the denial of the admission and consideration of the following documents:
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`1004
`1005
`
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`1018
`
`Exhibit No. Description
`1003
`Declaration of Dr. Brian W. Anthony in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,886,269
`(“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”)
`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”)
`
`1012
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`1013
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`2
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`IPR2017-00318
`Patent 8,886,269
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`1014
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`1015
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`1016
`
`1017
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`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
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`
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`Patent Owner objects to the Anthony Declaration as lacking foundation under
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`FRE 702 and 705. For example, Dr. Anthony’s testimony about obviousness, in
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`paragraphs 84, 95, 107, 125, and 134 which purportedly shows the disclosures and
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`motivations to combine the various prior art references, is conclusory and therefore
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`inadmissible. Patent Owner likewise objects to the Anthony Declaration under FRE
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`705 for failure to disclose any underlying facts or data for his conclusory statements.
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`Patent Owner further objects to conclusory paragraphs (e.g., ¶¶ 84, 95, 107, 125, and
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`134) under FRE 403 because the conclusory nature of the statements makes their
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`probative value substantially outweighed by the danger of unfair prejudice,
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`confusing the issues, unduly delay, wasting time, or needlessly presenting
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`IPR2017-00318
`Patent 8,886,269
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`cumulative evidence.
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`Exhibit 1004 – Curriculum Vitae of Dr. Brian W. Anthony
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`Patent Owner objects to the Curriculum Vitae of Dr. Brian W. Anthony as
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`inadmissible because it constitutes improper incorporation by reference under 37
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`C.F.R. § 42.6(a)(3).
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`Exhibit 1005 – Asada
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`Patent Owner objects to Asada as inadmissible hearsay under FRE 801 and
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`802 that does not fall under any hearsay exception, including those of FRE 803, 804,
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`805, or 807.
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`Patent Owner objects to Asada as not properly authenticated under FRE 901.
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`The only evidence purporting to authenticate Asada is a Declaration (Exhibit 1018)
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`that is not made on personal knowledge of the attested facts, and there is no evidence
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`that the document is self-authenticating under FRE 902.
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`Patent Owner objects to Asada under FRE 401-403 because its probative
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`value is substantially outweighed by the danger of unfair prejudice, confusing the
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`issues, unduly delay, wasting time, or needlessly presenting cumulative evidence.
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`For example, Asada used to suggest the knowledge of one having ordinary skill in
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`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
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`under FRE 401 and thus inadmissible under FRE 402. Patent Owner further objects
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`IPR2017-00318
`Patent 8,886,269
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`to Asada as irrelevant under FRE 401 and thus inadmissible under FRE 402 to the
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`extent that Asada is used as prior art for any reason, because Petitioner has produced
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`no evidence that Asada was publicly available before the priority date of the ’269
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`Patent.
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`Exhibit 1018 – Grenier Declaration (including attached exhibit)
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`Patent Owner objects to the Grenier Declaration under FRE 602 because no
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`evidence has been introduced to show the declarant had personal knowledge of the
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`attested facts.
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`Patent Owner objects to the Grenier Declaration as inadmissible hearsay
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`under FRE 801 and 802 that does not fall under any hearsay exception, including
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`those of FRE 803, 804, 805, or 807.
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`Patent Owner objects to the Grenier Declaration as not properly authenticated
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`under FRE 901. There is no evidence that the Grenier Declaration is authentic nor
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`that the document is self-authenticating under FRE 902.
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`Patent Owner objects to the Grenier Declaration under 1002 because it is not
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`the best evidence of the content of the article that it seeks to support (Asada). Rather,
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`the Asada article itself (Ex. 1005) is the best evidence of its own content.
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`Exhibit 1012 – Merriam Webster
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`Patent Owner objects to Merriam Webster as not properly authenticated under
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`FRE 901. There is no evidence that Merriam Webster is authentic nor that the
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`Patent 8,886,269
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`document is self-authenticating under Federal Rule of Evidence 902.
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`Patent Owner objects to Merriam Webster as inadmissible hearsay under FRE
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`801 and 802 that does not fall under any hearsay exception, including those of FRE
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`803, 804, 805, or 807.
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`Patent Owner objects to Merriam Webster as inadmissible because it
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`constitutes improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
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`Exhibit 1013 – Mendelson 1
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`Patent Owner objects to Mendelson 1 as not properly authenticated under FRE
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`901. There is no evidence that Mendelson 1 is authentic nor that the document is
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`self-authenticating under FRE 902.
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`Patent Owner objects to Mendelson 1 as inadmissible hearsay under FRE 801
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`and 802 that does not fall under any hearsay exception, including those of FRE 803,
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`804, 805, or 807.
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`Patent Owner objects to Mendelson 1 under FRE 401-403 because its
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`probative value is substantially outweighed by the danger of unfair prejudice,
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`confusing the issues, unduly delay, wasting time, or needlessly presenting
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`cumulative evidence. For example, Mendelson 1 is used to suggest the knowledge
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`of one having ordinary skill in the art, yet it is clear that Mendelson 1 represents
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`knowledge of one having extraordinary skill in the art. For the same reasons, Patent
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`Owner objects to Mendelson 1 as irrelevant under FRE 401 and thus inadmissible
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`Patent 8,886,269
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`under FRE 402. Patent Owner further objects to Mendelson 1 as irrelevant under
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`FRE 401 and thus inadmissible under FRE 402 to the extent that Mendelson 1 is
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`used as prior art for any reason, because Petitioner has produced no evidence that
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`Mendelson 1 was publicly available before the priority date of the ’269 Patent.
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`Patent Owner objects to Mendelson 1 as inadmissible because it constitutes
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`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
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`Exhibit 1014 – Konig
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`Patent Owner objects to Konig as not properly authenticated under FRE 901.
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`There is no evidence that Konig is authentic nor that the document is self-
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`authenticating under FRE 902.
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`Patent Owner objects to Konig as inadmissible hearsay under FRE 801 and
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`802 that does not fall under any hearsay exception, including those of FRE 803, 804,
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`805, or 807.
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`Patent Owner objects to Konig under FRE 401-403 because its probative
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`value is substantially outweighed by the danger of unfair prejudice, confusing the
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`issues, unduly delay, wasting time, or needlessly presenting cumulative evidence.
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`For example, Konig is used to suggest the knowledge of one having ordinary skill
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`in the art, yet it is clear that Konig represents knowledge of one having extraordinary
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`skill in the art. For the same reasons, Patent Owner objects to Konig as irrelevant
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`under FRE 401 and thus inadmissible under FRE 402. Patent Owner further objects
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`IPR2017-00318
`Patent 8,886,269
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`to Konig as irrelevant under FRE 401 and thus inadmissible under FRE 402 to the
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`extent that Konig is used as prior art for any reason, because Petitioner has produced
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`no evidence that Konig was publicly available before the priority date of the ’269
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`Patent.
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`Patent Owner objects to Konig as inadmissible because it constitutes improper
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`incorporation by reference under 37 C.F.R. § 42.6(a)(3).
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`Exhibit 1015 – Mendelson 2
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`Patent Owner objects to Mendelson 2 as not properly authenticated under FRE
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`901. There is no evidence that Mendelson 2 is authentic nor that the document is
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`self-authenticating under FRE 902.
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`Patent Owner objects to Mendelson 2 as inadmissible hearsay under FRE 801
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`and 802 that does not fall under any hearsay exception, including those of FRE 803,
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`804, 805, or 807.
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`Patent Owner objects to Mendelson 2 under FRE 401-403 because its
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`probative value is substantially outweighed by the danger of unfair prejudice,
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`confusing the issues, unduly delay, wasting time, or needlessly presenting
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`cumulative evidence. For example, Mendelson 2 is used to suggest the knowledge
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`of one having ordinary skill in the art, yet it is clear that Mendelson 2 represents
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`knowledge of one having extraordinary skill in the art. For the same reasons, Patent
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`Owner objects to Mendelson 2 as irrelevant under FRE 401 and thus inadmissible
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`IPR2017-00318
`Patent 8,886,269
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`under FRE 402. Patent Owner further objects to Mendelson 2 as irrelevant under
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`FRE 401 and thus inadmissible under FRE 402 to the extent that Mendelson 2 is
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`used as prior art for any reason, because Petitioner has produced no evidence that
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`Mendelson 2 was publicly available before the priority date of the ’269 Patent.
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`Patent Owner objects to Mendelson 2 as inadmissible because it constitutes
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`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
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`Exhibit 1016 – Kimura
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`Patent Owner objects to Kimura as inadmissible because it constitutes
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`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
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`Exhibit 1017 – Tremper
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`Patent Owner objects to Tremper as not properly authenticated under FRE
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`901. There is no evidence that Tremper is authentic nor that the document is self-
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`authenticating under FRE 902.
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`Patent Owner objects to Tremper as inadmissible hearsay under FRE 801 and
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`802 that does not fall under any hearsay exception, including those of FRE 803, 804,
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`805, or 807.
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`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.
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`For example, Tremper is used to suggest the knowledge of one having ordinary skill
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`IPR2017-00318
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`in the art, yet it is clear that Tremper represents knowledge of one having
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`extraordinary skill in the art. For the same reasons, Patent Owner objects to Tremper
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`as irrelevant under FRE 401 and thus inadmissible under FRE 402. Patent Owner
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`further objects to Tremper as irrelevant under FRE 401 and thus inadmissible under
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`FRE 402 to the extent that Tremper is used as prior art for any reason, because
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`Petitioner has produced no evidence that Tremper was publicly available before the
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`priority date of the ’269 Patent.
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`Patent Owner objects to Tremper as inadmissible because it constitutes
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`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3).
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`Dated: June 19, 2017
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`Respectfully submitted,
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`
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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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`IPR2017-00318
`Patent 8,886,269
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`CERTIFICATE OF SERVICE ON PATENT OWNER
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`The undersigned hereby certifies that document has been served via electronic
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`mail on June 19, 2017, to Petitioner at following email addresses pursuant to its
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`consent
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`in
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`its Petition at p. 3: mspecht-PTAB@skgf.com, holoubek-
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`PTAB@skgf.com, jfitzsimmons-PTAB@skgf.com, and PTAB@skgf.com.
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`/Nicholas Kliewer/
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`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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