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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
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`v.
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`VALENCELL, INC.
`Patent Owner
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`____________________
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`____________________
`
`
`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
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`
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`
`
`IPR2017-00318
`U.S. Patent No. 8,886,269
`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, 2009, 2011-2012, 2107-2114, and 2126-2135 (the
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`“Challenged Exhibits”) cited in Valencell, Inc.’s Patent Owner’s Response (Paper
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`20 and replacement Paper 22) and Conditional Motion to Amend (Paper 21). These
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`objections are being timely filed within five (5) business days of the Patent
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`Owner’s service of the exhibits to which these objections are directed. Apple files
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`and serves Valencell with these objections to provide notice that Apple may move
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`to exclude the 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 ¶¶ 79-86, 89-90, 125-
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`126, 132-133, 136, 145, 156, 168-169, 173, 180-184, 186, and 188-190 as
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`improper expert testimony under FRE 702 and 703. The testimony is based on
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`insufficient facts or data, is not the product of reliable principles and methods, and
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`the expert has not reliably applied the appropriate principles and methods to the
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`facts of the case. For example, ¶ 89 refers to a definition from Ex. 2014, but Ex.
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`2014 is an unrelated declaration from T. William Kennedy.
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`In addition, at least ¶¶ 93, 112, 137-138, 149, 155, 158-159, 175, and 191-
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`192 are inadmissible as irrelevant pursuant to FRE 401, 402, and 403 because they
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`have not been relied upon in support of any argument made in the Patent Owner
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`- 1 -
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
`Response or the Conditional Motion to Amend. Any arguments not made in the
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`Patent Owner Response are deemed 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 2009
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` Petitioner objects to Exhibit 2009 as irrelevant under FRE 402 and 403.
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`Exhibit 2009 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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`IPR2017-00318
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`U.S. Patent No. 8,886,269
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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 2107
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`To the extent Patent Owner relies on the contents of Exhibit 2107 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.
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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
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`finding that this exhibit is what the Patent Owner claims it is.
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`6.
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`Exhibit 2108
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`To the extent Patent Owner relies on the contents of Exhibit 2108 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.
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`- 3 -
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
`Petitioner objects to Exhibit 2108 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 2109
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`To the extent Patent Owner relies on the contents of Exhibit 2109 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.
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`Petitioner objects to Exhibit 2109 under FRE 901 as lacking proper
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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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`8.
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`Exhibit 2110
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`Petitioner objects to Exhibit 2110, specifically at least ¶¶ 39-56, as improper
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`expert testimony under FRE 702 and 703. The testimony is based on insufficient
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`facts or data, is not the product of reliable principles and methods, and the expert
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`has not reliably applied the appropriate principles and methods to the facts of the
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`case.
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`In addition, at least ¶¶ 40-41, 44, 48-49, and 51-55 are inadmissible pursuant
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`to FRE 402 because they have not been relied upon in support of any argument
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`made in the Patent Owner Response or Conditional Motion to Amend.
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`- 4 -
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
`Petitioner further objects to Exhibit 2110 to the extent it relies on any other
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`
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`exhibit objected to as set forth herein.
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`9.
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`Exhibit 2111
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`Petitioner objects to Exhibit 2111 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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`2111 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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`10. Exhibit 2112
`To the extent Patent Owner relies on the contents of Exhibit 2112 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.
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`Petitioner objects to Exhibit 2112 under FRE 901 as lacking proper
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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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`Petitioner further objects to Exhibit 2112 as not being an original document
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`under FRE 1002, an authentic duplicate under FRE 1003, or a document that falls
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`- 5 -
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
`under any exceptions to the original-document requirement, including those of
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`
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`FRE 1004. Exhibit 2112 contains highlighted portions without identification of
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`whether such highlighted portions were in the original document (e.g., p. 60).
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`11. Exhibit 2113
`To the extent Patent Owner relies on the contents of Exhibit 2113 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.
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`Petitioner objects to Exhibit 2113 under FRE 901 as lacking proper
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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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`Petitioner further objects to Exhibit 2113 as not being an original document
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`under FRE 1002, an authentic duplicate under FRE 1003, or a document that falls
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`under any exceptions to the original-document requirement, including those of
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`FRE 1004. Exhibit 2113 contains at least one duplicate page (e.g., pp. 66-67).
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`12. Exhibit 2114
`To the extent Patent Owner relies on the contents of Exhibit 2114 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.
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`- 6 -
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
`Petitioner objects to Exhibit 2114 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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`13. Exhibit 2126
`To the extent Patent Owner relies on the contents of Exhibit 2126 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.
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`14. Exhibit 2127
`To the extent Patent Owner relies on the contents of Exhibit 2127 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.
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`15. Exhibit 2128
`To the extent Patent Owner relies on the contents of Exhibit 2128 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.
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`- 7 -
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`16. Exhibit 2129
`To the extent Patent Owner relies on the contents of Exhibit 2129 for the
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
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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.
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`17. Exhibit 2130
`To the extent Patent Owner relies on the contents of Exhibit 2130 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.
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`18. Exhibit 2131
`To the extent Patent Owner relies on the contents of Exhibit 2131 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.
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`19. Exhibit 2132
`To the extent Patent Owner relies on the contents of Exhibit 2132 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
`
`those of FRE 803, 804, 805 or 807.
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`- 8 -
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
`Petitioner objects to Exhibit 2132 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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`Petitioner objects to Exhibit 2132 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
`
`even as an exhibit or an appendix, without express Board authorization.” Exhibit
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`2132 appears to be a duplicate of previously-filed Exhibit 1005. Existence of such
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`a duplicate exhibit may lead to unnecessary confusion regarding the document
`
`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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`20. Exhibit 2133
`To the extent Patent Owner relies on the contents of Exhibit 2133 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
`
`those of FRE 803, 804, 805 or 807.
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`Petitioner objects to Exhibit 2133 under FRE 901 as lacking proper
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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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`- 9 -
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`21. Exhibit 2134
`To the extent Patent Owner relies on the contents of Exhibit 2134 for the
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`
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`IPR2017-00318
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`U.S. Patent No. 8,886,269
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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
`
`those of FRE 803, 804, 805 or 807.
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`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
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`finding that this exhibit is what the Patent Owner claims it is.
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`22. Exhibit 2135
`To the extent Patent Owner relies on the contents of Exhibit 2135 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.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Michelle K. Holoubek, Reg. # 54,179/
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`
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`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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`- 10 -
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`
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`IPR2017-00318
`U.S. Patent No. 8,886,269
`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
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`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:
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`
`
`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
`
`
`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
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`
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`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner
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`
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`
`
`
`Date: September 29, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`