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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 IPR2017-00318
`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)
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`IPR2017-00318
`U.S. Patent No. 8,886,269
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Apple Inc. (“Apple”) hereby
`
`objects under the Federal Rules of Evidence (“FRE”) and 37 C.F.R. § 42.62 to the
`
`admissibility of Exhibits 2007, 2009, 2011-2012, 2107-2114, and 2126-2135 (the
`
`“Challenged Exhibits”) cited in Valencell, Inc.’s Patent Owner’s Response (Paper
`
`20 and replacement Paper 22) and Conditional Motion to Amend (Paper 21). These
`
`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).
`
`1.
`
`Exhibit 2007
`
`Petitioner objects to Exhibit 2007, specifically at least ¶¶ 79-86, 89-90, 125-
`
`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
`
`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. For example, ¶ 89 refers to a definition from Ex. 2014, but Ex.
`
`2014 is an unrelated declaration from T. William Kennedy.
`
`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
`
`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
`
`
`
`Patent Owner Response are deemed waived. See Paper 8 at 3.
`
`Petitioner further objects to Exhibit 2007 to the extent it relies on any other
`
`exhibit objected to as set forth herein.
`
`2.
`
`Exhibit 2009
`
` 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
`
`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,
`
`and waste the time of the Board and Petitioner.
`
`3.
`
`Exhibit 2011
`
`To the extent Patent Owner relies on the contents of Exhibit 2011 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 further objects to Exhibit 2011
`
`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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`
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`- 2 -
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`
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`4.
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`Exhibit 2012
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`
`
`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`
`To the extent Patent Owner relies on the contents of Exhibit 2012 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 further objects to Exhibit 2012 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.
`
`5.
`
`Exhibit 2107
`
`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
`
`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 2107 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.
`
`6.
`
`Exhibit 2108
`
`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
`
`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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`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`Petitioner objects to Exhibit 2108 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.
`
`7.
`
`Exhibit 2109
`
`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.
`
`8.
`
`Exhibit 2110
`
`Petitioner objects to Exhibit 2110, specifically at least ¶¶ 39-56, 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 ¶¶ 40-41, 44, 48-49, and 51-55 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.
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`
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`- 4 -
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`
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`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`Petitioner further objects to Exhibit 2110 to the extent it relies on any other
`
`
`
`exhibit objected to as set forth herein.
`
`9.
`
`Exhibit 2111
`
`Petitioner objects to Exhibit 2111 under 37 C.F.R. § 42.6(d), which states,
`
`“[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
`
`2111 appears to be a duplicate of previously-filed Exhibit 1001. Existence of such
`
`a duplicate exhibit may lead to unnecessary confusion regarding the document
`
`being referenced, and was not filed with express Board authorization as required
`
`for such a duplicate exhibit.
`
`10. Exhibit 2112
`To the extent Patent Owner relies on the contents of Exhibit 2112 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 2112 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.
`
`Petitioner further objects to Exhibit 2112 as not being an original document
`
`under FRE 1002, an authentic duplicate under FRE 1003, or a document that falls
`
`
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`- 5 -
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`
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`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`under any exceptions to the original-document requirement, including those of
`
`
`
`FRE 1004. Exhibit 2112 contains highlighted portions without identification of
`
`whether such highlighted portions were in the original document (e.g., p. 60).
`
`11. Exhibit 2113
`To the extent Patent Owner relies on the contents of Exhibit 2113 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 2113 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.
`
`Petitioner further objects to Exhibit 2113 as not being an original document
`
`under FRE 1002, an authentic duplicate under FRE 1003, or a document that falls
`
`under any exceptions to the original-document requirement, including those of
`
`FRE 1004. Exhibit 2113 contains at least one duplicate page (e.g., pp. 66-67).
`
`12. Exhibit 2114
`To the extent Patent Owner relies on the contents of Exhibit 2114 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.
`
`
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`- 6 -
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`
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`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`Petitioner objects to Exhibit 2114 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.
`
`13. Exhibit 2126
`To the extent Patent Owner relies on the contents of Exhibit 2126 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 2127
`To the extent Patent Owner relies on the contents of Exhibit 2127 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.
`
`15. Exhibit 2128
`To the extent Patent Owner relies on the contents of Exhibit 2128 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.
`
`
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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
`
`
`
`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`
`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.
`
`17. 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.
`
`18. 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
`
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`those of FRE 803, 804, 805 or 807.
`
`19. Exhibit 2132
`To the extent Patent Owner relies on the contents of Exhibit 2132 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.
`
`
`
`- 8 -
`
`
`
`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`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.
`
`Petitioner objects to Exhibit 2132 under 37 C.F.R. § 42.6(d), which states,
`
`“[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
`
`2132 appears to be a duplicate of previously-filed Exhibit 1005. Existence of such
`
`a duplicate exhibit may lead to unnecessary confusion regarding the document
`
`being referenced, and was not filed with express Board authorization as required
`
`for such a duplicate exhibit.
`
`20. 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.
`
`
`
`- 9 -
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`
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`21. Exhibit 2134
`To the extent Patent Owner relies on the contents of Exhibit 2134 for the
`
`
`
`IPR2017-00318
`
`U.S. Patent No. 8,886,269
`
`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
`
`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
`
`22. Exhibit 2135
`To the extent Patent Owner relies on the contents of Exhibit 2135 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.
`
`Respectfully submitted,
`
`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
`
`
`
`- 10 -
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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
`
`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,
`
`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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