`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 IPR2017-00319
`U.S. Patent No. 8,923,941
`
`
`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
`
`
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`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 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 6, 2017
`
`filing of Institution Decision (Paper 10). Patent Owner objects to and intends to seek
`
`the denial of the admission and consideration of the following documents:
`
`1004
`1006
`
`1008
`
`Exhibit No. Description
`1003
`Declaration of Dr. Majid Sarrafzadeh (“Sarrafzadeh
`Declaration”)
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`U.S. Patent Application Publication No. 2005/0209516 to Fraden,
`published September 22, 2005 (“Fraden”)
`U.S. Patent Application Publication No. 2008/0081972 to
`Debreczeny, published April 3, 2008 (“Debreczeny”)
`Certified English-language translation of Japanese Patent
`Application Publication No. 2005/040261 A to Numaga et al.,
`published February 17, 2005 (“Numaga Translation”)
`U.S. Patent Application Publication No. 2003/0065269 to Vetter
`et al., published April 3, 2003 (“Vetter”)
`
`1010
`
`
`1011
`
`1019
`
`U.S. Patent No. 5,297,548 to Pologe, issued March 29, 1994
`(“Pologe”)
`
`2
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`Med. Sci. Series, Int’l Fed’n for Med. and Biological Eng’g and
`the Int’l Org. for Med. Physics, Design of Pulse Oximeters (J.G.
`Webster ed., Inst. of Physics Publ’g 1997) (“J.G. Webster”)
`John Allen, Photoplethysmography and its application in clinical
`physiological measurement, Physiological Measurement 28
`(2007) (“Allen”)
`U.S. Patent Application Publication No. 2008/0132798 to Hong et
`al., published June 5, 2008 (“Hong”)
`U.S. Patent Application Publication No. 2008/0177162 to Bae et
`al., published July 24, 2008 (“Bae”)
`
`U.S. Patent No. 5,807,267 to Bryars et al. issued September 15,
`1998 (“Bryars”)
`
`Hyonyoung Han et al., Development of a wearable monitoring
`device with motion artifact reduced algorithm, International
`Conference on Control, Automation and Systems, IEEE (2007)
`(“Han”)
`
`G. Comtois & Y. Mendelson, A Comparative Evaluation of
`Adaptive Noise Cancellation Algorithms for Minimizing Motion
`Artifacts in a Forehead-Mounted Wearable Pulse Oximeter,
`IEEE (2007) (“Comtois”)
`Declaration of Gerard P. Grenier in support of G. Comtois & Y.
`Mendelson, A Comparative Evaluation of Adaptive Noise
`Cancellation Algorithms for Minimizing Motion Artifacts in a
`Forehead-Mounted Wearable Pulse Oximeter, IEEE (2007)
`(“Grenier Declaration 1”)
`U.S. Patent Application Publication No. 2004/0059236 to
`Margulies et al., published March 25, 2004 (“Margulies”)
`U.S. Patent Application Publication No. 2007/0016086 to Inukai
`et al., published January 18, 2007 (“Inukai”)
`U.S. Patent Application Publication No. 2003/0236647 to Yoon
`et al., published December 25, 2003 (“Yoon”)
`International Patent Application Publication No. 2007/013054
`to Schwartz, published February 1, 2007 (“Schwartz”)
`
`
`
`
`
`3
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`1038
`
`1039
`
`1041
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1052
`
`U.S. Patent No. 5,575,284 to Athan et al., issued November
`19, 1996 (“Athan”)
`U.S. Patent No. 5,503,016 to Koen, issued April 2, 1996
`(“Koen”)
`U.S. Patent Application Publication No. 2007/0027367 to Oliver
`et al., published February 1, 2007 (“Oliver”)
`U.S. Patent Application Publication No. 2005/0075542 to
`Goldreich, published April 7, 2005 (“Goldreich”)
`
`International Patent Application Publication No.
`WO2007/004089 to Moroney et al., published January 11, 2007
`(“Moroney”)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`G. Sen Gupta et al., Design of a Low-cost Physiological Parameter
`Measurement and Monitoring Device, Instrumentation and
`Measurement Technology Conference, IEEE (2007) (“Gupta”)
`U.S. Patent Application Publication No. 2006/0084879 to
`Nazarian et al., published April 20, 2006 (“Nazarian”)
`
`U.S. Patent No. 5,243,992 to Eckerle et al., issued September
`14, 1993 (“Eckerle”)
`U.S. Patent No. 4,955,379 to Hall, issued September 11, 1990
`(“Hall”)
`International Patent Application Publication No. WO
`2007/122375 to Crowe et al., published November 1, 2007
`(“Crowe”)
`Declaration of Gerard P. Grenier in support of G. Sen Gupta et al.,
`Design of a Low-cost Physiological Parameter Measurement and
`Monitoring Device, Instrumentation and Measurement Technology
`Conference, IEEE (2007) (Ex. 1045) and Hyonyoung Han et al.,
`Development of a wearable health monitoring device with motion
`artifact reduced algorithm, International Conference on Control,
`Automation and Systems, IEEE (2007) (“Grenier Declaration 2”)
`
`
`
`
`
`4
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`1059
`
`1060
`
`1062
`
`1063
`
`1065
`
`1066
`
`R.G. Lee et al. “A Mobile Care System With Alert Mechanism”
`IEEE Transactions on Information Technology in Biomedicine,
`Vol. 11, Issue 5, September 2007 (“Lee”)
`Declaration of Gerard P. Grenier in support of R.G. Lee et al. “A
`Mobile Care System With Alert Mechanism” IEEE Transactions
`on Information Technology in Biomedicine, Vol. 11, Issue 5,
`September 2007 (“Grenier Declaration 3”)
`U.S. Patent No. 5,396,893 to Oberg et al., issued March 14, 1995
`(“Oberg”)
`U.S. Patent No. 6,721,584 to Baker, Jr. et al., issued April 13,
`2004 (“Baker”)
`U.S. Patent Application Publication No. 2008/0154098 to Morris
`et al., published June 26, 2008 (“Morris”)
`International Patent Application Publication No. WO 00/44274
`to Pougatchev et al., published August 3, 2000 (“Pougatchev”)
`
`
`Patent Owner’s specific objections are provided below.
`
`Exhibit 1003 – Sarrafzadeh Declaration
`
`
`
`Patent Owner objects to the Sarrafzadeh Declaration as lacking foundation
`
`under FRE 702 and 705. For example, Dr. Sarrafzadeh’s testimony about
`
`obviousness, in paragraphs 87-88, 93, 105, 111, 117, 125, 128, 146, 153, 162, 167,
`
`and 184, 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 Sarrafzadeh Declaration under FRE 703 and 705 for failure
`
`to disclose any underlying facts or data for his conclusory statements and there is no
`
`indication that the declarant based those opinions on facts or data upon which an
`
`expert in the relevant field would reasonably rely. Patent Owner further objects to
`
`conclusory paragraphs (e.g., ¶¶ 87-88, 93, 105, 111, 117, 125, 128, 146, 153, 162,
`
`5
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`167, and 184) 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. Majid Sarrafzadeh
`
`
`Patent Owner objects to the Curriculum Vitae of Dr. Majid Sarrafzadeh as
`
`inadmissible because it constitutes improper incorporation by reference under 37
`
`C.F.R. § 42.6(a)(3) and is irrelevant under FRE 401 and thus inadmissible under
`
`FRE 403 because it is not relied upon in the Petition and thus its probative value is
`
`substantially outweighed by the danger of unfair prejudice, confusing the issues, and
`
`needlessly presenting cumulative evidence.
`
`Exhibit 1006 – Fraden
`
`
`Patent Owner objects to Fraden as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`
`
`
`
`6
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1008 – Debreczeny
`
`
`Patent Owner objects to Debreczeny as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1010 – Numaga Translation
`
`
`
`Patent Owner objects to the Numaga Translation of JP2005040261A (Ex.
`
`1009) under FRE 602 because no evidence has been introduced to show the declarant
`
`had personal knowledge of the attested facts. Patent Owner further objects to the
`
`Numaga Translation under FRE 603 and 604 due to an improper oath in the
`
`certification.
`
`Patent Owner objects to the Numaga Translation 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 Numaga Translation as not properly authenticated
`
`under FRE 901. There is no evidence that the Numaga Translation is authentic nor
`
`that the document is self-authenticating under FRE 902.
`
`7
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Patent Owner objects to the Numaga Translation under FRE 1002 because the
`
`certification is improper and does not comply with applicable rules and the Numaga
`
`Translation is thus not shown to be a true and correct translation. Absent a true and
`
`correct translation, Numaga (Exhibit 1009) is the best evidence.
`
`Exhibit 1011 – Vetter
`
`
`Patent Owner objects to Vetter as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1019 – Pologe
`
`
`Patent Owner objects to Pologe as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`
`
`
`
`
`
`8
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1020 – J.G. Webster
`
`Patent Owner objects to J.G. Webster as not properly authenticated under FRE
`
`901. There is no evidence that J.G. Webster is authentic nor that the document is
`
`self-authenticating under FRE 902.
`
`Patent Owner objects to J.G. 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.
`
`Patent Owner objects to J.G. Webster 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, J.G. Webster is used to suggest the knowledge
`
`of one having ordinary skill in the art, yet it is clear that J.G. Webster represents
`
`knowledge of one having extraordinary skill in the art. For the same reasons, Patent
`
`Owner objects to J.G. Webster as irrelevant under FRE 401 and thus inadmissible
`
`under FRE 402. Patent Owner further objects to J.G. Webster as irrelevant under
`
`FRE 401 and thus inadmissible under FRE 402 to the extent that J.G. Webster is
`
`used as prior art for any reason, because Petitioner has produced no evidence that
`
`J.G. Webster was publicly available before the priority date of the ’941 Patent.
`
`
`
`
`
`9
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1021 – Allen
`
`Patent Owner objects to Allen as not properly authenticated under FRE 901.
`
`There is no evidence that Allen is authentic nor that the document is self-
`
`authenticating under FRE 902.
`
`Patent Owner objects to Allen 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 Allen 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, Allen is used to suggest the knowledge of one having ordinary skill in the
`
`art, yet it is clear that Allen represents knowledge of one having extraordinary skill
`
`in the art. For the same reasons, Patent Owner objects to Allen as irrelevant under
`
`FRE 401 and thus inadmissible under FRE 402. Patent Owner further objects to
`
`Allen as irrelevant under FRE 401 and thus inadmissible under FRE 402 to the extent
`
`that Allen is used as prior art for any reason, because Petitioner has produced no
`
`evidence that Allen was publicly available before the priority date of the ’941 Patent.
`
`Patent Owner objects to Allen as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`10
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1022 – Hong
`
`
`Patent Owner objects to Hong as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1023 – Bae
`
`
`Patent Owner objects to Bae as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1024 – Bryars
`
`
`Patent Owner objects to Bryars as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`11
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1025 – Han
`Patent Owner objects to Han 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 Han as not properly authenticated under FRE 901.
`
`There only evidence purporting to authenticate Han is a Declaration (Exhibit 1052)
`
`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 Han 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, Han is used to suggest the knowledge of one having ordinary skill in the
`
`art, yet it is clear that Han represents knowledge of one having extraordinary skill in
`
`the art. For the same reasons, Patent Owner objects to Han as irrelevant under FRE
`
`401 and thus inadmissible under FRE 402. Patent Owner further objects to Han as
`
`irrelevant under FRE 401 and thus inadmissible under FRE 402 to the extent that
`
`Han is used as prior art for any reason, because Petitioner has produced no evidence
`
`that Han was publicly available before the priority date of the ’941 Patent.
`
`12
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1032 – Comtois
`
`Patent Owner objects to Comtois 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 Comtois as not properly authenticated under FRE
`
`901. There only evidence purporting to authenticate Comtois is a Declaration
`
`(Exhibit 1033) 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 Comtois 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, Comtois is used to suggest the knowledge of one having ordinary skill
`
`in the art, yet it is clear that Comtois represents knowledge of one having
`
`extraordinary skill in the art. For the same reasons, Patent Owner objects to Comtois
`
`as irrelevant under FRE 401 and thus inadmissible under FRE 402. Patent Owner
`
`further objects to Comtois as irrelevant under FRE 401 and thus inadmissible under
`
`FRE 402 to the extent that Comtois is used as prior art for any reason, because
`
`Petitioner has produced no evidence that Comtois was publicly available before the
`
`priority date of the ’941 Patent.
`
`
`
`13
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1033 – Grenier Declaration 1 (including attached exhibit)
`
`Patent Owner objects to the Grenier Declaration 1 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 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 the Grenier Declaration 1 as not properly
`
`authenticated under FRE 901. There is no evidence that the Grenier Declaration 1 is
`
`authentic nor that the document is self-authenticating under FRE 902.
`
`Patent Owner objects to the Grenier Declaration 1 under 1002 because it is
`
`not the best evidence of the content of the article that it seeks to support (Comtois).
`
`Rather, the Comtois article itself (Ex. 1032) is the best evidence of its own content.
`
`Exhibit 1034 – Margulies
`
`Patent Owner objects to Margulies as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`14
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1035 – Inukai
`
`Patent Owner objects to Inukai as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1036 – Yoon
`
`Patent Owner objects to Yoon as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1037 – Schwartz
`
`Patent Owner objects to Schwartz as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`
`
`15
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1038 – Athan
`
`Patent Owner objects to Athan as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1039 – Koen
`
`Patent Owner objects to Koen as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`Exhibit 1041 – Oliver
`
`Patent Owner objects to Oliver as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`
`
`
`
`16
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1043 – Goldreich
`
`Patent Owner objects to Goldreich as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1044 – Moroney
`
`Patent Owner objects to Moroney as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1045 – Gupta
`
`Patent Owner objects to Gupta 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 Gupta as not properly authenticated under FRE 901.
`
`There only evidence purporting to authenticate Gupta is a Declaration (Exhibit 1052)
`
`17
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`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 Gupta 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, Gupta is used to suggest the knowledge of one having ordinary skill in the
`
`art, yet it is clear that Gupta represents knowledge of one having extraordinary skill
`
`in the art. For the same reasons, Patent Owner objects to Gupta as irrelevant under
`
`FRE 401 and thus inadmissible under FRE 402. Patent Owner further objects to
`
`Gupta as irrelevant under FRE 401 and thus inadmissible under FRE 402 to the
`
`extent that Gupta is used as prior art for any reason, because Petitioner has produced
`
`no evidence that Gupta was publicly available before the priority date of the ’941
`
`Patent.
`
`Patent Owner objects to Gupta as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`
`
`
`
`18
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1046 – Nazarian
`
`Patent Owner objects to Nazarian as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1047 – Eckerle
`
`Patent Owner objects to Eckerle as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1048 – Hall
`
`Patent Owner objects to Hall as inadmissible because it constitutes improper
`
`incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant under FRE
`
`401 and thus inadmissible under FRE 403 because it is not relied upon in the Petition
`
`and thus its probative value is substantially outweighed by the danger of unfair
`
`prejudice, confusing the issues, and needlessly presenting cumulative evidence.
`
`19
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1049 – Crowe
`
`Patent Owner objects to Crowe as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`Exhibit 1052 – Grenier Declaration 2 (including attached exhibits)
`
`Patent Owner objects to the Grenier Declaration 2 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 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 the Grenier Declaration 2 as irrelevant under FRE
`
`401 and thus inadmissible under FRE 402; for example, documents referring to
`
`Wang are not relevant to this proceeding.
`
`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.
`
`20
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Patent Owner objects to the Grenier Declaration under 1002 because it is not
`
`the best evidence of the content of the articles that it seeks to support (Gupta and
`
`Han). Rather, the Gupta article (Ex. 1045) and the Han article (Ex. 1025) themselves
`
`are the best evidence of each’s own content.
`
`Exhibit 1059 – Lee
`
`Patent Owner objects to Lee 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 Lee as not properly authenticated under FRE 901.
`
`There only evidence purporting to authenticate Lee is a Declaration (Exhibit 1060)
`
`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 Lee 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, Lee is used to suggest the knowledge of one having ordinary skill in the
`
`art, yet it is clear that Lee represents knowledge of one having extraordinary skill in
`
`the art. For the same reasons, Patent Owner objects to Lee as irrelevant under FRE
`
`401 and thus inadmissible under FRE 402. Patent Owner further objects to Lee as
`
`irrelevant under FRE 401 and thus inadmissible under FRE 402 to the extent that
`
`21
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Lee is used as prior art for any reason, because Petitioner has produced no evidence
`
`that Lee was publicly available before the priority date of the ’941 Patent.
`
`Exhibit 1060 – Grenier Declaration 3 (including attached exhibit)
`
`Patent Owner objects to the Grenier Declaration 3 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 3 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 3 as not properly
`
`authenticated under FRE 901. There is no evidence that the Grenier Declaration 3 is
`
`authentic nor that the document is self-authenticating under FRE 902.
`
`Patent Owner objects to the Grenier Declaration 3 under 1002 because it is
`
`not the best evidence of the content of the article that it seeks to support (Lee).
`
`Rather, the Lee article itself (Ex. 1059) is the best evidence of its own content.
`
`Exhibit 1062 – Oberg
`
`Patent Owner objects to Oberg as irrelevant under FRE 401 and thus
`
`inadmissible under FRE 402 but the Board did not institute trial based on the
`
`reference, and it is not appropriately relied upon for another reason. Furthermore,
`
`Oberg is irrelevant under FRE 401 and thus inadmissible under FRE 403 because it
`
`22
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`is not relied upon in the Petition and thus its probative value is substantially
`
`outweighed by the danger of unfair prejudice, confusing the issues, and needlessly
`
`presenting cumulative evidence.
`
`Exhibit 1063 – Baker
`
`Patent Owner objects to Baker as irrelevant under FRE 401 and thus
`
`inadmissible under FRE 402 but the Board did not institute trial based on the
`
`reference, and it is not appropriately relied upon for another reason Furthermore,
`
`Baker is irrelevant under FRE 401 and thus inadmissible under FRE 403 because it
`
`is not relied upon in the Petition and thus its probative value is substantially
`
`outweighed by the danger of unfair prejudice, confusing the issues, and needlessly
`
`presenting cumulative evidence.
`
`Exhibit 1065 – Morris
`
`Patent Owner objects to Morris as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`under FRE 401 and thus inadmissible under FRE 403 because it is not relied upon
`
`in the Petition and thus its probative value is substantially outweighed by the danger
`
`of unfair prejudice, confusing the issues, and needlessly presenting cumulative
`
`evidence.
`
`23
`
`
`
`IPR2017-00319
`Patent 8,923,941
`
`Exhibit 1066 – Pougatchev
`
`Patent Owner objects to Pougatchev as inadmissible because it constitutes
`
`improper incorporation by reference under 37 C.F.R. § 42.6(a)(3) and is irrelevant
`
`un