`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`____________________
`
`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`____________________
`
`
`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
`
`
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`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 2010, 2012-2015, 2108, 2109, 2115-2116, and 2126-2138
`
`(the “Challenged Exhibits”) cited in Valencell, Inc.’s Patent Owner’s Response
`
`(Paper 23) and Conditional Motion to Amend (Paper 24). These objections are
`
`being timely filed within five (5) business days of the Patent Owner’s service of
`
`the exhibits to which these objections are directed. Apple files and serves Valencell
`
`with these objections to provide notice that Apple may move to exclude the
`
`Challenged Exhibits under 37 C.F.R. § 42.64(c).
`
`1.
`
`Exhibit 2010
`
`Petitioner objects to Exhibit 2010, specifically at least ¶¶ 40, 53, 82-83, and
`
`87-92, 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.
`
`Petitioner objects to Exhibit 2010, specifically at least ¶¶ 37-39, 41-52, 54,
`
`56-65, 70-71, 79-80, 85-86, and 92-95, 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 Response or the Conditional Motion to
`
`
`
`- 1 -
`
`
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`Amend. Any arguments not made in the Patent Owner Response are deemed
`
`
`
`waived. See Paper 12 at 3.
`
`2.
`
`Exhibit 2012
`
`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.
`
`3.
`
`Exhibit 2013
`
`To the extent Patent Owner relies on the contents of Exhibit 2013 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 2013 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.
`
`4.
`
`Exhibit 2014
`
`To the extent Patent Owner relies on the contents of Exhibit 2014 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`
`
`- 2 -
`
`
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`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 2014 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 2015
`
`To the extent Patent Owner relies on the contents of Exhibit 2015 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 2015 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.
`
`
`
`- 3 -
`
`
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`Petitioner further 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 further 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 2115
`
`Petitioner objects to Exhibit 2115 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
`
`2115 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.
`
`
`
`- 4 -
`
`
`
`
`
`9.
`
`Exhibit 2116
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`To the extent Patent Owner relies on the contents of Exhibit 2116 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 2116 under FRE 901 as lacking proper
`
`authentication. Patent Owner has failed to produce any evidence to support a
`
`finding that this exhibit is what the Patent Owner claims it is.
`
`10. Exhibit 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.
`
`11. 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.
`
`12. Exhibit 2136
`To the extent Patent Owner relies on the contents of Exhibit 2136 for the
`
`truth of the matter asserted, Petitioner objects to such contents as inadmissible
`
`
`
`- 5 -
`
`
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`hearsay under FRE 801 and 802 that does not fall under any exceptions, including
`
`
`
`those of FRE 803, 804, 805 or 807.
`
`13. Exhibit 2137
`To the extent Patent Owner relies on the contents of Exhibit 2137 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 2138
`To the extent Patent Owner relies on the contents of Exhibit 2138 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 2138 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 -
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`
`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
`
`
`
`
`
`- 7 -
`
`
`
`IPR2017-00321
`U.S. Patent No. 8,923,941
`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
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
