`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2020-01523
`Patent No. 8,457,703
`____________
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PETITIONER’S EVIDENCE
`
`
`
`1
`
`
`
`Patent Owner’s motion to exclude (Paper 25, hereinafter the “Motion”) is
`
`simply an attempt to prevent the Board from considering relevant evidence, and
`
`should be denied.
`
`I.
`
`Introduction
`Exhibit 1038 is a copy of a webpage archived by The Wayback Machine, a
`
`well-known service operated by The Internet Archive. This is indicated by the text
`
`“The Wayback Machine” included at the top of the first page of the exhibit. See
`
`Ex. 1038, 1. The Uniform Resource Locator (URL) of the archived page is also
`
`included at the top of the first page, and at the bottom of all pages. See id.
`
`Notably, Exhibit 1038 is cited in a single paragraph of Petitioner’s Reply
`
`(Paper 18), and is only cited to corroborate disclosure from the Diab reference.
`
`See Paper 18, 10-11 (each citation to Ex. 1038 appears in a string cite after a
`
`citation to Diab (Ex. 1007)). Exhibit 1038 is not asserted as prior art against the
`
`claims of the ’703 patent. See id.
`
`II.
`
`Patent Owner’s Authenticity Challenge Fails
`Under Fed. R. Evid. 901, authentication requires production of “evidence
`
`sufficient to support a finding that the item is what the proponent claims it is.” Fed.
`
`R. Evid. 901(a). Evidence can be authenticated based on the “appearance,
`
`contents, substance, internal patterns, or other distinctive characteristics of the
`
`item, taken together with all the circumstances.” Fed. R. Evid. 901(b)(4).
`
`
`
`1
`
`
`
`In this case, the “appearance, contents, [and] substance” of Exhibit 1038 all
`
`support a finding under Fed. R. Evid. 901(b)(4) that the document is what it
`
`purports to be: a copy of a webpage archived by The Wayback Machine. As stated
`
`above, Exhibit 1038 includes a header clearly indicating its source as The
`
`Wayback Machine. See Ex. 1038, 1. Notably, Patent Owner had no difficulty in
`
`identifying Exhibit 1038 as a copy of a webpage from The Wayback Machine in its
`
`Motion to Exclude. See Motion, 1 (“Exhibit 1038 appears to be a printout of a
`
`webpage from the Internet Archive’s Wayback Machine.”).
`
`
`
`Exhibit 1038 also includes the URL at which the webpage can be accessed
`
`in the first page header and each page’s footer. See Ex. 1038. This URL can be
`
`fetched using a web browser to verify that the webpage shown in Ex. 1038 is in
`
`fact present in the Internet Archive’s records. See SDI v. Bose, IPR2013-00350,
`
`Paper 36 at 17 (PTAB Nov. 7, 2014).
`
`
`
`Patent Owner does not allege that Exhibit 1038 has been altered or that it
`
`appears inauthentic in any way. Thus, Patent Owner’s argument for exclusion
`
`“reduces to the contention that Petitioner has not provided an affidavit from
`
`Internet Archive attesting to its general procedures.” Id., 18. Other panels have
`
`found that “[s]uch an affidavit would not have added materially to the record,” and
`
`the same is true here. Accordingly, Patent Owner’s authenticity challenge to
`
`Exhibit 1038 should fail.
`
`
`
`2
`
`
`
`III. Patent Owner’s Hearsay Challenge Fails
`Patent Owner alleges that “the equations and variables used to compute the
`
`exponential smoothing filter” contained in Exhibit 1038 are hearsay. Motion, 3.
`
`But the “equations and variables used to compute the exponential smoothing filter”
`
`are included in the cited portions of Diab. See e.g., Reply, 10-12 (citing Apple-
`
`1007 (Diab), 47:5-10, 48:2-3, 50:21-27, FIG. 20). Exhibit 1038 therefore merely
`
`corroborates the explicit disclosure of Diab.
`
`With respect to the date of Exhibit 1038, the Reply never alleges a specific
`
`date for Exhibit 1038, as it is not relied on as prior art to the ’703 patent, and
`
`remains relevant as corroboration to Diab regardless of its date.
`
`IV. Patent Owner’s Request Exclude Arguments from the Reply is
`Improper
`In the Motion, Patent Owner requests that “the arguments based on Exhibit
`
`1038 at pages 10-11 of Petitioner’s Reply” be excluded. Motion, 4. This request
`
`is wholly improper. First, a motion to exclude evidence is not a proper vehicle to
`
`request exclusion of arguments. See 37 CFR § 42.64(c). Second, as noted above,
`
`the arguments of pages 10-11 of the Petitioner’s Reply are not “based on” Exhibit
`
`1038. In fact, all citations to Exhibit 1038 in the Reply accompany citations to
`
`Diab (Ex. 1007). Third, Petitioner is unaware of any rule or authority mandating
`
`exclusion of arguments in this manner, and Patent Owner provides none in its
`
`Motion. Thus, Patent Owner’s request to exclude arguments is improper and
`
`
`
`3
`
`
`
`should be denied.
`
`V. The Board is Well-Positioned to Assign the Evidence Appropriate
`Weight
`As the Board has previously noted, it sits as “a non-jury tribunal with
`
`administrative expertise” and “is well-positioned to determine and assign
`
`appropriate weight to the evidence presented … without resorting to formal
`
`exclusion that might later be held reversible error.” Liberty Mututal v.
`
`Progressive, CBM2012-00002, Paper 66 at 69 (PTAB Jan. 23, 2014). In the
`
`present case, the Board should consider and assign appropriate weight to Exhibit
`
`1038 rather than resorting to formal exclusion. See id.
`
`
`
`
`
`
`
`Dated: January 3, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/Dan Smith/
`W. Karl Renner, Reg. No. 41,265
`Dan Smith, Reg. No. 71,278
`Kim Leung, Reg. No. 64,399
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5553
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
`
`certifies that on January 3, 2022, a complete and entire copy of this Petitioner’s
`
`Opposition to Patent Owner’s Motion to Exclude Petitioner’s Evidence were
`
`provided via email to the Patent Owner by serving the email correspondence
`
`addresses of record as follows:
`
`Joseph R. Re
`Stephen W. Larson
`Jarom D. Kesler
`Jacob L. Peterson
`
`Knobbe, Martens, Olson, & Bear, LLP
`2040 Main St., 14th Floor
`Irvine, CA 92614
`
`Email: AppleIPR2020-1523-703@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
