By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Joshua J. Stowell (Reg. No. 64,096)
`
`
`
`Filed: January 10, 2022
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1523-703@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01523
`U.S. Patent 8,457,703
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PETITIONER’S EVIDENCE
`
`
`
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Joshua J. Stowell (Reg. No. 64,096)
`
`
`
`Filed: January 10, 2022
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1523-703@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01523
`U.S. Patent 8,457,703
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PETITIONER’S EVIDENCE
`
`
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Petitioner’s opposition does not establish the admissibility of Exhibit 1038.
`
`Petitioner does not respond to the Board and Federal Circuit precedent identified in
`
`the Motion requiring the party proffering evidence from a website to “produce
`
`some statement or affidavit from someone with knowledge of the website.”
`
`Standard Innovation, v. Lelo, Inc., IPR2014-00148, Paper 41,1 10 (PTAB Apr. 23,
`
`2015). Likewise, Petitioner does not respond to Federal Circuit precedent finding
`
`printouts retrieved from the Wayback Machine admissible “where the proponent
`
`provided one of two types of supporting evidence: one, a witness that testified
`
`regarding how the Wayback Machine worked and how reliable its contents were,
`
`or two, a witness having personal knowledge that printouts were authentic.” Id. at
`
`11 (citing U.S. v. Bansal, 663 F.3d 634, 667-68 (Fed. Cir. 2011)). Petitioner does
`
`not dispute that it provided no affidavit or other evidence from a knowledgeable
`
`witness regarding Exhibit 1038.
`
`Petitioner’s argument that “Exhibit 1038 includes a header clearly indicating
`
`its source as The Wayback Machine” is not responsive to the evidentiary
`
`objections. (Opp. 2.) Petitioner has not demonstrated that the proffered webpage
`
`
`1 The PTAB’s End to End website makes the document available for
`
`download under the heading “Paper 42.” However, the face of the document states
`
`“Paper 41.”
`
`-1-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`accurately depicts and reflects the alleged sub-section of the Engineering Statistics
`
`Handbook as the sub-section appeared at the relevant time or that the date of
`
`capture by The Wayback Machine is accurate. Identifying The Wayback Machine
`
`as the source of the document does not remedy these deficiencies.
`
`Petitioner’s cites SDI v. Bose as allegedly supporting admissibility of Exhibit
`
`1038. (Opp. 2.) However, SDI v. Bose is distinguishable. In that case, the Petitioner
`
`identified indicia on the webpage to show that the purported date of publication “is
`
`self-authenticating.” SDI v. Bose, IPR2013-00350, Paper 36 at 17 (PTAB Nov. 7,
`
`2014); see also id. at 18 (“Petitioner shows that the date on the Irman Web Page
`
`facially appears authentic and is authenticated further by accessing the website.”).
`
`Here, Petitioner has not identified any indicia on Exhibit 1038 that purportedly
`
`corroborates the alleged date of availability or publication.
`
`Petitioner’s argument that “the Reply never alleges a specific date for
`
`Exhibit 1038” is also unresponsive. (Opp. 3.) In the Reply, Petitioner argues that
`
`Exhibit 1038 reflects a POSITA’s knowledge as of the earliest priority date of the
`
`’703 patent, stating:
`
`As apparent from this equation and as known by a POSITA, the
`
`speed at which older values are dampened is the function of α. Id.,
`
`APPLE-1038, 2. When α is close to 1, dampening is fast, and when α
`
`is close to 0, dampening is slow. Id. Accordingly, a POSITA would
`
`-2-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`have understood Diab’s disclosure that “[i]f motion is large, this filter
`
`is slowed down” to refer to the filter dampening being slowed down
`
`by selecting α that is close to 0. Id.; APPLE-1007, 50:23-27.
`
`(Petitioner’s Reply [Paper 18] 10-11 (emphasis added).) However, as explained
`
`above, Petitioner has failed to identify any indicia indicating that Exhibit 1038 was
`
`published and would have been available to a POSITA at the relevant time.
`
`Moreover, as shown by the above quotation, Petitioner’s argument that “the
`
`arguments of pages 10-11 of the Petitioner’s Reply are not ‘based on’ Exhibit
`
`1038” is inconsistent with the Reply, which repeatedly cites Exhibit 1038 as the
`
`basis for the allegations. (Opp. 3.)
`
`
`
`For these reasons, in addition to those provided in the Motion, the Board
`
`should exclude Exhibit 1038 and the arguments based on Exhibit 1038 under
`
`Federal Rules of Evidence 802 and 901.
`
`
`
`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`Dated: January 10, 2022
`
`
`
`
`
`-3-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of PATENT OWNER’S REPLY
`
`IN SUPPORT OF MOTION TO EXCLUDE PETITIONER’S EVIDENCE is
`
`being served electronically on January 10, 2022, to the e-mail addresses shown
`
`below:
`
`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
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0002IP1@fr.com
`Email: PTABInbound@fr.com; axf-ptab@fr.com; dsmith@fr.com;
`leung@fr.com
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Attorney for Patent Owner
`Masimo Corporation
`
`
`54867737
`
`Dated: January 10, 2022
`
`
`
`-4-
`
`
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