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)
`
`
`
`Filed: April 28, 2021
`
`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 OBJECTIONS TO EVIDENCE
`
`
`
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Masimo Corporation objects
`
`as follows to the admissibility of evidence served with the Petition. Patent Owner
`
`reserves its rights to: (1) timely file a motion to exclude these objectionable
`
`exhibits or portions thereof; (2) challenge the credibility and/or weight that should
`
`be afforded to these exhibits, whether or not Patent Owner files a motion to
`
`exclude the exhibits; (3) challenge the sufficiency of the evidence to meet
`
`Petitioner’s burden of proof on any issue, including, without limitation, whether
`
`Petitioner met its burden to prove the prior art status of the alleged prior art on
`
`which it relies, whether or not Patent Owner has objected to, or files a motion to
`
`exclude, the evidence; and (4) cross examine any Petitioner declarant within the
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`scope of his or her direct testimony that relates to these exhibits, without regard to
`
`whether Patent Owner has objected to the testimony or related exhibits or whether
`
`the testimony or related exhibits are ultimately found to be inadmissible.
`
`
`Exhibit Number
`and Description
`Ex. 1003 –
`Declaration of Dr.
`Anthony
`
`Objections
`
`Masimo’s objections to Ex. 1003 are set forth below. To the
`extent Dr. Anthony’s declaration incorporates objectionable
`material in the cited paragraphs below in additional paragraphs
`or sections, Masimo’s objections apply with equal force to
`those additional paragraphs or sections.
`Incomplete, Irrelevant, Misleading (FRE 106, 401, 403)
`¶¶16, 18, 22, 24-25, and 29-32 are misleading, incomplete, and
`irrelevant because they lack support for the contentions for
`which they are cited and they mischaracterize the teachings of
`Ex. 1001 and the cited art.
`
`
`-1-
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`¶¶33-34 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1001 and the
`cited art.
`
`¶¶37-40 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1007.
`
`¶¶41-42 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1004.
`
`¶43 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Exs. 1004 and 1007.
`
`¶¶44-45 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004 and 1007.
`
`¶¶46-62 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004 and 1007.
`
`¶63 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Exs. 1004 and 1007.
`
`¶64 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Exs. 1001, 1004, 1005, and
`1007.
`
`¶65 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Ex. 1007.
`
`¶¶66-67 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`
`-2-
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`and they mischaracterize the teachings of Ex. 1005.
`
`¶¶68-73 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004, 1005, and
`1007.
`
`¶¶74-78 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004, 1005, and
`1007.
`
`¶79 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Ex. 1006.
`
`¶¶80-83 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004, 1006, and
`1007.
`
`¶¶84-86 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004, 1006, and
`1007.
`
`¶87 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Exs. 1004 and 1007.
`
`¶88 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Ex. 1007.
`
`¶¶89-90 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1006 and 1007.
`
`¶¶91-93 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`
`-3-
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`and they mischaracterize the teachings of Exs. 1005-1007 and
`1015-1021 and the knowledge of a POSITA.
`
`¶¶94-98 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004 and 1007.
`
`¶¶99-113 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1004.
`
`¶114 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Ex. 1004.
`
`¶¶115-116 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1001, 1004,
`1005, and 1007.
`
`¶117 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterize the teachings of Ex. 1004.
`
`¶¶118-121 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004 and 1006.
`
`¶¶122-124 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1004 and 1006.
`
`¶¶125-126 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1004.
`
`Improper Testimony by Expert Witness (FRE 702):
`¶18 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`
`-4-
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`¶¶24-25 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶33-34 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶36 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶43-45 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶49-50 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶52-62 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶63 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶64 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶65 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶68-69 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶70-73 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶74-78 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶80 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶81-83 are not based on sufficient facts and data, and do not
`
`-5-
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`reliably apply facts and data using scientific principles.
`
`¶¶85-86 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶87 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶88 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶89-90 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶91-93 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶97-98 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶101 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶104-113 are not based on sufficient facts and data, and do
`not reliably apply facts and data using scientific principles.
`
`¶114 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶115-116 are not based on sufficient facts and data, and do
`not reliably apply facts and data using scientific principles.
`
`¶117 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶118 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶119-121 are not based on sufficient facts and data, and do
`not reliably apply facts and data using scientific principles.
`
`-6-
`
`

`

`Exhibit 1010 –
`Tremper Pulse
`Oximetry
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`
`¶¶122-124 are not based on sufficient facts and data, and do
`not reliably apply facts and data using scientific principles.
`
`¶¶125-126 are not based on sufficient facts and data, and do
`not reliably apply facts and data using scientific principles.
`Incomplete, Irrelevant, Misleading, Hearsay, Authenticity
`(FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as used by
`Petitioner, provide an irrelevant, incomplete, and misleading
`characterization of the knowledge in the art as of the asserted
`date of the invention because Petitioner has not established it is
`prior art, and therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on relevance
`because Petitioner fails to establish it is prior art. Masimo also
`objects on the basis of authenticity.
`Incomplete, Irrelevant, Misleading, Hearsay, Authenticity
`(FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as used by
`Petitioner, provide an irrelevant, incomplete, and misleading
`characterization of the knowledge in the art as of the asserted
`date of the invention because Petitioner has not established it is
`prior art, and therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on relevance
`because Petitioner fails to establish it is prior art. Masimo also
`objects on the basis of authenticity.
`Incomplete, Irrelevant, Misleading, Hearsay, Authenticity
`(FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as used by
`Petitioner, provide an irrelevant, incomplete, and misleading
`characterization of the knowledge in the art as of the asserted
`date of the invention because Petitioner has not established it is
`prior art, and therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on relevance
`because Petitioner fails to establish it is prior art. Masimo also
`objects on the basis of authenticity.
`
`Ex. 1011 –
`Mendelson Skin
`Reflectance Pulse
`Oximetry: In
`Vivo
`Measurements
`from the Forearm
`and Calf
`
`Ex. 1012 –
`Bronzino The
`Biomedical
`Engineering
`Handbook
`
`-7-
`
`

`

`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Incomplete, Irrelevant, Misleading, Hearsay, Authenticity
`Ex. 1013 – Konig
`(FRE 106, 401, 403, 802, 901):
`Reflectance Pulse
`The portions of this document cited by Petitioner, as used by
`Oximetry:
`Petitioner, provide an irrelevant, incomplete, and misleading
`Principles and
`characterization of the knowledge in the art as of the asserted
`Obstetric
`date of the invention because Petitioner has not established it is
`Application in the
`prior art, and therefore confuses the issues in the case. Masimo
`Zurich System
`objects to this document as hearsay, and further on relevance
`because Petitioner fails to establish it is prior art. Masimo also
`objects on the basis of authenticity.
`Irrelevant and Misleading (FRE 401, 403):
`The portions of this document cited by Petitioner, as used by
`Petitioner, provide an irrelevant, incomplete, and misleading
`characterization of the knowledge in the art as of the asserted
`date of the invention because Petitioner has not established it is
`prior art, and therefore confuses the issues in the case. Masimo
`objects to this document on relevance because Petitioner fails
`to establish it is prior art.
`
`Ex. 1018 – Vock
`US 2003/0163287
`
`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Customer No. 64,735
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`Dated: April 28, 2021
`
`
`
`
`
`
`
`-8-
`
`

`

`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
`
`OBJECTIONS TO EVIDENCE is being served electronically on April 28, 2021,
`
`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)
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`Dated: April 28, 2021
`
`34665015
`
`
`
`-9-
`
`