`
`Filed: December 27, 2021
`
`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)
`
`
`
`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 MOTION TO EXCLUDE PETITIONER’S EVIDENCE
`
`
`
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`II.
`
`RELIEF REQUESTED ............................................................................. 1
`PETITIONER’S EXHIBIT 1038 IS INADMISSIBLE ............................ 2
`A.
`Petitioner Did Not Authenticate Exhibit 1038 ............................... 2
`B.
`Exhibit 1038 Contains Hearsay Under FRE 802 ........................... 3
`III. CONCLUSION ......................................................................................... 4
`
`
`
`-i-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`EMC Corp. v. Personalweb Techs., LLC,
`IPR2013-00084, Paper 64 at 45 (PTAB May 15, 2014) ............................... 2
`
`Hilgraeve, Inc. v. Symantec Corp.,
`271 F.Supp.2d 964 (E.D. Mich. 2003) .......................................................... 3
`Linear Tech. Corp. v. Micrel, Inc.,
`275 F.3d 1040 (Fed. Cir. 2001) ..................................................................... 2
`Thompson v. Bank of America Nat’l Ass’n,
`783 F.3d 1022 (5th Cir. 2015) ....................................................................... 2
`
`U.S. v. Bansal,
`663 F.3d 634 (Fed. Cir. 2011) ....................................................................... 3
`OTHER AUTHORITIES
`37 C.F.R. § 42.64 ................................................................................................ 1
`
`
`-ii-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`I.
`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.64(c) and the Scheduling Order (Paper 8) at 10,
`
`Patent Owner Masimo Corporation (“Patent Owner”) moves to exclude Exhibit
`
`1038 and all arguments based thereon.
`
`Exhibit 1038 appears to be a printout of a webpage from the Internet
`
`Archive’s Wayback Machine. Petitioner Apple Inc. (“Petitioner”) alleges in its
`
`table of exhibits that the printout reflects a sub-section of the “Engineering
`
`Statistics Handbook” that was captured on April 19, 2001. (Reply to POR (Paper
`
`18) at v.) Petitioner argues that Exhibit 1038 accurately describes “the
`
`conventional equation” for an “exponential smoothing filter.” (Id., 10-11.)
`
`Petitioner also relies on the date the Wayback Machine allegedly captured the
`
`webpage as evidence that a POSITA would have been familiar with the material in
`
`Exhibit 1038 as of the ’703 patent’s priority date.
`
`The Board should exclude Exhibit 1038 for two reasons. First, the Board
`
`should exclude Exhibit 1038 pursuant to Federal Rule of Evidence (“FRE”) 901
`
`because Petitioner failed to authenticate the exhibit. Second, the Board should
`
`exclude Exhibit 1038 pursuant to FRE 802 because the contents of Exhibit 1038
`
`and the exhibit’s purported capture date are hearsay.
`
`-1-
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`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Patent Owner timely objected to Exhibit 1038 pursuant to FRE 802 and 901
`
`on October 28, 2021 (Paper 19). Petitioner submitted no supplemental evidence in
`
`response to Patent Owner’s objections.
`
`II.
`
`PETITIONER’S EXHIBIT 1038 IS INADMISSIBLE
`
`A.
`
`Petitioner Did Not Authenticate Exhibit 1038
`Exhibit 1038 is inadmissible because Petitioner failed to establish its
`
`authenticity under FRE 901. Under FRE 901(a), the proponent of an exhibit must
`
`“produce evidence sufficient to support a finding that the item is what the
`
`proponent claims it is.” “When offering a printout of a webpage into evidence to
`
`prove the website’s contents, the proponent of the evidence must authenticate the
`
`information from the website itself, not merely the printout.” Standard Innovation
`
`Corp., v. Lelo, Inc., IPR2014-00148, Paper 41, 10 (PTAB Apr. 23, 2015). “For this
`
`reason, the Board has stated that ‘to authenticate printouts from a website, the party
`
`proffering the evidence must produce some statement or affidavit from someone
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`with knowledge of the website…for example a web master or someone else with
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`personal knowledge would be sufficient.’” Id. (quoting EMC Corp. v. Personalweb
`
`Techs., LLC, IPR2013-00084, Paper 64 at 45 (PTAB May 15, 2014); see also,
`
`Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1055-56 (Fed. Cir. 2001)
`
`(requiring personal knowledge of website); Thompson v. Bank of America Nat’l
`
`Ass’n, 783 F.3d 1022, 1027 (5th Cir. 2015) (same).
`
`-2-
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`
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`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`The Federal Circuit has specifically held that printouts of webpages
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`retrieved from the Wayback Machine are admissible only “where the proponent
`
`provided one of two types of supporting evidence: one, a witness that testified
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`regarding how the Wayback Machine worked and how reliable its contents were,
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`or two, a witness having personal knowledge that printouts are authentic.”
`
`Standard Innovation, IPR2014-00148, Paper 41 at 11 (citing U.S. v. Bansal, 663
`
`F.3d 634, 667-68 (Fed. Cir. 2011)).
`
`Here, Petitioner has not provided either form of supporting evidence. For
`
`this reason, the Board should exclude Exhibit 1038 and all arguments based on
`
`Exhibit 1038 pursuant to FRE 901.
`
`B.
`
`Exhibit 1038 Contains Hearsay Under FRE 802
`The contents of Exhibit 1038 are hearsay under FRE 802. Petitioner relies on
`
`the out-of-court statements in Exhibit 1038 for the truth of the matters asserted
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`(e.g., the equations and variables used to compute the exponential smoothing
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`filter). (Reply to POR (Paper 18) at 10-11.) No exception under FRE 803 applies to
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`Exhibit 1038.
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`Additionally, the date that the Wayback Machine purportedly captured the
`
`webpage reflected in Exhibit 1038 is also hearsay. “Federal Courts have…held that
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`dates are hearsay when, as here, offered to prove the truth of the matter asserted.”
`
`Standard Innovation, IPR2014-00148, Paper 41 at 17 (citing Hilgraeve, Inc. v.
`
`-3-
`
`
`
`IPR2020-01523
`Apple Inc. v. Masimo Corporation
`Symantec Corp., 271 F.Supp.2d 964, 974 (E.D. Mich. 2003)). Petitioner has
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`alleged that the date the Wayback Machine allegedly captured Exhibit 1038
`
`demonstrates that a POSITA would have been aware of the information contained
`
`therein as of the ’703 patent’s priority date. (See e.g., Reply to POR (Paper 18) at
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`10 (“As apparent from this equation and as known by a POSITA, the speed at
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`which older values are dampened is the function of α.”).)
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`For these additional reasons, the Board should exclude Exhibit 1038. (See
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`Standard Innovation, IPR2014-00148, Paper 41 at 17 (excluding date of capture
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`for Wayback Machine printout).)
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`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`exclude Exhibit 1038 and the arguments based on Exhibit 1038 at pages 10-11 of
`
`Petitioner’s Reply to the POR (Paper 18).
`
`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: December 27, 2021
`
`
`
`
`
`-4-
`
`
`
`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
`
`MOTION TO EXCLUDE PETITIONER’S EVIDENCE is being served
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`electronically on December 27, 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)
`Attorney for Patent Owner
`Masimo Corporation
`
`54785130
`
`Dated: December 27, 2021
`
`
`
`-5-
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`
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