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)
`Shannon H. Lam (Reg. No. 65,614)
`
`
`
`Filed: April 30, 2021
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1526-994@knobbe.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01526
`U.S. Patent 6,771,994
`
`
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`
`
`
`

`

`IPR2020-01526
`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 initial Petition. Patent
`
`Owner reserves the right 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, including
`any material incorporated into the cited paragraphs 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):
`
`¶11 is misleading, incomplete, and irrelevant because it lacks
`
`-1-
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`

`

`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`support for the contentions for which it is cited.
`
`¶¶16, 19, 20, 22, 25, 26, and 28-29 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 alleged prior art.
`
`¶17 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1001.
`
`¶18 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1001, and further lacks
`foundation
`for
`the state of mind, considerations, and
`understandings of the examiner.
`
`¶¶32-33 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.
`
`¶35 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1001 and the alleged prior
`art.
`
`¶¶36-37 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 alleged
`prior art.
`
`¶¶39-40 are misleading, incomplete, and irrelevant because they
`lack support for the contentions for which they are cited and
`they mischaracterize the teachings of Ex. 1001.
`
`¶¶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. 1006.
`
`¶43 is misleading, incomplete, and irrelevant because it lacks
`
`-2-
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`

`

`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1007.
`
`¶44 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1008.
`
`¶¶45-48 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, 1007, and
`1008.
`
`¶¶49-52 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, 1007, and
`1008.
`
`¶¶53-56 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, 1007, and
`1008.
`
`¶¶57-62 are misleading, incomplete, and irrelevant because they
`lack support for the contentions for which they are cited and
`they mischaracterize the teachings of Exs. 1006 and 1007.
`
`¶63 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1001.
`
`¶¶64-74 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, 1007, and
`1008.
`
`¶75 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1010.
`
`¶¶76-82 are misleading, incomplete, and irrelevant because they
`
`-3-
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`

`

`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`lack support for the contentions for which they are cited and
`they mischaracterize the teachings of Exs. 1010 and 1008.
`
`¶¶83-86 are misleading, incomplete, and irrelevant because they
`lack support for the contentions for which they are cited and
`they mischaracterize the teachings of Exs. 1010 and 1008.
`
`¶¶87-91 are misleading, incomplete, and irrelevant because they
`lack support for the contentions for which they are cited and
`they mischaracterize the teachings of Ex. 1010.
`
`¶¶92-105 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1010 and 1008.
`
`¶106 is misleading, incomplete, and irrelevant because it lacks
`support for the contentions for which it is cited and it
`mischaracterizes the teachings of Ex. 1009.
`
`¶¶107-108 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1009.
`
`¶¶109-115 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1009.
`
`¶¶116-119 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1009.
`
`¶¶120-124 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Ex. 1009.
`
`¶¶125-133 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1009, 1007, and
`1008.
`
`
`-4-
`
`

`

`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`¶¶134-151 are misleading, incomplete, and irrelevant because
`they lack support for the contentions for which they are cited
`and they mischaracterize the teachings of Exs. 1009, 1007, and
`1008.
`
`Improper Testimony by Expert Witness (FRE 702):
`
`¶20 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶36-37 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶39-40 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶62-69 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶73-74 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶79 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`¶¶95-96 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶100-105 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶114-115 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶130-132 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶133 is not based on sufficient facts and data, and does not
`reliably apply facts and data using scientific principles.
`
`
`-5-
`
`

`

`Exhibit 1011 –
`Tremper Pulse
`Oximetry
`
`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`¶¶134-136 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶138-142 are not based on sufficient facts and data, and do not
`reliably apply facts and data using scientific principles.
`
`¶¶147-151 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.
`Incomplete, Irrelevant, Misleading, Hearsay, Authenticity
`
`Ex. 1012 –
`Mendelson Skin
`Reflectance
`Pulse Oximetry:
`In Vivo
`Measurements
`from the
`Forearm and
`Calf
`
`Ex. 1013 –
`Bronzino The
`Biomedical
`Engineering
`Handbook
`
`Ex. 1014 –
`
`-6-
`
`

`

`IPR2020-01526
`Apple Inc. v. Masimo Corporation
`(FRE 106, 401, 403, 802, 901):
`Konig
`The portions of this document cited by Petitioner, as used by
`Reflectance
`Petitioner, provide an irrelevant, incomplete, and misleading
`Pulse Oximetry:
`characterization of the knowledge in the art as of the asserted
`Principles and
`date of the invention because Petitioner has not established it is
`Obstetric
`prior art, and therefore confuses the issues in the case. Masimo
`Application in
`objects to this document as hearsay, and further on relevance
`the Zurich
`because Petitioner fails to establish it is prior art. Masimo also
`System
`objects on the basis of authenticity.
`Hearsay, Authenticity (FRE 802, 901):
`The exhibit includes out-of-court statements that are offered for
`the truth of the matter asserted and are asserted by a declarant
`who lacks personal knowledge.
`Irrelevant, Misleading, Hearsay, Authenticity (FRE 401,
`403, 802, 901):
`Masimo objects to this document as hearsay, and further on
`relevance. Masimo also objects on the basis of authenticity.
`Irrelevant, Misleading, Hearsay, Authenticity (FRE 401,
`403, 802, 901):
`Masimo objects to this document as hearsay, and further on
`relevance. Masimo also objects on the basis of authenticity.
`
`Exhibit 1015 –
`Declaration of
`Jacob Munford
`
`Ex. 1034 –
`Joseph Guzman
`
`Ex. 1035 –
`Latimes.com
`
`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Shannon Lam/
`Shannon H. Lam (Reg. No. 65,614)
`Customer No. 64,735
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`Dated: April 30, 2021
`
`
`
`
`
`
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`-7-
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`

`

`IPR2020-01526
`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 30, 2021,
`
`to the e-mail addresses shown below:
`
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0005IP1@fr.com
`Email: PTABInbound@fr.com; axf-ptab@fr.com; dsmith@fr.com;
`patrick@fr.com
`
`
`Dated: April 30, 2021
`
`
`
`34665109w
`
`
`/Shannon Lam/
`Shannon H. Lam (Reg. No. 65,614)
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`-8-
`
`