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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner.
`____________
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`Case IPR2020-01538
`Patent 10,588,554
`____________
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`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
`PURSUANT TO 37 C.F.R. § 42.123
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`I.
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`INTRODUCTION
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`Pursuant to 37 C.F.R § 42.123(a), and under the authorization granted by the
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`Board on April 6, 2021, Petitioner hereby moves to submit Exhibit 1038
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`(“Declaration of Jacob Munford”) as supplemental information.
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`Petitioner requested authorization to file this motion on April 2, 2021, within
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`one month of the March 2, 2021 date of institution for IPR2020-01538. As
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`explained in more detail below, Exhibit 1038 provides further testimony
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`supporting the public accessibility and authenticity of prior art references relied
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`upon in the challenges set forth in the IPR2020-01538 Petition. For at least that
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`reason, Exhibit 1038 is relevant to a claim for which trial has been instituted.
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`Accordingly, both requirements of 37 C.F.R § 42.123(a) have been met.
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`Further, counsel for Petitioner and Patent Owner conferred prior to
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`Petitioner’s request for authorization to submit this motion, and Patent Owner does
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`not oppose this motion. Petitioner now so moves.
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`II. BACKGROUND
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`On August 31, 2020, Petitioner filed a Petition for inter partes review of
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`claims 1–7 and 20-28 of U.S. Pat. No. 10,588,554 (“the ’554 patent”), which was
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`assigned case number IPR2020-01538. On March 2, 2021, the Board instituted a
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`trial on all challenged claims of the ’554 patent, determining that Petitioner had
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`demonstrated a reasonable likelihood that Petitioner would prevail in showing the
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`unpatentability of at least one of the challenged claims.
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`On March 16, 2021, pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner
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`served Petitioner with objections to evidence, which included assertions that
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`various prior art references that had been relied upon in the Petition had not been
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`established as prior art, in addition to objections to the previously-submitted
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`declaration of librarian Jacob Robert Munford (Exhibit 1036). On March 30, 2021,
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`pursuant to 37 C.F.R. § 42.64(b)(2), and in response to Patent Owner’s objections,
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`Petitioner served Patent Owner with supplemental evidence including an additional
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`“Declaration of Jacob Munford” (Exhibit 1038).
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`Exhibit 1038 provides further testimony supporting the public accessibility
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`and authenticity of the prior art references relied upon in the challenges set forth in
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`the IPR2020-01538 Petition, with supporting appendices.
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`On April 2, 2021, Petitioner requested authorization from the Board to file a
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`motion to submit a declaration of Jacob Robert Munford as supplemental
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`information in each of IPR2020-01520, -01536, -01537, -01538, and -01539. On
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`April 6, 2021, the Board authorized Petitioner to file a motion to submit
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`supplemental information in each of the indicated proceedings. In accordance with
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`the Board’s authorization, Petitioner hereby moves to submit Exhibit 1038 as
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`supplemental information in IPR2020-01538.
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`III. ARGUMENTS
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`Under 37 C.F.R. § 42.123(a), a party may file a motion to submit
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`supplemental information in accordance with the following two requirements: (1)
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`“A request for the authorization to file a motion to submit supplemental
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`information is made within one month of the date the trial is instituted”; and (2)
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`“The supplemental information must be relevant to a claim for which the trial has
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`been instituted.”
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`The instant Motion meets both of these requirements. First, Petitioner
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`requested authorization to file this motion on April 2, 2021, within one month of
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`the March 2, 2021 date of institution for IPR2020-01538. Second, Exhibit 1038
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`provides further testimony supporting the public accessibility and authenticity of
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`prior art references relied upon in the challenges set forth in the IPR2020-01538
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`Petition and, for at least that reason, Exhibit 1038 is relevant to a claim for which
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`trial has been instituted. See, e.g., Valeo v. Magna Elecs., IPR2014-01204 Pap. 26
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`at 5 (PTAB Apr. 10, 2015); Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
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`IPR2013-00369 Pap. 37 at 3 (PTAB Feb. 5, 2014)(“[e]vidence that allegedly
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`confirms the public accessibility of references that serve as the basis of the grounds
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`of unpatentability authorized…is relevant to the claims of the…patent for which
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`this trial was instituted”); Motorola Solutions, Inc. v. Mobile Scanning Tech., IPR
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`2013-00093 Pap. 37 at 2-3 (PTAB Jun. 28, 2013).
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`Moreover, Like the supplemental information admitted in Valeo, Palo Alto
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`Networks, and Motorola Solutions, Inc., Exhibit 1038 does not change the grounds
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`of unpatentability authorized in the proceeding, and instead merely confirms the
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`public accessibility and authenticity of prior art references originally provided with
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`the Petition. Further, because Patent Owner has been in possession of the
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`supplemental information in the form of supplemental evidence since March 30,
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`2021, which is approximately two months prior to the May 28, 2021 due date of
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`the Patent Owner’s response, the Patent Owner has reasonable time to review
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`Exhibit 1038 and is not prejudiced or otherwise burdened by entry of this
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`supplemental evidence into the record as supplemental information. Similarly, the
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`entry of Exhibit 1038 now, as supplemental information, would not limit the
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`Board’s ability to complete this proceeding in a timely fashion.
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`Accordingly, Petitioner respectfully submits that Exhibit 1038 should be
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`submitted into evidence as supplemental information, and requests the same.
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`IV. CONCLUSION
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`Petitioner respectfully requests that the Board grant this motion to submit
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`Exhibit 1038 as supplemental information in IPR2020-01538.
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`Dated: April 22, 2021
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`Respectfully submitted,
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` /Andrew B. Patrick/
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5553
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`Case No. IPR2020-01538
`Attorney Docket: 50095-0013IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq., the undersigned certifies that on
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`April 22, 2021, a complete and entire copy of this “PETITIONER’S MOTION TO
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`FILE SUPPLEMENTAL INFORMATION PURSUANT TO 37 C.F.R. § 42.123”
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`and its attached exhibits were provided by electronic mail to the Patent Owner by
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`serving the correspondence e-mail address of record as follows:
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`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
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`Email: AppleIPR2020-1538-554@knobbe.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Jeroen Poeze et al.
`In re Patent of:
`U.S. Patent No.: 10,588,554
`Issue Date:
`March 17, 2020
`Appl. Serial No.: 16/544,713
`Filing Date:
`August 19, 2019
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD
`CONSTITUENTS
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`Attorney Docket No.: 50095-0013IP1
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF JACOB ROBERT MUNFORD
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`1
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`APPLE 1038
`Apple v. Masimo
`IPR2020-01538
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`1. My name is Jacob Robert Munford. I am over the age of 18, have personal
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`knowledge of the facts set forth herein, and am competent to testify to the
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`same.
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`2. I earned a Master of Library and Information Science (MLIS) from the
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`University of Wisconsin-Milwaukee in 2009. I have over ten years of
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`experience in the library/information science field. Beginning in 2004, I
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`have served in various positions in the public library sector including
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`Assistant Librarian, Youth Services Librarian and Library Director. I have
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`attached my Curriculum Vitae as Appendix A.
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`3. During my career in the library profession, I have been responsible for
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`materials acquisition for multiple libraries. In that position, I have cataloged,
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`purchased and processed incoming library works. That includes purchasing
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`materials directly from vendors, recording publishing data from the material
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`in question, creating detailed material records for library catalogs and
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`physically preparing that material for circulation. In addition to my
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`experience in acquisitions, I was also responsible for analyzing large
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`collections of library materials, tailoring library records for optimal catalog
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`1
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`2
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`search performance and creating lending agreements between libraries
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`during my time as a Library Director.
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`4. I am fully familiar with the catalog record creation process in the library
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`sector. In preparing a material for public availability, a library catalog record
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`describing that material would be created. These records are typically
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`written in Machine Readable Catalog (herein referred to as “MARC”) code
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`and contain information such as a physical description of the material,
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`metadata from the material’s publisher, and date of library acquisition. In
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`particular, the 008 field of the MARC record is reserved for denoting the
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`date of creation of the library record itself. As this typically occurs during
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`the process of preparing materials for public access, it is my experience that
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`an item’s MARC record indicates the date of an item’s public availability.
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`5. Typically, in creating a MARC record, a librarian would gather various bits
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`of metadata such as book title, publisher and subject headings among others
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`and assign each value to a relevant numerical field. For example, a book’s
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`physical description is tracked in field 300 while title/attribution is tracked in
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`field 245. The 008 field of the MARC record is reserved for denoting the
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`creation of the library record itself. As this is the only date reflecting the
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`2
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`3
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`inclusion of said materials within the library’s collection, it is my experience
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`that an item’s 008 field accurately indicates the date of an item’s public
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`availability.
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`6. This declaration is being drafted as of March 2021. Public and university
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`libraries in my area have been closed for months due to the COVID-19
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`pandemic. My state, Pennsylvania, has a travel advisory, which has affected
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`my ability to travel. In my experience, library catalog records are accurate
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`descriptions of a library’s collection and my lack of physical access to
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`libraries at this time creates no doubt in my determinations of authenticity or
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`availability of the exhibits noted below.
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`7. I have reviewed Exhibit 1010, a copy of an article entitled “A Wearable
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`Reflectance Pulse Oximeter for Remote Physiological Monitoring” by Y.
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`Mendelson, R. J. Duckworth, and G. Comtois, as published in the
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`Proceedings of the 28th Annual International Conference of the IEEE
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`Engineering in Medicine and Biology Society, August 30 – September 3,
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`2006 (hereinafter referred to as “2006 IEEE conference publication”).
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`3
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`4
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`8. Attached hereto as Appendix MENDELSON02 is a true and correct copy of
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`the MARC record for the 2006 IEEE conference publication, as held by
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`Cornell University’s library. I secured this record myself from the library’s
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`public catalog.
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`9. The MARC record contained within Appendix MENDELSON02 accurately
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`describes the title, author, publisher, and ISBN number of the 2006 IEEE
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`conference publication. In comparing the listed fields in Appendix
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`MENDELSON02 to Exhibit 1010, it is my determination that Exhibit 1010
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`is a true and correct copy of the “A Wearable Reflectance Pulse Oximeter
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`for Remote Physiological Monitoring” article, and that the copy of the 2006
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`IEEE conference publication in Cornell University’s library includes the
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`article in Exhibit 1010.
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`10. The 008 field of the MARC record noted on page 1 of Appendix
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`MENDELSON02 indicates that the 2006 IEEE conference publication was
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`first cataloged by Cornell University’s library as of December 26, 2007.
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`Based on this information and considering the dates of the conference, it is
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`my determination that the 2006 IEEE conference publication, which
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`included the article published as Exhibit 1010, was made available to the
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`public by Cornell University at least as of December 26, 2007.
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`11. Additionally, I accessed a copy of the 2006 IEEE conference publication
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`through the Pennsylvania State University’s online library catalog portal.
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`12. Attached hereto as Appendix MENDELSON06 is a true and correct copy of
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`the catalog entry for the 2006 IEEE conference publication as maintained by
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`the Pennsylvania State University. I secured this record myself from the
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`library’s public catalog.
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`13. Attached hereto as Appendix MENDELSON07 is a true and correct copy of
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`the table of contents for the 2006 IEEE conference publication. I secured this
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`record, as provided by the Pennsylvania State University’s library through
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`the catalog entry for the 2006 IEEE conference publication as shown in
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`Appendix MENDELSON06, myself.
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`14. I have reviewed Appendix MENDELSON10, a copy of an article entitled “A
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`Wearable Reflectance Pulse Oximeter for Remote Physiological
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`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
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`5
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`6
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`published in the 2006 IEEE conference publication. I obtained this document
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`using the table of contents for the 2006 IEEE conference publication as
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`shown in Appendix MENDELSON07.
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`15. Attached hereto as Appendix MENDELSON05 is a true and correct copy of
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`the MARC record for the 2006 IEEE conference publication, as held by the
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`Pennsylvania State University’s library in its online catalog indicated by the
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`catalog entry as shown in Appendix MENDELSON06. The Pennsylvania
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`State University’s online library catalog entry as shown in Appendix
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`MENDELSON06 directs the user to the IEEE’s online repository, IEEE
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`Xplore. I secured this record myself from the library’s public catalog
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`through the table of contents listing as captured in Appendix
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`MENDELSON07.
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`16. The MARC record contained within Appendix MENDELSON05 accurately
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`describes the title, author, publisher, and ISBN number of the 2006 IEEE
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`conference publication. In comparing the listed fields in Appendix
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`MENDELSON05 to Appendix MENDELSON10, it is my determination
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`that (1) Appendix MENDELSON10 is a true and correct copy of the “A
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`Wearable Reflectance Pulse Oximeter for Remote Physiological
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`6
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`7
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`Monitoring” article by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
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`published in the 2006 IEEE conference publication, and (2) that the digital
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`copy of the 2006 IEEE conference publication in the Pennsylvania State
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`University’s library catalog includes the article in Appendix
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`MENDELSON10 and is the same as the “A Wearable Reflectance Pulse
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`Oximeter for Remote Physiological Monitoring” article by Y. Mendelson, R.
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`J. Duckworth, and G. Comtois, as published in the 2006 IEEE conference
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`publication that is made publicly available by the Pennsylvania State
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`University through the IEEE’s online repository IEEE Xplore.
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`17. The 008 field of the MARC record noted on page 1 of Appendix
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`MENDELSON05 indicates that the 2006 IEEE conference publication was
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`first cataloged by the Pennsylvania State University’s library as of
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`December 26, 2007. Based on this information and considering the dates of
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`the conference, it is my determination that the 2006 IEEE conference
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`publication, which included the article published as Appendix
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`MENDELSON10, was made available to the public by the Pennsylvania
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`State University through its online catalog at least as of December 26, 2007.
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`18. In comparing the listed fields in Appendix MENDELSON02 to Appendix
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`MENDELSON05 and comparing Exhibit 1010 to Appendix
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`MENDELSON10, it is my determination that both of Exhibit 1010 and
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`Appendix MENDELSON10 are true and correct copies of the article entitled
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`“A Wearable Reflectance Pulse Oximeter for Remote Physiological
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`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
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`published in the 2006 IEEE conference publication.
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`19. Based on this information, it is my determination that both of Exhibit 1010
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`and Appendix MENDELSON10 are true and correct copies of the article
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`entitled “A Wearable Reflectance Pulse Oximeter for Remote Physiological
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`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
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`published in the 2006 IEEE conference publication, and that the 2006 IEEE
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`conference publication containing Exhibit 1010 was cataloged and made
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`available to the public by Cornell University at least as of December 26,
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`2007.
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`20. Based on this information, it is my determination that both of Exhibit 1010
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`and MENDELSON10 are true and correct copies of the article entitled “A
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`Wearable Reflectance Pulse Oximeter for Remote Physiological
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`8
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`9
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`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
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`published in the 2006 IEEE conference publication, and that the 2006 IEEE
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`conference publication containing Exhibit 1010 was cataloged and made
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`available to the public by the Pennsylvania State University through its
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`online catalog at least as of December 26, 2007.
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`21. I have reviewed Appendix MENDELSON12, a copy of an article entitled “A
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`Wearable Reflectance Pulse Oximeter for Remote Physiological
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`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
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`published in the 2006 IEEE conference publication. I secured this record
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`myself from the IEEE’s online repository, IEEE Xplore.
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`22. In comparing Appendix MENDELSON12 with Exhibit 1010, it is my
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`determination that both of Appendix MENDELSON12 and Exhibit 1010 are
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`true and correct copies of the “A Wearable Reflectance Pulse Oximeter for
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`Remote Physiological Monitoring” article by Y. Mendelson, R. J.
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`Duckworth, and G. Comtois, as published in the 2006 IEEE conference
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`publication by the IEEE.
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`9
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`10
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`23. I have reviewed Appendix COMTOIS04, a copy of an article entitled “A
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`noise reference input to an adaptive filter algorithm for signal processing in
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`a wearable pulse oximeter” by G. Comtois and Y. Mendelson, as published
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`in the Proceedings of the 2007 IEEE 33rd Annual Northeast Bioengineering
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`Conference, March 10 – 11, 2007 (hereinafter referred to as “2007 IEEE
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`conference publication”). I secured this copy of the 2007 IEEE conference
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`publication through the Pennsylvania State University’s online library
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`catalog portal.
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`
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`24. Attached hereto as Appendix COMTOIS02 is a true and correct copy of the
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`catalog entry for the 2007 IEEE conference publication as maintained by the
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`Pennsylvania State University. I secured this record myself from the
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`library’s public catalog.
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`
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`25. Attached hereto as Appendix COMTOIS03 is a true and correct copy of the
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`table of contents for the 2007 IEEE conference publication. I secured this
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`record, as provided by the Pennsylvania State University’s library through
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`the catalog entry for the 2007 IEEE conference publication as shown in
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`Appendix COMTOIS02, myself.
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`10
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`11
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`26. Attached hereto as Appendix COMTOIS01 is a true and correct copy of the
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`MARC record for the 2007 IEEE conference publication, as held by the
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`Pennsylvania State University’s library in its online catalog. I secured this
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`record myself from the library's public catalog through the table of contents
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`listing as captured in COMTOIS03.
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`
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`27. The MARC record contained within Appendix COMTOIS01 accurately
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`describes the title, author, publisher, and ISBN number of the 2007 IEEE
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`conference publication. In comparing the listed fields in Appendix
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`COMTOIS01 to COMTOIS04, it is my determination that COMTOIS04 is a
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`true and correct copy of the “A noise reference input to an adaptive filter
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`algorithm for signal processing in a wearable pulse oximeter” article, and
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`that the copy of the 2007 IEEE conference publication in the Pennsylvania
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`State University’s library includes the article in COMTOIS04.
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`28. The 008 field of the MARC record noted on page 1 of Appendix
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`COMTOIS01 indicates that the 2007 IEEE conference publication was first
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`cataloged by the Pennsylvania State University’s library as of January 24,
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`2007. Based on this information and considering the dates of the conference,
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`it is my determination that the 2007 IEEE conference publication, which
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`included the article published as Appendix COMTOIS04, was made
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`available to the public by the Pennsylvania State University at least as of
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`January 24, 2007.
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`29. Attached hereto as Appendix COMTOIS05 is a true and correct copy of the
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`MARC record for the 2007 IEEE conference publication, as held by
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`University of Wyoming’s library in its online catalog. I secured this record
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`myself from the library's public catalog.
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`30. The MARC record contained within Appendix COMTOIS05 accurately
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`describes the title, author, publisher, and ISBN number of the 2007 IEEE
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`conference publication. In comparing the listed fields in Appendix
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`COMTOIS05 to COMTOIS04, it is my determination that the copy of the
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`2007 IEEE conference publication in University of Wyoming’s library
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`includes the article in COMTOIS04.
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`31. The 008 field of the MARC record noted on page 1 of Appendix
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`COMTOIS05 indicates that the 2007 IEEE conference publication was first
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`cataloged by University of Wyoming’s library as of January 24, 2007. Based
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`on this information and considering the dates of the conference, it is my
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`12
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`13
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`determination that the 2007 IEEE conference publication, which included
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`the article published as COMTOIS04, was made available to the public by
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`University of Wyoming at least as of January 24, 2007.
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`32. In reviewing the listed citations at page 2 of COMTOIS04, it is my
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`determination that the “A noise reference input to an adaptive filter
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`algorithm for signal processing in a wearable pulse oximeter” article cites
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`the article entitled “A Wearable Reflectance Pulse Oximeter for Remote
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`Physiological Monitoring” by Y. Mendelson, R. J. Duckworth, and G.
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`Comtois, as published in the 2006 IEEE conference publication. As noted
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`above in paragraphs 18 – 20, I have also determined that Exhibit 1010 and
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`MENDELSON10 are true and correct copies of the article entitled “A
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`Wearable Reflectance Pulse Oximeter for Remote Physiological
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`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
`
`published in the 2006 IEEE conference publication. Accordingly, it is my
`
`determination that the 2006 IEEE conference publication containing Exhibit
`
`1010 would have been publicly available at least as early as the publication
`
`date of the 2007 IEEE conference publication: January 24, 2007.
`
`
`
`
`
`13
`
`14
`
`
`
`33. I have reviewed COMTOIS10, a copy of an article entitled “A Comparative
`
`Evaluation of Adaptive Noise Cancellation Algorithms for Minimizing
`
`Motion Artifacts in a Forehead-Mounted Wearable Pulse Oximeter” by G.
`
`Comtois, Y. Mendelson, and P. Ramuka, as published in the Proceedings of
`
`the 29th Annual International Conference of the IEEE EMBS Cité
`
`Internationale, Lyon, France, August 23 – 26, 2007 (hereinafter referred to
`
`as “2007 IEEE EMBS conference publication”).
`
`
`
`34. I obtained a copy of the 2007 IEEE EMBS conference publication through
`
`the Pennsylvania State University’s online library catalog portal.
`
`
`
`35. Attached hereto as Appendix COMTOIS06 is a true and correct copy of the
`
`catalog entry for the 2007 IEEE EMBS conference publication as
`
`maintained by the Pennsylvania State University. I secured this record
`
`myself from the library’s public catalog.
`
`
`
`36. Attached hereto as Appendix COMTOIS07 is a true and correct copy of the
`
`table of contents for the 2007 IEEE EMBS conference publication. I secured
`
`this record, as provided by the Pennsylvania State University’s library
`
`
`
`14
`
`15
`
`
`
`through the catalog entry for the 2007 IEEE EMBS conference publication
`
`as shown in Appendix COMTOIS06, myself.
`
`
`
`37. Attached hereto as Appendix COMTOIS08 is a true and correct copy of the
`
`MARC record for the 2007 IEEE EMBS conference publication, as held by
`
`the Pennsylvania State University’s library in its online catalog. I secured
`
`this record myself from the library's public catalog through the table of
`
`contents listing as captured in COMTOIS07.
`
`
`
`38. The MARC record contained within Appendix COMTOIS08 accurately
`
`describes the title, author, publisher, and ISBN number of the 2007 IEEE
`
`EMBS conference publication. In comparing the listed fields in Appendix
`
`COMTOIS08 to COMTOIS10, it is my determination that COMTOIS10 is a
`
`true and correct copy of the “A Comparative Evaluation of Adaptive Noise
`
`Cancellation Algorithms for Minimizing Motion Artifacts in a Forehead-
`
`Mounted Wearable Pulse Oximeter” article, and that the copy of the 2007
`
`IEEE EMBS conference publication in the Pennsylvania State University’s
`
`library includes the article in COMTOIS10.
`
`
`
`
`
`15
`
`16
`
`
`
`39. The 008 field of the MARC record noted on page 1 of Appendix
`
`COMTOIS08 indicates that the 2007 IEEE EMBS conference publication
`
`was first cataloged by the Pennsylvania State University’s library as of June
`
`5, 2008. Based on this information and considering the dates of the
`
`conference, it is my determination that the 2007 IEEE EMBS conference
`
`publication, which included the article published as COMTOIS10, was made
`
`available to the public by the Pennsylvania State University at least as of
`
`June 5, 2008.
`
`
`
`40. Attached hereto as Appendix COMTOIS09 is a true and correct copy of the
`
`MARC record for the 2007 IEEE EMBS conference publication, as held by
`
`Library of Congress in its online catalog. I secured this record myself from
`
`the Library’s public catalog.
`
`
`
`41. The MARC record contained within Appendix COMTOIS09 accurately
`
`describes the title, author, publisher, and ISBN number of the 2007 IEEE
`
`EMBS conference publication. In comparing the listed fields in Appendix
`
`COMTOIS09 to COMTOIS10, it is my determination that the copy of the
`
`2007 IEEE EMBS conference publication in the Library of Congress
`
`includes the article in COMTOIS10.
`
`
`
`16
`
`17
`
`
`
`
`
`42. The 008 field of the MARC record noted on page 1 of Appendix
`
`COMTOIS09 indicates that the 2007 IEEE EMBS conference publication
`
`was first cataloged by the Library of Congress as of June 5, 2008. Based on
`
`this information and considering the dates of the conference, it is my
`
`determination that the 2007 IEEE EMBS conference publication, which
`
`included the article published as COMTOIS10, was made available to the
`
`public by the Library of Congress at least as of June 5, 2008.
`
`
`
`43. In reviewing the listed citations at page 4 of COMTOIS10, it is my
`
`determination that the “A Comparative Evaluation of Adaptive Noise
`
`Cancellation Algorithms for Minimizing Motion Artifacts in a Forehead-
`
`Mounted Wearable Pulse Oximeter” article cites the article entitled “A
`
`Wearable Reflectance Pulse Oximeter for Remote Physiological
`
`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
`
`published in the 2006 IEEE conference publication. As noted above in
`
`paragraphs 18 – 20, I have also determined that Exhibit 1010 and Appendix
`
`MENDELSON10 are true and correct copies of the article entitled “A
`
`Wearable Reflectance Pulse Oximeter for Remote Physiological
`
`Monitoring” by Y. Mendelson, R. J. Duckworth, and G. Comtois, as
`
`
`
`17
`
`18
`
`
`
`published in the 2006 IEEE conference publication. Accordingly, it is my
`
`determination that the 2006 IEEE conference publication containing Exhibit
`
`1010 would have been publicly available at least as early as the publication
`
`date of the 2007 IEEE EMBS conference publication, June 5, 2008.
`
`
`
`44. I have reviewed Exhibit 1017, a copy of an article entitled “Design and
`
`Evaluation of a New Reflectance Pulse Oximeter Sensor” by Y. Mendelson,
`
`et al., as published in the Journal of the Association for the Advancement of
`
`Medical Instrumentation, Vol. 22, No. 4, 1988 (hereinafter referred to as
`
`“1988 publication”).
`
`
`
`45. Attached hereto as Appendix MENDELSON03 is a true and correct copy of
`
`the MARC record for the 1988 publication held by the Pennsylvania State
`
`University’s library. I secured this record myself from the library’s public
`
`catalog.
`
`
`
`46. The MARC record contained within Appendix MENDELSON03 accurately
`
`describes the title, author, publisher, and ISSN number of the Journal of the
`
`Association for the Advancement of Medical Instrumentation. The 949 field
`
`of a MARC record is used for institution-specific notations and the 949
`
`
`
`18
`
`19
`
`
`
`fields of this MARC record indicate the Pennsylvania State University’s
`
`issue level holdings for the Journal of the Association for the Advancement
`
`of Medical Instrumentation, demonstrating that the Pennsylvania State
`
`University’s collection contains volumes 17 – 22. These journal holdings
`
`clearly include Volume 22, No. 4, which corresponds to the 1988
`
`publication. In comparing the listed fields in Appendix MENDELSON03 to
`
`Exhibit 1017, it is my determination that Exhibit 1017 is a true and correct
`
`copy of the “Design and Evaluation of a New Reflectance Pulse Oximeter
`
`Sensor” article, and that the copy of the 1988 publication in the
`
`Pennsylvania State University’s library includes the article in Exhibit 1017.
`
`
`
`47. The 008 field of the MARC record noted on page 1 of Appendix
`
`MENDELSON03 indicates that the Journal of the Association for the
`
`Advancement of Medical Instrumentation was first cataloged by the
`
`Pennsylvania State University’s library as of August 8, 1983. The 362 field
`
`of the MARC record indicates the Pennsylvania State University’s
`
`acquisition of this material ceased as of Vol. 22, No. 6. Based on this
`
`information, it is my determination that the 1988 publication, which
`
`included the article published as Exhibit 1017, was made available to the
`
`
`
`19
`
`20
`
`
`
`public by the Pennsylvania State University shortly after initial publication
`
`in August 1988.
`
`
`
`48. I have reviewed Exhibit 1018, a copy of an article entitled “Skin Reflectance
`
`Pulse Oximetry: In Vivo Measurements From the Forearm and Calf” by Y.
`
`Mendelson and M.J. McGinn as published in Journal of Clinical
`
`Monitoring, January 1991 (hereinafter referred to as the “1991
`
`publication”).
`
`
`
`49. Attached hereto as Appendix MENDELSON04 is a true and correct copy of
`
`the MARC record for the 1991 publication held by the Ohio State University
`
`library. I secured this record myself from the library’s public catalog.
`
`
`
`50. The MARC record contained within Appendix MENDELSON04 accurately
`
`describes the title, author, publisher, and ISSN number of the Journal of
`
`Clinical Monitoring. The ‘Lib Has.’ field of this MARC record indicates
`
`Ohio State University’s issue level holdings for the Journal of Clinical
`
`Monitoring, demonstrating that Ohio State University’s collection contains
`
`volumes 1 (1985) – volume 13 (1997). Accordingly, Ohio State’s journal
`
`holdings range clearly includes the January 1991 edition. In comparing the
`
`
`
`20
`
`21
`
`
`
`information listed in Appendix MENDELSON04 to Exhibit 1018, it is my
`
`determination that Exhibit 1018 is a true and correct copy of the “Skin
`
`Reflectance Pulse Oximetry: In Vivo Measurements From the Forearm and
`
`Calf” article, and that the copy of the 1991 publication in Ohio State
`
`University’s library includes the article in Exhibit 1018.
`
`
`
`51. The 008 field of the MARC record noted on page 1 of Appendix
`
`MENDELSON04 indicates that the Journal of Clinical Monitoring was first
`
`cataloged by Ohio State University’s library