`Served: September 7, 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)
`William R. Zimmerman (admitted pro hac vice)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1538-554@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01538
`U.S. Patent 10,588,554
`
`
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`
`
`IPR2020-01538
`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 Petitioner’s reply. 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
`
`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
`Exhibit 1039 Excerpts of
`Eugene Hecht Optics 2nd Ed.
`1990
`
`Objections
`
`Admissibility (FRE 1002, 1003):
`This exhibit is an inadmissible copy because the
`exhibit as filed contains illegible and/or
`inaccurate reproductions of text and/or figures.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`This exhibit is a selected subsection of a larger
`document and is thus incomplete. Moreover, as
`used by Petitioner, this document does not stand
`for the proposition for which it is cited and the
`
`-1-
`
`
`
`Exhibit 1040 Eugene Hecht
`Optics 2nd Ed. 1990
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case. In addition, this exhibit is not cited
`in or part of Petitioner’s remarks.
`Admissibility (FRE 1002, 1003):
`This exhibit is an inadmissible copy because the
`exhibit as filed contains illegible and/or
`inaccurate reproductions of text and/or figures.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`
`Exhibit 1044 Refractive Indices
`of Human Skin Tissues at Eight
`Wavelengths
`
`Exhibit 1045 Analysis of the
`Dispersion of Optical Plastic
`Materials
`
`-2-
`
`
`
`Exhibit 1047 Second
`Declaration of Dr. Thomas W.
`Kenny
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`Incomplete, Irrelevant, Misleading (FRE 106,
`Exhibit 1046 Noninvasive Pulse
`401, 403):
`Oximetry Utilizing Skin
`Reflectance
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Masimo’s objections to Ex. 1047 are set forth
`below. To the extent Dr. Kenny’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.
`In addition, Masimo objects because declarant’s
`testimony improperly relies on new evidence
`and arguments not presented in connection with
`Petitioner’s petition and does not respond to
`arguments raised in Patent Owner’s responsive
`papers (37 C.F.R. § 42.23) (see e.g., ¶¶31-40).
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`¶¶7-15 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1003,
`1006, 1008, 1009, 1012, 1019, 1026, and the
`Patent Owner Response.
`¶¶17-23 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1003,
`1009, and the Patent Owner Response.
`¶¶24-30 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1009,
`
`-3-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`1019, and the Patent Owner Response.
`¶31 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1009, 1019, and the Patent
`Owner Response.
`¶¶32-40 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1007,
`1012, 1019, 1040, 1044, 1045, 1046, and the
`Patent Owner Response.
`¶¶41-43 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1009,
`1012, and the Patent Owner Response.
`¶¶51-53 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1012,
`1018, and the Patent Owner Response.
`¶55 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1013.
`¶¶57-60 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1013,
`1019, 1023, and the Patent Owner Response.
`¶¶61-64 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Ex. 1010 and
`the Patent Owner Response.
`¶67 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`
`-4-
`
`
`
`IPR2020-01538
`Apple Inc. v. Masimo Corporation
`which it is cited and mischaracterizes the
`teachings of Ex. 1026.
`¶¶68-70 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`mischaracterize the teachings of Exs. 1010,
`1017, and the Patent Owner Response.
`Improper Testimony by Expert Witness
`(FRE 702):
`¶¶8, 9, 14, 15, 16, 22, 23, 32, 33, 34, 36, 40, 42,
`43, 44, 45, 46, 47, 48, 49, 50, 51, 54, 55, 56, 58,
`59, 60, 61, 65, 66, 67, 68, 69, 70 are not based
`on sufficient facts and data, and do not reliably
`apply facts and data using scientific principles.
`Admissibility (FRE 1002, 1003):
`This exhibit is an inadmissible copy because the
`exhibit as filed contains illegible and/or
`inaccurate reproductions of text and/or figures.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`
`
`Exhibit 1049 Eugene Hecht
`Optics 4th Ed. 2002
`
`
`
`
`
`
`
`Dated: September 7, 2021
`
`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
`
`
`
`
`
`-5-
`
`
`
`IPR2020-01538
`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 are being served electronically on September 7,
`
`2021, to the e-mail addresses shown below:
`
`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
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0013IP1@fr.com
`Email: PTABInbound@fr.com; axf-ptab@fr.com; patrick@fr.com
`
`Dated: September 7, 2021
`
`
`
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`-6-
`
`
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