`
`By:
`
`
`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)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1714-765@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01714
`Patent 10,631,765
`
`
`
`
`
`MASIMO OBJECTIONS TO ADMISSIBILITY OF APPLE EVIDENCE
`SERVED WITH APPLE’S REPLY
`
`
`
`
`
`
`IPR2020-01714 – Patent 10,631,765
`Apple v. Masimo
`
`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 1047 Second
`Declaration of Dr. Thomas W.
`Kenny
`
`Objections
`
`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., ¶¶29-44).
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`The testimony is misleading, incomplete, and
`irrelevant because it lacks support for
`contentions and mischaracterizes the teachings
`
`-1-
`
`
`
`IPR2020-01714 – Patent 10,631,765
`Apple v. Masimo
`
`Exhibit 1049 Eugene Hecht
`Optics 4th Ed. 2002
`
`Exhibit 1050 Excerpts of
`Eugene Hecht Optics 2nd Ed.
`1990
`
`of Exs. 1001, 1003, 1006, 1007, 1008, 1009,
`1010, 1012, 1013, 1017, 1018, 1019, 1026,
`1046, 1051, 1052, 1053, 1055, 1056, 1057,
`1058, 1060, 2003, 2004, 2006, 2007, 2008, and
`the Patent Owner Response.
`Improper Testimony by Expert Witness
`(FRE 702):
`The testimony is not based on sufficient facts
`and data, and does 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.
`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
`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
`
`-2-
`
`
`
`IPR2020-01714 – Patent 10,631,765
`Apple v. Masimo
`
`Exhibit 1051 Eugene Hecht
`Optics 2nd Ed. 1990
`
`Exhibit 1055 Refractive Indices
`of Human Skin Tissues at Eight
`Wavelengths
`
`Exhibit 1056 Analysis of the
`Dispersion of Optical Plastic
`Materials
`
`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.
`
`-3-
`
`
`
`IPR2020-01714 – Patent 10,631,765
`Apple v. Masimo
`
`Exhibit 1057 Noninvasive Pulse
`Oximetry Utilizing Skin
`Reflectance
`
`Exhibit 1058 U.S. Patent No.
`6,198,951
`
`Dated: November 5, 2021
`
`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.
`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Jacob L. Peterson/
`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)
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`-4-
`
`
`
`IPR2020-01714 – Patent 10,631,765
`Apple v. Masimo
`
`
`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 MASIMO OBJECTIONS TO
`
`ADMISSIBILITY OF APPLE EVIDENCE SERVED WITH APPLE’S
`
`REPLY is being served electronically on November 5, 2021, to the e-mail
`
`addresses shown below:
`
`W. Karl Renner
`Andrew B. Patrick
`patrick@fr.com
`Grace J. Kim
`gkim@fr.com
`Usman A. Khan
`khan@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR50095-0024IP1@fr.com
`PTABInbound@fr.com
`
`Dated: November 5, 2021
`
`
`
`
`54492472
`
`
`
`
`By: /Jacob L. Peterson/
`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)
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`
`