`
`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, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`E-mail: AppleIPR2020-1715-765@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01715
`Patent 10,631,765
`
`MASIMO OBJECTIONS TO ADMISSIBILITY OF
`APPLE EVIDENCE SERVED WITH ITS REPLY
`
`
`
`IPR2020-01715 – 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 No. and Description
`Exhibit 1047 - Second
`Declaration of Dr. Thomas W.
`Kenny
`
`Objection
`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., ¶¶34-67).
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`The testimony is misleading, incomplete, and
`irrelevant because it lacks support for
`contentions and mischaracterizes the teachings of
`Exs. 1001, 1003, 1006, 1008, 1009, 1010, 1012,
`
`-1-
`
`
`
`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
`
`Exhibit No. and Description
`
`Exhibit 1049 - Hecht Optics
`Fourth Edition
`
`Exhibit 1050 - Excerpts of
`Hecht Optics Second Edition
`
`Objection
`1016, 1019, 1024, 1049, 1051, 1052, 1053, 1054,
`1056, 1057, 1058, 2004, 2006, 2007, 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):
`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.
`
`-2-
`
`
`
`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
`
`Exhibit No. and Description
`Exhibit 1051 - Hecht Optics
`Second Edition
`
`Exhibit 1055 - “Refractive
`Indices of Human Skin Tissues
`at Eight Wavelengths and
`Estimated Dispersion Relations
`between 300 and 1600 nm,” H.
`Ding, et al.; Phys. Med. Biol.
`51 (2006); pp. 1479-1489
`
`Exhibit 1056 - “Analysis of the
`Dispersion of Optical Plastic
`Materials,” S. Kasarova, et al.;
`Optical Materials 29 (2007);
`pp. 1481-1490
`
`Objection
`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-
`
`
`
`IPR2020-01715 – Patent 10,631,765
`Apple v. Masimo
`
`Exhibit No. and Description
`Exhibit 1057 - “Noninvasive
`Pulse Oximetry Utilizing Skin
`Reflectance
`Photoplethysmography,” Y.
`Mendelson, et al.; IEEE
`Transactions on Biomedical
`Engineering, Vol. 35, No. 10,
`October 1988; pp. 798-805
`
`Exhibit 1058 - U.S. Pat. No.
`6,198,951
`
`
`
`Dated: November 17, 2021
`
`Objection
`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-
`
`
`
`IPR2020-01715 – 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 ITS REPLY is
`
`being served electronically on November 17, 2021, to the e-mail addresses shown
`
`below:
`
`W. Karl Renner
`Andrew B. Patrick
`Usman Khan
`Grace J. Kim
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Email: IPR50095-0024IP2@fr.com
`PTABInbound@fr.com; axf-ptab@fr.com; patrick@fr.com; gkim@fr.com;
`khan@fr.com
`
`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
`
`
`
`
`Dated: November 17, 2021
`
`
`
`
`54589010
`
`
`
`