Filed May 19, 2021
`
`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
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1733-195@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01733
`U.S. Patent 10,702,195
`
`
`
`
`
`MASIMO OBJECTIONS TO ADMISSIBILITY OF APPLE EVIDENCE
`SUBMITTED BEFORE TRIAL INSTITUTION
`
`
`
`
`
`
`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
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1733-195@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-01733
`U.S. Patent 10,702,195
`
`
`
`
`
`MASIMO OBJECTIONS TO ADMISSIBILITY OF APPLE EVIDENCE
`SUBMITTED BEFORE TRIAL INSTITUTION
`
`
`
`
`
`
`IPR2020-01733 – Patent 10,702,195
`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 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
`
`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 1003 - Declaration of
`Dr. Kenny
`
`Objections
`
`Masimo’s objections to Ex. 1003 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.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`incomplete, and
`¶¶21-22 are misleading,
`irrelevant because they lack support for the
`
`-1-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1001.
`
`incomplete, and
`¶¶41-42 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1001.
`
`incomplete, and
`¶¶43-47 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1001.
`
`incomplete, and
`¶¶49-55 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1006.
`
`incomplete, and
`¶¶56-58 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1024.
`
`incomplete, and
`¶¶59-60 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1014.
`
`incomplete, and
`¶¶61-65 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1027.
`
`¶66 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`
`-2-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`which it is cited and mischaracterizes the
`teachings of Ex. 1046.
`
`incomplete, and
`¶¶68-76 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1006,
`1015, 1024, 1025, 1042.
`
`incomplete, and
`¶¶77-85 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1006,
`1008, 1009, 1014.
`
`incomplete, and
`¶¶86-94 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1001,
`1006, 1014, 1027, 1044.
`
`incomplete, and
`¶¶95-96 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1006,
`1027.
`
`¶97 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`incomplete, and
`¶¶98-102 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`
`-3-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`mischaracterize the teachings of Exs. 1006,
`1015.
`
`¶103 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`incomplete, and
`¶¶105-109 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1006,
`1015, 1017, 1024, 1025.
`
`incomplete, and
`¶¶110-111 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1006.
`
`¶112 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`¶114 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1006, 1014.
`
`incomplete, and
`¶¶115-117 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1006.
`
`¶119 is misleading, incomplete, and irrelevant
`
`-4-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`¶120 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`¶122 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`incomplete, and
`¶¶124-128 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1006,
`1010, 1024, 1042.
`
`¶130 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`incomplete, and
`¶¶132-133 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1006.
`
`¶135 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`
`-5-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`incomplete, and
`¶¶136-138 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1014,
`1015, 1016, 1028.
`
`incomplete, and
`¶¶140-141 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1006,
`1027.
`
`incomplete, and
`¶¶142-145 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1027.
`
`incomplete, and
`¶¶146-147 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1027.
`
`¶148 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1027.
`
`incomplete, and
`¶¶150-155 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Exs. 1018,
`1023, 1027, 1045, 1046.
`
`incomplete, and
`¶¶156-157 are misleading,
`irrelevant because they lack support for the
`
`-6-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1027.
`
`¶158 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`¶159 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1006.
`
`incomplete, and
`¶¶160-161 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1006.
`
`¶184 are misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1027.
`
`¶186 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1027.
`
`incomplete, and
`¶¶188-191 are misleading,
`irrelevant because they lack support for the
`contentions for which they are cited and they
`mischaracterize the teachings of Ex. 1006, 1016,
`1027, 1046.
`
`
`
`-7-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`Improper Testimony by Expert Witness
`(FRE 702):
`¶¶21-22 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶41 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶42 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶67 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶70 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶72 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶73 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶76 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`
`-8-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`¶81 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶82 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶83 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶84 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶85 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶86 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶88 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶91 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶100 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`
`-9-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`scientific principles.
`
`¶104 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶105 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶106 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶107 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶108 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶109 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶113 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶124 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`
`-10-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`¶125 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶126 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶128 is not based on sufficient facts and data,
`and does 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.
`
`¶138 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶141 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶145 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶149 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶150 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`
`-11-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`scientific principles.
`
`¶152 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶153 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶154 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶155 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶157 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶161 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶163 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`¶190 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`
`
`-12-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`
`Objections
`
`Exhibit 1008 - Certified English
`Translation of Inokawa and
`Translator’s Declaration
`
`Exhibit 1016 - “A Wearable
`Reflectance Pulse Oximeter for
`Remote Physiological
`Monitoring” (“Mendelson-
`2006”)
`
`Exhibit 1018 - “Acrylic: Strong,
`stiff, clear plastic available in a
`variety of brilliant colors”
`
`¶191 is not based on sufficient facts and data,
`and does not reliably apply facts and data using
`scientific principles.
`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.
`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
`
`-13-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`Exhibit 1020 - US Pat. No.
`7,092,735 Osann, Jr.
`
`Exhibit 1021 - US Pat. No.
`6,415,166 Van Hoy
`
`Exhibit 1026 - Declaration of
`Jacob Munford
`
`Exhibit 1029 - Wikipedia: The
`Free Encyclopedia, “Universal
`asynchronous receiver-
`transmitter”
`
`Objections
`
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`This document, as used by Petitioner, provides
`an incomplete and misleading characterization
`of the knowledge in the art as of the asserted
`date of the invention and therefore is irrelevant
`and confuses the issues in the case. In addition,
`this exhibit is not cited in or part of any ground.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`This document, as used by Petitioner, provides
`an incomplete and misleading characterization
`of the knowledge in the art as of the asserted
`date of the invention and therefore is irrelevant
`and confuses the issues in the case. In addition,
`this exhibit is not cited in or part of any ground.
`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.
`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
`
`-14-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`Apple v. Masimo
`
`Exhibit Number and
`Description
`Exhibit 1030 - US Pat. No.
`6,081,735 Diab
`
`
`
`Dated: May 19, 2021
`
`
`
`Objections
`
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`This document, as used by Petitioner, provides
`an incomplete and misleading characterization
`of the knowledge in the art as of the asserted
`date of the invention and therefore is irrelevant
`and confuses the issues in the case. In addition,
`this exhibit is not cited in or part of any ground.
`
`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
`
`
`
`-15-
`
`
`
`IPR2020-01733 – Patent 10,702,195
`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 SUBMITTED BEFORE TRIAL
`
`INSTITUTION is being served electronically on May 19, 2021, to the e-mail
`
`addresses shown below:
`
`W. Karl Renner
`Roberto J. Devoto
`devoto@fr.com
`Hyun Jin In
`in@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR50095-0026IP1@fr.com
`PTABInbound@fr.com
`
`Dated: May 19, 2021
`
`
`
`
`
`
`
`34935506
`
`
`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
`
`
`
`
`
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