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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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`ALIVECOR, INC.,
`Patent Owner.
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`IPR2021-00972
`Patent 10,638,941
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`PETITIONER’S UNOPPOSED MOTION FOR PRO HAC VICE
`ADMISSION OF MICHAEL AMON UNDER 37 C.F.R. § 42.10(c)
`
`

`

`APPLE-1001
`
`APPLE-1002
`
`
`EXHIBIT LIST
` U.S. Patent 10,638,941 to Albert et al. (“the ’941 patent”)
`
` Excerpts from the Prosecution History of the ’941 patent (“the
`Prosecution History”)
`
`APPLE-1003
`
` Declaration of Dr. Bernard A. Chaitman
`
`APPLE-1004
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` PCT Patent Publication WO2012/140559 (“Shmueli”)
`
`APPLE-1005
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` U.S. Patent Publication 2014/0275840 (“Osorio”)
`
`APPLE-1006
`
` Li Q, Clifford GD, “Signal quality and data fusion for false
`alarm reduction in the intensive care unit,” J Electrocardiol.
`2012 Nov-Dec; 45(6):596-603 (“Li-2012”)
`
`APPLE-1007
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` U.S. Patent Publication 2008/0004904 (“Tran”)
`
`APPLE-1008
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` U.S. Patent Publication 2014/0107493 (“Yuen”)
`
`APPLE-1009
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` U.S. Patent Publication 2015/0119725 (“Martin”)
`
`APPLE-1010
`
` U.S. Provisional Application No. 61/794,540 (“Osorio
`Provisional”)
`
`APPLE-1011
`
` Lee J, Reyes BA, McManus DD, Mathias O, Chon KH.
`International Journal of Bioelectromagnetism, Vol. 15, No. 1,
`pp. 26-29, 2013 (“Lee-2013”)
`
`APPLE-1012
`
` Tsipouras MG, Fotiadis DI. Automatic arrhythmia detection
`based on time and time-frequency analysis of heart rate
`variability. Comput Methods Programs Biomed. 2004 May;
`74(2):95-108 (“Tsipouras-2004”)
`
`APPLE-1013
`
` Lu S, Zhao H, Ju K, Shin K, Lee M, Shelley K, Chon KH. Can
`photoplethysmography variability serve as an alternative
`
`i
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`

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`approach to obtain heart rate variability information? J Clin
`Monit Comput. 2008 Feb; 22(1):23-9 (“Lu-2008”)
`
`APPLE-1014
`
` Selvaraj N, Jaryal A, Santhosh J, Deepak KK, Anand S.
`Assessment of heart rate variability derived from finger-tip
`photoplethysmography as compared to electrocardiography. J
`Med Eng Technol. 2008 Nov-Dec; 32(6):479-84 (“Selvaraj-
`2008”)
`
`APPLE-1015
`
` Lu G, Yang F, Taylor JA, Stein JF. A comparison of
`photoplethysmography and ECG recording to analyse heart rate
`variability in healthy subjects. J Med Eng Technol. 2009;
`33(8):634-41 (“Lu-2009”)
`
`APPLE-1016
`
` Suzuki T, Kameyama K, Tamura T. Development of the
`irregular pulse detection method in daily life using wearable
`photoplethysmographic sensor. Annu Int Conf IEEE Eng Med
`Biol Soc. 2009; 2009:6080-3 (“Suzuki-2009”)
`
`APPLE-1017
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` Reed MJ, Robertson CE, Addison PS. Heart rate variability
`measurements and the prediction of ventricular arrhythmias.
`QJM. 2005 Feb;98(2):87-95 (“Reed-2005”)
`
`APPLE-1018
`
` Schäfer A, Vagedes J. How accurate is pulse rate variability as
`an estimate of heart rate variability? A review on studies
`comparing photoplethysmographic technology with an
`electrocardiogram. Int J Cardiol. 2013 Jun 5; 166(1):15-29
`(“Schafer-2013”)
`
`APPLE-1019
`
` K. Douglas Wilkinson, “The Clinical Use of the
`Sphygmomanometer,” The British Medical Journal, 1189-90
`(Dec. 27, 1924) (“Wilkinson”)
`
`APPLE-1020
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` U.S. Patent 6,095,984 (“Amano”)
`
`APPLE-1021
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` B.K. Bootsma et. al, “Analysis of R-R intervals in patients with
`atrial fibrillation at rest and during exercise.” Circulation 1970;
`41:783-794 (“Bootsama-1970”)
`
`ii
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`

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`APPLE-1022
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` Frits L. Meijler and Fred H. M. Wittkampf, “Role of the
`Atrioventricular Node in Atrial Fibrillation” Atrial Fibrillation:
`Mechanisms and Management, 2nd ed. 1997 (“Meijler-1997”)
`
`APPLE-1023
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` Heart Diseases, Definition of Heart Diseases by Merriam-
`Webster Dictionary
`
`APPLE-1024
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` Acharya UR, Joseph KP, Kannathal N, Lim CM, Suri JS. Heart
`rate variability: a review. Med Biol Eng Comput. 2006 Dec;
`44(12):1031-51 (“Acharya-2006”)
`
`APPLE-1025
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` Saime Akdemir Akar, Sadık Kara, Fatma Latifoğlu, Vedat
`Bilgiç. Spectral analysis of photoplethysmographic signals: The
`importance of preprocessing. Biomedical Signal Processing and
`Control, 2013; 8(1):16-22 (Akar-2013)
`
`APPLE-1026
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` U.S. Provisional Application No. 61/915,113
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`APPLE-1027
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` U.S. Provisional Application No. 61/953,616
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`APPLE-1028
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` U.S. Provisional Application No. 61/969,019
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`APPLE-1029
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` U.S. Provisional Application No. 61/970,551
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`APPLE-1030
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` U.S. Provisional Application No. 62/014516
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`APPLE-1031
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` U.S. Patent Publication No. 2012/0203491 (“Sun”)
`
`APPLE-1032
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` U.S. Patent 9,808,206 (“Zhao”)
`
`APPLE-1033
`
` Kleiger RE, Stein PK, Bigger JT Jr. Heart rate variability:
`measurement and clinical utility. Ann Noninvasive
`Electrocardiol. 2005 Jan; 10(1):88-101 (“Kleiger-2005”)
`
`APPLE-1034
`
` Chen Z, Brown EN, Barbieri R. Characterizing nonlinear
`heartbeat dynamics within a point process framework. IEEE
`Trans Biomed Eng. 2010 Jun; 57(6):1335-47 (“Chen-2010”)
`
`iii
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`

`

`APPLE-1035
`
` Karvonen, J., Vuorimaa, T. Heart Rate and Exercise Intensity
`During Sports Activities. Sports Medicine 5, 303–311 (1988)
`(“Karvonen-1988”)
`
`APPLE-1036
`
` Yu C, Liu Z, McKenna T, Reisner AT, Reifman J. A method
`for automatic identification of reliable heart rates calculated
`from ECG and PPG waveforms. J Am Med Inform Assoc. 2006
`May-Jun; 13(3):309-20 (“Yu-2006”)
`
`APPLE-1037
`
` AliveCor v Apple ITC Complaint Exhibit 10 (941 Infringement
`Chart)
`
`APPLE-1038
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` Tavassoli, M, Ebadzadeh, MM, Malek H. (2012). Classification
`of cardiac arrhythmia with respect to ECG and HRV signal by
`genetic programming. Canadian Journal on Artificial
`Intelligence, Machine Learning and Pattern Recognition. 3. 1-
`13 (“Tavassol-2012”)
`
`APPLE-1039
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` Asl BM, Setarehdan SK, Mohebbi M. Support vector machine-
`based arrhythmia classification using reduced features of heart
`rate variability signal. Artif Intell Med. 2008 Sep;44(1):51-64
`(“Asl-2008”)
`
`APPLE-1040
`
` Yaghouby F., Ayatollahi A. (2009) An Arrhythmia
`Classification Method Based on Selected Features of Heart
`Rate Variability Signal and Support Vector Machine-Based
`Classifier. In: Dössel O., Schlegel W.C. (eds) World Congress
`on Medical Physics and Biomedical Engineering, September 7 -
`12, 2009, Munich, Germany. IFMBE Proceedings, vol 25/4.
`Springer, Berlin, Heidelberg (“Yaghouby-2009”)
`
`APPLE-1041
`
` Dallali, A, Kachouri, A, Samet, M. (2011). Integration of HRV,
`WT and neural networks for ECG arrhythmias classification.
`ARPN Journal of Engineering and Applied Sciences. VOL. 6.
`74-82 (“Dallali-2011”)
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`APPLE-1042
`
` Sajda P. Machine learning for detection and diagnosis of
`disease. Annu Rev Biomed Eng. 2006; 8:537-65 (“Sajda-
`2006”)
`
`iv
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`

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`APPLE-1043
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` Aaron Smith. Smartphone Ownership – 2013 Update. Pew
`Research Center. June 5, 2013 (“Smith-2013”)
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`APPLE-1044
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` C. Narayanaswami and M. T. Raghunath, “Application design
`for a smart watch with a high resolution display,” Digest of
`Papers. Fourth International Symposium on Wearable
`Computers, 2000, pp. 7-14 (“Narayanaswami-2000”)
`
`APPLE-1045
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` Thong, YK, Woolfson, M, Crowe, JA, Hayes-Gill, B, Challis,
`R. (2002). Dependence of inertial measurements of distance on
`accelerometer noise, Meas. Measurement Science and
`Technology. 13. 1163 (“Thong-2002”)
`
`APPLE-1046
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` AliveCor’s ITC Complaint filed on April 20, 2021 in “Certain
`Wearable Electronic Devices With ECG Capability and
`Components Thereof” ITC-337-3545-20210420 (“ITC
`Complaint”)
`
`
`APPLE-1047
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` Excerpts from Marcovitch, Harvey. Black’s Medical
`Dictionary. London: A. & C. Black, 2005
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`APPLE-1048
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` U.S. Patent No. 7,894,888 (“Chan”)
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`APPLE-1049
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` Discordance, Definition of Discordance by Merriam-Webster
`Dictionary
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`APPLE-1050
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` Strath SJ, Swartz AM, Bassett DR Jr, et al. Evaluation of heart
`rate as a method for assessing moderate intensity physical
`activity. Medicine and Science in Sports and Exercise. 2000
`Sep;32(9 Suppl):S465-70 (“Strath-2000”)
`
`APPLE-1051 Letter from Michael Amon re Conditional Stipulation dated June 8,
`2021
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`APPLE-1052 Declaration of Mr. Jacob Munford
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`APPLE-1053 Order Staying Case Pending Institution of And/Or Final
`Determination in Parallel ITC Matter (AliveCor Inc. v. Apple
`Inc., 6:20-cv-01112-26 (W.D.Tex. May 6, 2021)
`v
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`

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`APPLE-1054
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` U.S. Provisional Application No. 61/895,995 (“Martin
`Provisional”)
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`APPLE-1055
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` AliveCor’s District Court Complaint filed on May 25, 2021 in
`AliveCor, Inc. v. Apple Inc., 3:21-cv-03958 (N.D.Cal. May 25,
`2021) (“Antitrust Complaint”)
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`APPLE-1056
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` Apple’s Rebuttal Markman Brief of October 13, 2021
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`APPLE-1057
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` Email communication dated November 17, 2021 regarding
`Prior Art Developments in Co-pending ITC Case
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`APPLE-1058
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` Declaration of Michael Amon
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`vi
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`

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`Pursuant to 37 C.F.R. § 42.10(c), the Petitioner, Apple Inc. (“Apple”),
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`respectfully requests that the Board recognize Michael Amon as counsel pro hac
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`vice in this proceeding. Apple seeks the counsel of Michael Amon due to his
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`experience in representing Apple in other patent-related matters and particularly
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`due to his familiarity with the substantive and technical issues involved in this
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`proceeding. This motion is authorized by the Notice of Filing Date Accorded to
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`Petition and Time for Filing Patent Owner Preliminary Response that was mailed
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`on June 16, 2021.
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`I.
`Statement of Facts
`Michael Amon is a patent litigation attorney with nearly 18 years of
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`experience representing clients in cases involving medical devices, computer
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`software, chemical formulations, and electrical products. Mr. Amon regularly
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`litigates patent cases before the United States Court of Appeals for the Federal
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`Circuit and various federal district courts. Through his practice in such cases,
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`Mr. Amon has gained substantial experience in jury trials, discovery, Markman
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`hearings, and appeals. Mr. Amon began his legal career as a law clerk for the
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`Honorable James F. Stiven at the United States District Court for the Southern
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`District of California. Mr. Amon subsequently served as a law clerk for
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`Honorable Rudi M. Brewster, also at the United States District Court for the
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`1
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`Southern District of California, where he was involved in numerous patent
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`cases. Mr. Amon’s biography is attached as Appendix A.
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` Mr. Amon also has particular experience and familiarity with the
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`substantive and technical issues involved in this inter partes review proceeding.
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`For instance, Mr. Amon serves as trial counsel for Apple in the litigation that
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`involves this patent and, as a result, gained familiarity with the patent and prior
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`art references at issue. Apple has invested significant financial resources in each
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`of these proceedings, and Mr. Amon will be taking a leading role with respect to
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`the patent that is the subject of the present proceeding. Moreover, through his
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`representation in the litigation, Apple has developed a particular relationship
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`with Mr. Amon such that Apple desires to continue the relationship with Mr.
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`Amon for the purpose of this proceeding.
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`II.
`Affidavit of Individual Seeking to Appear
`This Motion for Pro Hac Vice Admission is accompanied by an Affidavit
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`of Michael Amon. Accordingly, Apple submits that there is good cause under 37
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`C.F.R. § 42.10(c) for the Board to recognize Michael Amon as counsel pro hac
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`vice during this proceeding.
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`Dated: February 22, 2022
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`Respectfully submitted,
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on February 22,
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`2022, a complete and entire copy of this Petitioner’s Motion for Pro Hac Vice and
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`Accompanying Exhibit were provided via email to the Patent Owner by serving the
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`correspondence email addresses of record as follows:
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`
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`James M. Glass
`John T. McKee
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave, 22nd Floor
`New York, New York, 10010
`Email: jimglass@quinnemanuel.com
`qe-alivecor@quinnemanuel.com
` Email: johnmckee@quinnemanuel.com
`
`Andrew M. Holmes
`John W. McCauley
`Sean S. Pak
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California St, 22nd Floor
`San Francisco, CA 94111
`Email: drewholmes@quinnemanuel.com
`Email: johnmccauley@quinnemanuel.com
`Email: seanpak@quinnemanuel.com
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`(617) 596-5938
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`APPENDIX A
`APPENDIX A
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`

`

`Michael A. Amon
`Principal
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`San Diego, CA
`
`858-678-5070
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`amon@fr.com
`
`Overview
`
`About Michael
`
`Michael A. Amon is the vice office managing principal of the Southern California office of Fish &
`Richardson P.C. His practice emphasizes intellectual property litigation, including patent infringement
`and business litigation. Mr. Amon previously clerked for the Honorable James F. Stiven (2002-2003)
`and the Honorable Rudi M. Brewster (2003-2004) of the U.S District Court for the Southern District of
`California.
`
`Focus Areas
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`Services
`
`Litigation
`Commercial Litigation
`ITC Litigation
`Patent Litigation
`
`Industries
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`Cleantech
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`

`

`Education
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`J.D. cum laude, University of San Diego School of Law (2002)
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`M.A., International Business Administration, University of San Diego (2001)
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`B.S., Biology, Trinity University (1995)
`
`Experience
`
`Warsaw Orthopedic v. NuVasive, Inc. – Represented NuVasive, Inc. in a series of patent infringement
`lawsuits filed by Warsaw and its Medtronic affiliate related to spinal access systems, spinal implants,
`fixation, and biologics.  Mr. Amon was part of the team that successfully petitioned the Federal Circuit
`to vacate the $101 million damages verdict Warsaw obtained at trial.  In addition, Mr. Amon was
`involved in a series of inter partes review petitions that succeeded in invalidating several of Warsaw’s
`asserted patents.
`
`NuVasive, Inc. v. Globus Medical, Inc. – Represented NuVasive, Inc. against Globus regarding
`Globus’s infringement of NuVasive patents related to medical devices and methods for spine
`surgery.  Mr. Amon argued claim construction and summary judgment, and was instrumental in
`positioning NuVasive to negotiate a favorable settlement with Globus.
`
`St. Jude Medical, et al. v. Volcano Corp. – Defended Volcano Corp. in patent litigation and jury trial
`related to pressure sensing guide wires used to diagnose heart problems. At trial, jury found two St.
`Jude patents invalid, two not infringed; a fifth patent was declared not infringed by the court on the
`eve of trial.
`
`Nicholas Colucci v. Callaway Golf Co. — No. 08-CV-288 (E.D. TX.) Successfully defended Callaway
`Golf at trial against claims of patent and trade dress infringement as to certain golf club products
`manufactured and sold by Callaway Golf. Tried to a jury in March 2010. The jury found for Callaway
`Golf on no literal infringement of plaintiff’s asserted patent, and no infringement of plaintiff’s alleged
`trade dress rights. Post trial motions pending.
`
`Baxter Healthcare Corp and DEKA Prods. Ltd. Partnership v. Fresenius USA, Inc. et al. — (07-1359
`(N.D. Cal.) Successfully represented Fresenius at trial against claims of patent infringement related to
`peritoneal dialysis automated cyclers manufactured and used by Fresenius in the United States. The
`case was tried to a jury in July 2010. The jury returned a verdict of no infringement in Fresenius’s
`favor.
`
`

`

`Callaway Golf Co. v. Acushnet Co. – No. 06-91 (D. Del.) – Represented Callaway Golf in two-week
`trial asserting that Acushnet’s popular Titleist Pro V1 and Pro V1x golf balls infringe four Callaway
`Golf patents on golf ball construction. Tried to jury verdict in December 2007. Acushnet conceded
`infringement; jury found for Callaway Golf on validity of all four patents. Published at 523 F. Supp 2d
`388 (D. Del. 2007).
`
`Data Encryption Corporation v. Microsoft Corp. – No. CV 05-05531 (C.D. Cal.). Part of the team that
`defended Microsoft against patent infringement allegations related to data encryption technology.
`Obtained favorable ruling of non-infringement on summary judgment.
`
`AVID Identification Sys., Inc. v. Philips Semiconductors Inc. – No. 2:04-cv-183 (E.D. Tex.). Part of the
`trial team that represented AVID in two-week trial asserting patent infringement (3 patents) and
`Lanham Act claims relating to RFID transponders and readers. Obtained favorable mid-trial
`settlement from two defendants and a complete jury victory against the other two defendants,
`including a finding of willful infringement and a damages award of over $6 million.
`
`Stonebreaker v. Medical Management Int’l, Inc. – No. GIC 830293 (Cal. Sup. Ct.). Part of the trial
`team that represented Stonebreaker and AVID in trial asserting unfair competition under California
`Code Section 17200 and the Lanham Act. Obtained very favorable mid-trial settlement that included
`recovery of damages and a stipulated permanent injunction against the defendant.
`
`Insights
`
`

`

`Publications
`
`Mr. Amon is a contributing author to Fish’s IP Law Essentials.
`
`“Patent Local Rules: Knowing Them Well Can Make Litigating Your Case Smoother,” Fish IP
`Law Essentials Blog (April 2020)
`“Injunction Denied, Sandoz Clear to Launch” Fish Litigation Blog (September 2015).
`“BPCIA Dance Partners Request En Banc Rehearing and Amgen Seeks Temporary Injunction”
`Fish Litigation Blog (August 2015)
`“Amgen v. Sandoz: Federal Circuit Weighs In on the BPCIA Riddle” Fish Litigation Blog (July
`2015)
`“Hot Topics Related to Biosimilars and the BPCIA”  Fish Litigation Blog (June 2015)
`“Patent Dance Takes Center Stage in Amgen V. Sandoz Appeal”  Law360  (June 2015)
`“The Dangers of Having Your Expert Not Devote Sufficient Time to Your Case”  Fish Litigation
`Blog (February 2015).
`
`Presentations
`
`“Patent Developments at the Supreme Court” and “Ethics:  Common and Emerging
`Challenges,” San Diego Office CLE Event (January 2018)
`“Short and Long-Term IP Strategies to Consider in Light of Trends and Pending Decisions,”
`Association of Corporate Counsel – San Diego Chapter (December 2017)
`“Inter Partes Reviews: What Have We Really Learned?” Daily Journal Patent Disputes Forum –
`South, Beverly Hills, CA (December 2017)
`“Biosimilars – A Mid-Year Review,” Fish & Richardson Webinar, (August 2017)
`
`Teaching Positions
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`Adjunct Professor of Law, University of San Diego School of Law 2009-present.
`
`Recognition
`
`Finalist, “Leaders in Law Award,” San Diego Business Journal (2021)
`Named to The Best Lawyers in America (2022)
`Named one of San Diego’s Top Attorneys by SD Metro Magazine (2020)
`Named to Best Lawyers Litigation – Patent (2018-2021)
`
`

`

`Clerkships
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`U.S. District Court for the Southern District of California, The Honorable James F. Stiven, 2002 - 2003
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`U.S. District Court for the Southern District of California, The Honorable Rudi M. Brewster
`(deceased), 2003 - 2004
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`Memberships & Affiliations
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`J. Clifford Wallace American Inn of Court
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`American Bar Association
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`Board member, San Diego Volunteer Lawyers Project
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`Languages
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`English
`Italian
`Spanish
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`