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`IPR2021-00972
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`U.S. Patent No. 10,638,941
`PATENT OWNER’S MOTION TO EXCLUDE
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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
`________________
`IPR2021-00972
`U.S. Patent No. 10,638,941
`________________
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`PATENT OWNER’S MOTION TO EXCLUDE
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`I.
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`II.
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
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`ARGUMENTS ................................................................................................ 1
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`A.
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`B.
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`Petitioner Offers Dr. Stultz’s Statements For Their Truth .................... 1
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`No Hearsay Exception Applies ............................................................. 3
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`III.
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`PETITIONER’S NEW EVIDENCE SHOULD BE EXCLUDED ................. 5
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`IV. CONCLUSION ................................................................................................ 5
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`i
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`I.
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`INTRODUCTION
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`Pursuant to 37 C.F.R. §42.64 and the Federal Rules of Evidence, Patent
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`Owner AliveCor Inc. (“AliveCor”) moves to exclude Exhibits 1081 (Stultz ITC
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`expert report), 1082 (Stultz ITC deposition), 1083 (Stultz ITC demonstratives), and
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`1072-1073 (Stultz ITC hearing testimony), all of which relate to a new expert, Dr.
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`Stultz and other exhibits added on reply. Dr. Stultz is Apple’s expert in the co-
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`pending ITC investigation, but has not given testimony in this proceeding. Despite
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`this, Petitioner relies on Dr. Stultz’s hearsay testimony given in other proceedings.
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`AliveCor timely objected to these exhibits on sufficiently particularized grounds.
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`See Paper 30.
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`Exhibits 1072-73; 1081-83 consist of statements made outside the course of
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`this IPR proceeding that petitioner relies upon for their truth and are therefor hearsay.
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`Further, no exception to the rules against hearsay apply here, thus those statements
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`are inadmissible. In addition, both Dr. Stultz’s testimony and Exhibits 1060-68;
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`1074-80; 1084-85 constitute new evidence that are not properly raised in Reply.
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`Accordingly, AliveCor requests the Board exclude Exhibits 1060-68 and 1072-85.
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`II. ARGUMENTS
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`A.
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`Petitioner Offers Dr. Stultz’s Statements For Their Truth
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`Out-of-court statements offered for their truth are inadmissible hearsay. See
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`FED. R. EVID. 801. Here, Petitioner offers for its truth out-of-court statements made
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`1
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`by Dr. Stultz in various documents, all of which relate to the co-pending ITC
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`investigation. Specifically, the exhibits at issue are Dr. Stultz’s ITC expert report
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`(Ex. 1081), Dr. Stultz’s ITC deposition (Ex. 1082), Dr. Stultz’s hearing testimony
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`(Ex. 1072-73), and demonstratives to Dr. Stultz’s ITC hearing testimony (Ex.
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`1083).1
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`Specifically, Petitioner relies on Dr. Stultz’s ITC testimony to support various
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`positions regarding machine learning. See IPR2021-00970, Paper 30 at 182. This is
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`likely because Petitioner’s IPR expert, Dr. Chaitman, made several critical
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`admissions on this topic during his cross-examination – specifically, that he had no
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`expertise whatsoever in machine learning or any engineering discipline. Ex. 2017
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`8:4-19 (no engineering experience), 8:20-16 (no design experience) 27:23-28:1,
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`108:6-109:24 (no experience with machine learning). These admissions leave
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`1 While AliveCor also cited testimony from Dr. Stultz, in that instance the testimony
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`was an admission of a party opponent and was therefore subject to an exception to
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`the hearsay rule. See e.g., Response at 10; Ex. 2018 at 62. Accordingly, Petitioner
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`did not object to those exhibits. Petitioner’s use of Dr. Stultz’s testimony, however,
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`is hearsay subject to no exception.
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`2 While Petitioner file these exhibits in this case, it fails to cite them in this action.
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`See generally, Reply. These exhibits should be excluded for this reason alone.
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`2
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`Petitioner with no credible expert testimony on machine learning. Petitioner
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`attempts instead to rely on Dr. Stultz to support the propositions that: 1) “machine
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`learning algorithm” is generic functional language (IPR2021-00970, Paper 30 at 18);
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`2) “machine learning to detect arrhythmia based on heart rate parameters [] was well
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`known” (Id.); and 3) to rebut that machine learning is not trusted by clinicians as a
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`“black box” (id. at 19).
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`B. No Hearsay Exception Applies
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`Dr. Stultz’s statements in Exhibits 1072-73; 1081-83 are not subject to any
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`hearsay exceptions.
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`As an initial matter, Exhibits 1072-73; 1081-83 do not satisfy any of the
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`conditions that are set forth in Rule 803. FED. R. EVID. 803. Dr. Stultz’s hearsay
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`testimony, for example, is not a present sense impression (Rule 803(1)); an excited
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`utterance (Rule 803(2)); a statement of his then-existing state of mind (Rule 803(3));
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`a recorded recollection (Rule 803(5)); a record of a regularly conducted activity
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`(Rule 803(6)); or a public record (Rule 803(10)). These are merely illustrative—no
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`hearsay exception enumerated in Rule 803 applies to Dr. Stultz’s ITC testimony.
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`Likewise, the Rule 804 exceptions do not apply because those exceptions all
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`require a witness to be unavailable. Fed. R. Evid. 804. Under Rule 804, a witness
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`is unavailable if: (1) due to a testifying exemption from court rules or privilege; (2)
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`refusing to testify despite a court order; (3) lack of memory; (4) declarant death or
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`3
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`then-existing infirmity, physical illness, or mental illness; (5) or if the declarant’s
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`testimony is not obtainable by process or other reasonable means. Id. None of these
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`circumstances applies here; rather, Petitioner has made no apparent effort to offer
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`Dr. Stultz’s testimony in this proceeding. See CaptionCall, L.L.C. v. Ultratec, Inc.,
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`IPR2015-00637 (Paper 98), at 15-16 (PTAB Sept. 7, 2016) (no attempt to bring
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`forward out-of-court declarant as a witness undercuts applicability of Rule
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`804(b)(1)).
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`Rule 807 (the residual hearsay exception) does not apply either because it
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`requires the statement to: (1) have equivalent circumstantial guarantees of
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`trustworthiness; (2) be offered as evidence of a material fact; (3) be more probative
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`on the point for which it is offered than any other evidence that the proponent can
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`obtain through reasonable efforts; and (4) be in the interests of justice to admit. Fed.
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`R. Evid. 807. The Board has held that the exercise of the residual exception “is to be
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`reserved for ‘exceptional cases' and is not 'a broad license on trial judges to admit
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`hearsay statements that do not fall within one of the other exceptions.’” Neste Oil
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`OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578 (Paper 52), at 9 (PTAB March
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`12, 2015) (quoting Conoco, Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir.
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`1996)). This is not an exceptional case at least because the interest of justice is not
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`served when, as here, the Petitioner made no effort to procure Dr. Stultz’s statements
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`in this proceeding. See CaptionCall, IPR2015-00637 (Paper 98), at 15-16.
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`4
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`Moreover, Petitioner has failed to demonstrate that Dr. Stultz’s statements are more
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`probative than other evidence it could have obtained through reasonable efforts. Id.
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`at 16-17. Likewise the Board has already found the residual exception is
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`inapplicable in similar outside expert situation. See GAF Materials LLC., v Kirsch
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`Research and Development, LLC., PTAB-IPR2021-00192 (Paper 45), at 62-65.
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`III. PETITIONER’S NEW EVIDENCE SHOULD BE EXCLUDED
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`As the Board notes in its Trial Guide, “Petitioner may not submit new
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`evidence or argument in reply that it could have presented earlier, e.g. to make out a
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`prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated
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`Trial Practice Guide (November 2019) at 73; 37 C.F.R. 42.64(c); see also Belden
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`Inc v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015). Exhibits 1060-68 and
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`1072-85 are new secondary references and testimony by Dr. Stultz that Petitioner
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`could have but did not present in its petition, and cannot be characterized as
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`responsive arguments or evidence, and should be excluded now on reply.
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`IV. CONCLUSION
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`In view of the foregoing, AliveCor respectfully submits Exhibits 1060-68 and
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`1072-85 should be excluded.
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`Date: August 24, 2022
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
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`5
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
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`IPR2021-00972
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`PATENT OWNER’S MOTION TO EXCLUDE
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`The undersigned hereby certifies that the foregoing document was served in
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`its entirety on August 24, 2022 upon the following parties via Electronic Mail.
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`W. Karl Renner Jeremy J. Monaldo
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`IPR50095-0032IP1@fr.com
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`PTABInbound@fr.com
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`axf-ptab@fr.com
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`monaldo@fr.com
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`Date: August 24, 2022
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` By: /Jim Glass/
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
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`6
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