`
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Daniel Kiang (Reg. No. 79,631)
`
`Filed: February 15, 2023
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR745-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`
`
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Masimo Corporation objects
`
`to the admissibility of evidence submitted by Petitioner Apple Inc. Patent Owner
`
`reserves its rights 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 is or 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.
`
`Evidence
`
`EX1003
`
`Objections
`
`Masimo objects to Dr. Anthony’s testimony regarding the
`
`level of ordinary skill in the art, the knowledge of a skilled
`
`artisan,
`
`the scope and content of
`
`the art and his
`
`interpretation thereof, and the ultimate issue of obviousness
`
`on the bases that such testimony (1) will not “help the trier
`
`of fact to understand the evidence or to determine a fact in
`
`-1-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Evidence
`Objections
`
`issue,” at least because Dr. Anthony lacks experience in the
`
`relevant field and/or is not qualified to testify as to the
`
`knowledge of a person of skill in the art or how a person of
`
`skill in the art would understand the relevant technical
`
`issues, (2) is not “based on sufficient facts or data,” (3) is
`
`not “the product of reliable principles and methods,” and/or
`
`(4) is not based on a reliable application of “the principles
`
`and methods to the facts of the case” (FRE 702).
`
`
`
`By way of example and not limitation, Dr. Anthony’s
`
`testimony is deficient under FRE 702 at least for the
`
`reasons set forth in the following paragraphs.
`
`
`
`Masimo objects that Dr. Anthony’s declaration as irrelevant
`
`and unfairly prejudicial, not based on sufficient facts or
`
`data, and also not the product of an appropriate analysis
`
`(FRE 402, 403, 702) because Dr. Anthony’s analysis is
`
`incomplete and does not address the objective evidence of
`
`nonobviousness known to Apple or the parties’ prior
`
`-2-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Evidence
`Objections
`
`agreement on claim construction. This objection applies to
`
`the entirety of Dr. Anthony’s
`
`testimony
`
`regarding
`
`invalidity.
`
`
`
`Masimo further objects to Dr. Anthony’s declaration as not
`
`the product of an appropriate analysis, and unhelpful to the
`
`factfinder (FRE 702) because it merely copies arguments
`
`verbatim or nearly verbatim from the Petition without
`
`further analysis. See Xerox Corp. v. Bytemark, Inc.,
`
`IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential).
`
`This objection applies at least to ¶ 25 and ¶¶ 29-104.
`
`
`
`Masimo further objects on the basis that Dr. Anthony’s
`
`declaration fails to disclose all the materials he considered
`
`in forming his opinions (FRE 702, 37 CFR § 42.65). For
`
`example, Dr. Anthony’s declaration copied from Apple’s
`
`ITC Pre-Hearing Brief, but failed to disclose that briefing
`
`in his materials considered. At least ¶ 76 of Dr. Anthony’s
`
`declaration copies arguments from Apple’s ITC Pre-
`
`-3-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Evidence
`Objections
`
`Hearing Brief nearly verbatim, including a citation to
`
`Apple’s expert report in the ITC investigation. Paragraphs
`
`25 and 29-104 of Dr. Anthony’s declaration also contains
`
`numerous statements that appear to have been copied
`
`verbatim or nearly verbatim from Apple’s ITC Pre-Hearing
`
`Brief.
`
`
`
`Masimo further objects to ¶¶ 47-48 as not based on
`
`sufficient facts or data and not the product of reliable
`
`principles and methods (FRE 702). Dr. Anthony testifies,
`
`for example, that “oxygen saturation comprises heart rate
`
`sensing at different wavelengths,” but cites no evidence to
`
`support that assertion. EX1003 ¶ 47. Dr. Anthony also
`
`testifies that “A POSITA would have reasonably expected
`
`success in adapting Iwamiya’s sensor to this purpose
`
`because wrist-worn pulse oximetry sensors, such as that
`
`described in Sarantos, were well-known in the art.” Id.
`
`¶ 48. But Dr. Anthony cited no evidence to support the
`
`assertion that wrist-worn pulse oximetry sensors were well-
`
`-4-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Evidence
`Objections
`
`known in the art.
`
`
`
`Masimo further objects to ¶ 76 as not based on sufficient
`
`facts or data and not the product of reliable principles and
`
`methods (FRE 702). Dr. Anthony failed to cite or rely on
`
`any evidence for his assertions regarding motivation to
`
`combine. As explained in Masimo’s Preliminary Response,
`
`¶ 76 of Dr. Anthony’s declaration is a near verbatim copy
`
`of arguments in Apple’s ITC briefing. See Paper 11 at 51-
`
`52.
`
`
`
`Further,
`
`to
`
`the extent Dr. Anthony’s declaration
`
`incorporates or references prior objectionable paragraphs,
`
`Masimo’s objections apply with equal force to those same
`
`paragraphs as later incorporated or referenced.
`
`
`
`Reservation of Right to Move to Exclude Additional
`
`Testimony: While Masimo has attempted in good faith to
`
`identify example paragraphs to which the foregoing
`
`-5-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Evidence
`Objections
`
`objections apply, the paragraph listings are not limiting.
`
`Dr. Anthony has not yet been deposed and briefing is
`
`ongoing. It may become apparent, based on Dr. Anthony’s
`
`deposition testimony or subsequent briefing, that the
`
`foregoing objections apply to additional paragraphs of the
`
`declaration. Masimo reserves the right to move to exclude
`
`additional paragraphs based on the foregoing objections.
`
` EX1008
`
`Irrelevant (FRE 402). EX1008 is not cited or relied on for
`
`any purpose in the Petition or in the Anthony Declaration.
`
`EX1009
`
`Irrelevant (FRE 402). EX1009 is not cited or relied on for
`
`any purpose in the Petition or in the Anthony Declaration.
`
`EX1010
`
`Irrelevant (FRE 402). EX1010 is not cited or relied on for
`
`any purpose in the Petition or in the Anthony Declaration.
`
`EX1014
`
`Irrelevant (FRE 402). EX1014 is not cited or relied on for
`
`any purpose in the Petition or in the Anthony Declaration.
`
`EX1015
`
`Irrelevant (FRE 402). EX1015 is not cited or relied on for
`
`any purpose in the Petition or in the Anthony Declaration.
`
`EX1016
`
`Irrelevant (FRE 402). EX1016 is not cited or relied on for
`
`any purpose in the Petition or in the Anthony Declaration.
`
`-6-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Evidence
`Objections
`
`EX1017
`
`Irrelevant (FRE 402). EX1017 is not prior art and is not
`
`cited or relied on for any proper purpose in the Petition or
`
`in the Anthony Declaration.
`
`EX1018
`
`Irrelevant, unfairly prejudicial (FRE 402, 403). EX1018 is
`
`a final written decision from a different IPR concerning
`
`different claims of a different patent and different prior art
`
`combinations. Petitioner relied on EX1018 to suggest that
`
`the ’745 Patent claims are “nearly identical” to claims
`
`invalidated in EX1018.
`
`
`
`
`
`Dated: February 15, 2023
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`-7-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`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 PATENT OWNER’S
`
`OBJECTIONS TO EVIDENCE is being served electronically on February 15,
`
`2023, to the e-mail addresses shown below:
`
`
`W. Karl Renner
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: IPR50095-0045IP1@fr.com
`
`Dated: February 15, 2023
`
`
`
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax:877-769-7945Email:
`PTABInbound@fr.com
`
`
`
`/Daniel C. Kiang/
` Daniel C. Kiang (Reg. No. 79,631)
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`-8-
`
`
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