9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`APPLE INC., )
`) CASE IPR
`Petitioner, ) 2022-01291
`)
`-against- ) US Patent No.
`) 10,687,745
`MASIMO CORPORATION, )
`)
`Patent Owner.)
`______________________________)
`
`*** HIGHLY CONFIDENTIAL ***
`*** UNDER PROTECTIVE ORDER ***
`TELEPHONIC HEARING
`09/01/2023
`1:00 p.m. (EDT)
`
`BEFORE: THE HONORABLE GEORGE HOSKINS
`THE HONORABLE JOSIAH COCKS
`THE HONORABLE ROBERT POLLOCK
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`APPLE INC., )
`) CASE IPR
`Petitioner, ) 2022-01291
`)
`-against- ) US Patent No.
`) 10,687,745
`MASIMO CORPORATION, )
`)
`Patent Owner.)
`______________________________)
`
`*** HIGHLY CONFIDENTIAL ***
`*** UNDER PROTECTIVE ORDER ***
`TELEPHONIC HEARING
`09/01/2023
`1:00 p.m. (EDT)
`
`BEFORE: THE HONORABLE GEORGE HOSKINS
`THE HONORABLE JOSIAH COCKS
`THE HONORABLE ROBERT POLLOCK
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`________________________________________________
`DIGITAL EVIDENCE GROUP
`1730 M Street, NW, Suite 812
`Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 2
`
`A P P E A R A N C E S
`(Via Teleconference):
`THE PANEL:
` George Hoskins, Administrative Patent Judge
` United States Patent and Trademark Office
` PHONE: 303-297-4217
` -AND-
` Josiah Cocks, Administrative Patent Judge
` United States Patent and Trademark Office
` PHONE: 571-272-4874
` -AND-
` Robert Pollock, Administrative Patent Judge
` United States Patent and Trademark Office
` PHONE: 703-756-1105
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 3
`
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`A P P E A R A N C E S (CONT'D)
`(Via Teleconference):
`ON BEHALF OF THE PETITIONER APPLE INC.:
` Nicholas W. Stephens, Esquire
` Fish & Richardson P.C.
` 60 South 6th Street, Suite 3200
` Minneapolis, MN 55402
` PHONE: 612-766-2018
` E-MAIL: Nstephens@fr.com
`
` - AND -
`
` Kim Leung, Esquire
` Fish & Richardson P.C.
` 12860 El Camino Real Suite 400
` San Diego, CA 92130
` PHONE: 858-678-4713
` E-MAIL: Leung@fr.com
` - AND -
` Andrew B. Patrick, Esquire
` Fish & Richardson P.C.
` 1000 Maine Ave SW
` Washington, D.C. 20024
` PHONE: 202-626-7735
` E-MAIL: Patrick@fr.com
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 4
`
`A P P E A R A N C E S (CONT'D)
`(Via Teleconference):
`ON BEHALF OF PATENT OWNER MASIMO CORPORATION:
` Carol Pitzel Cruz, Esquire
` Knobbe Martens
` 925 4th Ave #2500
` Seattle, WA 98104
` PHONE: 206-405-2000
` E-MAIL: Carol.pitzel.cruz@knobbe.com
` - AND -
`
` Daniel Kiang, Esquire
` Knobbe Martens
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-760-0404
` E-MAIL: Daniel.kiang@knobbe.com
`
` - AND -
`
` Jeremiah S. Helm, Ph.D., Esquire
` Knobbe Martens
` 2040 Main Street
` Irvine, CA 92614
` PHONE: 949-760-0404
` E-MAIL:jeremiah.helm@knobbe.com
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 5
`
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` JUDGE HOSKINS: This is
` Administrative Patent Judge George Hoskins.
` And this is a phone call to discuss two cases
` concerning the same challenge patent. So the
` cases are IPR 2022-01291 and then the other
` one is 1465, and the challenged patent is the
` '745 patent.
` I'm joined today by my two panel
` colleagues for the conference. So they are
` Josiah Cocks and Robert Pollock.
` And so with that, can I get an entry
` from counsel for Petitioner, Apple, today,
` please?
` MR. STEPHENS: Yes, Your Honor.
` This is Nicholas Stephens on behalf of Apple.
` I'm here with my colleagues Kim Leung and
` Andrew Patrick.
` JUDGE HOSKINS: Thank you,
` Mr. Stephens.
` Let me ask you a few questions
` before I turn for Patent Owner's appearance.
` So the first one is: Are you
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 6
`
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` recording our telephone call today kind of
` word for word by a court reporter or any sort
` of equivalent means?
` MR. STEPHENS: No, Your Honor. We
` are not recording today's --
` JUDGE HOSKINS: That's no problem.
` I just --
` THE COURT REPORTER: Hi, sir. Your
` Honor, I am a court reporter, and I am here,
` yes.
` JUDGE HOSKINS: Okay. So, you're
` here having been hired by Masimo Corporation;
` is that correct?
` THE COURT REPORTER: That's a good
` question.
` MS. PITZEL CRUZ: Your Honor, this
` is Carol Pitzel Cruz from Knobbe Martens, and
` we did hire a court reporter for this call.
` JUDGE HOSKINS: Okay. That's no
` problem. I just like to know these things
` upfront so that people can act accordingly.
` So thank you for that.
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 7
` So let me ask one more question of
` Mr. Stephens before, then, we kind of come
` back to you, please.
` So, Mr. Stephens, we have a
` protective order in this case, and it's
` possible that some of the information that is
` subject to the protective order might get
` discussed today.
` So are you able to confirm that
` everybody participating on behalf of Apple is
` authorized to hear the information that we
` have placed under seal in this case?
` MR. STEPHENS: I can, Your Honor.
` Everyone present from Apple has signed on to
` the protective order.
` JUDGE HOSKINS: Okay. Great. Thank
` you.
` And so with that, let's go back to
` Patent Owner's counsel, please.
` MS. PITZEL CRUZ: Good afternoon,
` Your Honor. My name is Carol Pitzel Cruz
` from Knobbe Martens on behalf of Masimo
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 8
` Corporation, the Patent Owner. And with me,
` I have my colleagues Daniel Kiang and
` Jeremiah Helm, both of which are under the
` protective order.
` JUDGE HOSKINS: Okay. Great.
` So is it Ms. Pitzel Cruz then? Is
` it a double name or is it Ms. Cruz.
` MS. PITZEL CRUZ: It is a double
` name. You're correct. Thank you.
` JUDGE HOSKINS: Okay. Great.
` Are you -- you're not on my list.
` Are you part of the counsel for this case?
` MS. PITZEL CRUZ: Yes, I am, Your
` Honor.
` JUDGE HOSKINS: Okay. Then I just
` must have a bad list. Okay.
` So we're --
` MS. PITZEL CRUZ: Well, that --
` JUDGE HOSKINS: I'm sorry. What
` were you going to say?
` MS. PITZEL CRUZ: I believe I am on
` the list, but we can double-check that.
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 9
`
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`(Pause in proceedings.)
`MS. PITZEL CRUZ: We did check and I
` am listed on our papers.
`JUDGE HOSKINS: Okay. Thank you for
` that. I appreciate it.
`So we're here today to talk about
` really two things that have been requested by
` Patent Owner.
`The first is for leave to file a
` motion to strike portions of the Petitioner
` reply and evidence that was submitted with
` the rely. And then the second motion is for
` Patent Owner then to file perhaps a new
` expert declaration and new evidence with a
` Surreply. So I want to take these in kind of
` that order.
`So I want to kind of address the
` motion to strike first and then address the
` motion for new evidence.
`And the way we're going do this is,
` since it's Patent Owner who's asking for
` relief here, we're going to start with
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 10
`
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` Ms. Pitzel Cruz, and she can present her
` thoughts on why Patent Owner should be
` granted leave to file a motion to strike.
`Then we'll turn it over to
` Mr. Stephens to respond.
`And then Ms. Pitzel Cruz will be
` given a chance to reply on that issue.
`At that point, we'll just have to
` decide whether there's more discussion that
` needs to be had or whether we'll put that
` issue to bed and turn to the second issue.
` And then we do the same for the second issue
` motion to submit new evidence with the
` Surreply.
`Does anybody have any questions
` about that procedure before I turn it over to
` Ms. Pitzel Cruz to make her argument?
`MR. STEPHENS: None from Petitioner,
` Your Honor.
`JUDGE HOSKINS: Okay. Great.
`So Ms. Pitzel Cruz, if you could
` please address your request for Patent Owner
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 11
` to have leave to file the motion to strike.
` MS. PITZEL CRUZ: Yes. And thank
` you for taking the time to have this call
` today.
` I'd like to just start with a little
` bit of context to provide for our requests.
` And first, Apple filed the two
` Petitions that we're here to discuss today
` after hearing all of Masimo's validity
` arguments at the ITC hearings that occurred
` last year with regard to the same patent, the
` '745 patent, including all the testimony and
` evidence discussing and undercutting a
` reasonable expectation of success.
` Apple in this -- in these two
` Petitions made a deliberate choice not to
` address any of that ITC evidence or arguments
` because it wrongly thought it could keep that
` evidence out of the proceeding and actively
` opposed Patent Owner's request to include
` that information in this proceeding.
` Because the Petition didn't address
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 12
`
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` that ITC evidence and only provided, for
` example, a generic expectation of success
` analysis, Apple's reply was the first time
` that Apple actually provided notice of their
` positions and evidence allegedly supporting
` its position on an issue that Apple bears the
` burden of proof reasonable expectation of
` success.
` But Apple did so improperly by
` incorporating dozens of pages of evidence,
` new exhibits, and an analysis from its expert
` declaration into its reply. It's -- Apple's
` decision to include this information for the
` first time on reply deprives Masimo of
` sufficient notice and a full opportunity to
` respond to this new information.
` The reply from Apple introduced
` around 35 new substantive exhibits and nearly
` 100 pages of expert declarations.
` In this situation, it is necessary
` to have a motion to strike to address issues
` such as the improper incorporation by
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 13
` reference, as well as the inclusion of just a
` large amount of new substantive exhibits and
` opinions.
` So if I could seek the Court's
` indulgence just to go into one example of
` what I'm talking about.
` One of the reasonable expectations
` of success positions Apple took in its
` Petition relied on the assertion that
` wrist-worn pulse oximetry sensors, such as
` those described in one of the references,
` Sarantos, were well known in the arts.
` But beyond citing that one
` reference, Sarantos, they cited nothing
` supporting this well-known assertion.
` This is despite knowing that in the
` ITC there was significant briefing,
` testimony, evidence about this issue, about
` whether or not pulse oximetry was well known
` in the art and whether there would have been
` a reasonable expectation of success of
` measuring pulse ox at the wrist.
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 14
` So after the board granted Masimo's
` discovery motion here, to allow us to submit
` information from the ITC, Apple did submit
` several exhibits as supplemental information,
` and they did not include anything else with
` the additional information other than
` information from the ITC.
` Our expert -- Masimo's expert
` addressed the supplemental information in his
` Declaration that he submitted with the Patent
` Owner response. And after receiving the
` Declaration and Masimo's Response, Apple made
` the choice not to substantively address that
` supplemental information from the ITC in its
` Reply.
` And instead, they submitted 14 new
` exhibits as allegedly supporting a reasonable
` expectation of success. They admit in their
` papers that these references were included
` for the first time by reply and were not
` involved in the ITC proceeding. But Masimo
` did not have any notice of these prior to the
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 15
`
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` reply.
` They also criticized Masimo's expert
` for not analyzing these never-before cited
` exhibits, but he couldn't have been aware of
` them because they weren't part of the record
` either at the ITC or here.
` And so all of this new information
` we believe should be stricken.
` There's also numerous other
` examples, but I felt like this was a good
` example to provide the board with context,
` and so we believe that an additional -- a
` motion to strike is necessary.
` JUDGE HOSKINS: So why can't you
` make all of these arguments in your Surreply?
` MS. PITZEL CRUZ: Part of that goes
` into the second request with respect to the
` expert declaration.
` JUDGE HOSKINS: So is it a page
` number -- basically is it a page limit
` consideration, or is there something more?
` MS. PITZEL CRUZ: I think there's
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 16
`
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` several issues.
` On the motion to strike, there is a
` page limit issue is one. The second issue is
` the lack of our ability to respond to all
` this new evidence with expert testimony.
` And the third issue is that there
` are many -- just with respect to many of
` these issues, like the improper incorporation
` by reference, we feel that that would be
` helpful to have in a motion to strike so that
` we can lay that out with proper clarity for
` the board to understand all of those issues
` and also to be able to understand more fully
` all of the other evidence that was new and --
` and improperly included in the reply.
` JUDGE HOSKINS: Okay. Thank you for
` that, Ms. Pitzel Cruz.
` So then, Mr. Stephens, what do you
` have to say on the motion to strike, please?
` MR. STEPHENS: Thank you, Your
` Honor.
` I first would like to say that we
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 17
` took seriously the allegations that were made
` by Masimo as the basis for its request for
` special relief here. They provided to us
` over the weekend -- last weekend -- a very
` lengthy e-mail addressing arguments and
` exhibits that spanned nearly every section
` every argument in the Reply, attempting to
` claim that just about every exhibit and every
` argument that was made in the Reply was
` improperly raised for the first time in the
` Reply.
` And we spent this week looking at
` each of the objections in the e-mail, and we
` found that they were, you know, in our view,
` baseless.
` As far as we can tell and has
` counsel has just articulated, the core theory
` that seems to animate their request is that a
` Petitioner should have speculated as to what
` the Patent Owner's argument might be and the
` Patent Owner's response, can somehow
` preemptively address those arguments in the
`
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 18
`
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`
` Petition.
` That would flip the normal course of
` events in an IPR on its head. And when we
` asked Masimo if they had any authority
` suggesting merit to their position during
` meet and confer just yesterday, they offered
` none other than they referenced their POPR.
` So we went back to look at their
` POPR. In fact, we saw no cases or authority
` cited for this notion whatsoever, at least
` with respect to the reasonable expectation of
` success issues.
` Beyond that, counsel for Patent
` Owner identified as an example the reasonable
` expectation of success issue; and as
` addressed in our Reply, the points raised in
` Masimo's POR regarding reasonable expectation
` of success are legally irrelevant, at least
` insofar as they don't address the person of
` skills perspective on the prior art.
` We expressed that, explained that in
` the Replies, and given that, Apple should
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 19
`
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`
` have been under no duty to address
` allegations regarding those theories that
` Masimo had raised at a co-pending proceeding.
` Masimo complains about the number of
` exhibits. They themselves submitted 25 new
` exhibits, much of what was produced to Masimo
` for the first time after institution from the
` ITC. And they submitted much of that
` evidence into the record with its PORs.
` And they raised a number of points
` as to why in Masimo's view a person of skill
` in the art would not have expected reasonable
` expectation of success.
` Basically we have to go through in
` our reply and address each of the points that
` were raised in the Patent Owner's Response.
` And in each case, we did submit exhibits that
` showed state-of-the-art and further
` elaborated of what was our original theory in
` the Petition.
` But all of the arguments and
` evidence were responsive to points raised in
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 20
` the POR -- excuse me -- raised in the POR and
` were not advancing any new theories or
` narratives that weren't first raised in the
` Petition where the prior art itself,
` Sarantos, demonstrated that a person of skill
` in the art would have a reasonable
` expectation of success as disclosed in
` Sarantos.
` So I think where that leaves us is
` we see no legitimate basis for Masimo's
` requested motion. We think to the extent
` there are concerns, as Your Honor has noted,
` that it can -- they have every opportunity to
` express them in the Surreply.
` There's other mechanisms as well.
` Like, if objected to evidence, we understand
` that Masimo may submit a motion to exclude.
` And given the -- given where we are
` at this proceeding with Masimo's Surreply due
` in a month and the hearing less than a month
` after that, we think that the additional
` extraordinary relief that Masimo is
`
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`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 21
`
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`
` requesting would unnecessarily complicate
` this proceeding and as -- in a way that's not
` justified.
` JUDGE HOSKINS: Okay. Thank you,
` Mr. STEPHENS.
` And so then we'll go back to
` Ms. Pitzel Cruz, please.
` MS. PITZEL CRUZ: Thank you.
` With respect to this idea that the
` information Apple was responding to or were
` saying they should have responded to, it's
` speculative, I -- that's contrary to our
` belief of the record.
` And this is an issue, reasonable
` expectation of success, that Apple bears the
` burden of proof on. They were fully aware of
` all the information in the ITC and filed
` these shortly after briefing had completed in
` the ITC. So they were fully aware of the
` arguments.
` And the idea that this information
` that was submitted is not relevant because it
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 22
` was not a person of skill in the art, I also
` take issue with.
` This information was from Apple's
` skilled engineers and people knowledgeable
` about pulse oximetry, and they were
` expressing contrary positions to Apple's
` stated arguments in the Petition that pulse
` oximetry at the wrist was known.
` So this was information that was
` highly material to their position, and they
` knew that we had already argued this. I
` don't think it's speculative, and I think it
` was highly relevant and incumbent upon Apple
` to include that information in their
` Petition.
` We -- I also would like to point out
` that, you know, we had to submit those new
` exhibits because Apple opposed our including
` that information.
` If Apple had dealt with those --
` that same information, it would have been
` included in their Petition, and there
`
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`22
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 23
`
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`
` wouldn't have been a need for us to bring
` those items into the record.
` Also, we're still digesting
` everything in the Patent Owner Reply, but it
` appears that most of these new exhibits are
` not specific to Sarantos. And so we just
` wanted to note that as well.
` With respect to the Reply and the --
` Apple's counsel's discussion of their review
` of our complaints about the Reply, I would
` also like to note that there are numerous new
` combinations that were included in the Reply,
` that there's information based on all of
` these new exhibits.
` It's not the case where this is just
` information directly responding to something
` that we had raised in our Patent Owner
` Response.
` JUDGE HOSKINS: So I've reviewed the
` Reply, and I didn't see anything in there
` about a new combination. So can you help me
` understand one of these examples that you're
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 24
`
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`
` talking about?
` MS. PITZEL CRUZ: Sure. If you
` could just give me a minute.
` So in one -- this is just one
` example, but in the Declaration and in the
` Reply in the original combination of Sarantos
` and Shie, there was no specific optical
` elements pointed to, and now there are four
` specific ones pointed to as combinations.
` There was also --
` JUDGE HOSKINS: They are all coming
` from Shie, though, aren't they?
` MS. PITZEL CRUZ: For that
` particular example.
` JUDGE HOSKINS: So it's the same
` combination. It's still Shie. They're just
` responding to the arguments that you raised
` in the Patent Owner Response complaining
` about that they weren't specific enough in
` their combination, I think.
` MS. PITZEL CRUZ: Well, with respect
` to the Sarantos and Shie example, they also
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 25
`
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`22
`
` now combine Figures 22 and Figures 25 for
` Limitation 15.4. That is not the same
` combination that they relied on in the
` Petition. And so that is just another
` example.
` What you cannot do, in our opinion,
` is to point to different embodiments from the
` petition even if in the same reference on
` Reply as a new combination that supports the
` invalidity position.
` JUDGE HOSKINS: Thank you for
` anticipating my question.
` MS. PITZEL CRUZ: The -- sorry.
` JUDGE HOSKINS: No, I was just
` saying thank you for answering my question,
` and so I interrupted you and I think you were
` going to say something else. So please feel
` free to kind of go back to what you were
` talking about.
` MS. PITZEL CRUZ: I'm sorry. I was
` just ending the point and just saying that
` that is a new theory.
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 26
`
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`
` JUDGE HOSKINS: Okay.
` Mr. Stephens, do you have anything
` to add after hearing that?
` MR. STEPHENS: Thank you, Your
` Honor. Just a few points.
` Counsel, again, put it on Apple to
` address arguments that, you know, Apple was
` allegedly aware had been made in the ITC in
` the Petition. I note just as in our meet and
` confer yesterday in response to questions
` counsel provided no authority for the notion
` that a petitioner must address every
` accusation, every argument, every allegation
` that's been made in a co-pending proceeding
` in the Petition.
` And I think the board correctly
` determined in the institution decision that
` looking at Sarantos with respect to the
` reasonable expectation of success issue, it
` expressly teaches measuring oxygen saturation
` at the wrist.
` And we made the assertion that a
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 27
`
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`
` POSITA would understand that -- a POSITA
` would have a reasonable expectation and
` Sarantos' disclosure exemplified the
` state-of-the-art.
` Of course that was contested in the
` Patent Owner's Response. And we submitted
` multiple exhibits that demonstrated the same
` point that we had made in the Petition; which
` was, yes, measuring oxygen saturation at the
` wrist was known and a POSITA would have had a
` reasonable expectation of success at the
` time.
` So we don't think that there is
` anything new or surprising there that Patent
` Owner would need to strike arguments and
` exhibits from the Reply with respect to that
` issue or any other or that they should --
` which I know we'll get to in a moment -- that
` there is a need for additional evidence to be
` submitted with the Surreply.
` I also wanted to just note as to the
` notion that Apple -- that Masimo is somehow
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2096
`Apple v. Masimo
`IPR2022-01291
`
`
`
`9/1/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Under Protective Order
`
`Telephonic Hearing
`
`Page 28
` prejudiced by Apple not having submitted all
` of the exhibits that we cite in the Reply by
` supplemental information before the Patent
` Owner's Response, I think as Your Honors were
` aware, this was a point of dispute between
` the parties along with the discovery process
` between the period of institution and the
` Patent Owner's Response.
` And we identified to Masimo
` references beyond those which had been relied
` upon in the ITC that further supported --
` that would further evidence a person of skill
` would have had reasonable expectation of
` success in performing oxygen saturation
` measurements at the wrist.
` And Masimo fought us every step of
` the way, said it was improper for us to bring
` any new evidence that was not in the
` Petition. But they didn't want it in then,
` and now they are arguing that there are
` precedents for us not having brou
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