Filed: November 13, 2023
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE
`
`
`
`
`
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE
`
`
`
`
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`I.
`EX1009, EX1010, and EX1014-EX1016 Are Irrelevant
`EX1009, EX1010, and EX1014-EX1016 are irrelevant because Apple did not
`
`identify any issue for which Anthony analyzed or relied on them. FRE 401, 402.
`
`II. EX1039 and EX1041 Were Not Authenticated
`Apple’s Opposition admits that Apple did not previously provide information
`
`regarding the source and content of EX1039 and EX1041 sufficient to authenticate
`
`them. Apple now argues that information allegedly provided by Dr. Warren can be
`
`found in the ITC Initial Determination and Apple’s own ITC brief to explain these
`
`exhibits. Opp’n, 2. But Apple did not raise this information in response to Masimo’s
`
`objections. Instead, Apple waited until after all substantive papers were submitted.
`
`And Warren is not a witness in this proceeding and did not authenticate the source
`
`and content of EX1039 and EX1041. Thus, the Board should exclude the exhibits
`
`for lack of authenticity.
`
`Apple’s allegations that these exhibits are “evidence that Dr. Warren
`
`experimented with measuring pulse oximetry on the wrist with his students at Kansas
`
`State University in 2002” (Id. citing EX1033, 114) are untimely, improper, and
`
`importantly, do not tell the whole story. Apple submitted EX1039 and EX1041 in
`
`the ITC in response to Masimo’s evidence that a POSITA would not have expected
`
`to successfully measure blood oxygen in a wristwatch. EX1033 at 115-117. After
`
`hearing Warren’s live testimony and reviewing Apple’s exhibits and briefing, the
`
`- 1 -
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`
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`ALJ found Warren “provided no testimony regarding the results of those
`
`measurements [at the wrist].” Id. at 117. The ALJ also found that EX1039 (RX-
`
`0504) “does not identify measurements of oxygen saturation at the wrist.” Id. If
`
`Apple wishes the Board to consider these exhibits “for the sake of completeness,”
`
`(Opp’n at 4), then it should also consider the ALJ’s findings regarding these exhibits.
`
`Apple also argues EX1039 and EX1041 are admissible under FRE 703 as
`
`information Anthony relied upon and to “corroborate his assessment regarding the
`
`state of the art.” Opp’n, 4. But Anthony did not analyze EX1039 and EX1041 at
`
`all. EX1042, ¶33 n.5. The Board should reject Apple’s belated attempt to
`
`supplement the record. Because Anthony did not analyze these exhibits, they should
`
`be disregarded as irrelevant or afforded little to no weight. FRE 401, 402.
`
`III. EX1056 and Paragraph 31 of EX1042 Should Be Excluded
`Apple incorrectly argued, without legal authority, that it had no burden to
`
`prove EX1056’s public accessibility. Apple represented that EX1056 is a “prior art
`
`reference[]” and is “relevant to informing the state of the art of pulse oximetry.”
`
`1291 Reply, 16, Opp’n, 5. As the proponent of EX1056, Apple bore the burden to
`
`prove that it is what Apple said it is. FRE 901. Apple did not.
`
`No record evidence supports Apple’s and Anthony’s claim that WPI
`
`published EX1056 in April 2013. Instead, Apple improperly directs the Board to a
`
`webpage URL in its Reply that allegedly “evidences that APPLE-1056 was
`
`- 2 -
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`
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`published on April 24, 2013.” Opp’n, 6. But that webpage is not in evidence, was
`
`not served as supplemental evidence, and thus cannot be considered. 37 C.F.R.
`
`§ 42.64(b)(2). Even if the Board were to consider the webpage, the Board should
`
`also evaluate
`
`the additional “File Details” on
`
`that page for
`
`the file
`
`“Final_MQP_Report.pdf”
`
`(https://digital.wpi.edu/concern/parent/6969z2326/
`
`file_sets/70795903r). FRE 106. The “File Details” indicate “Date Uploaded: 2020-
`
`01-15” and “Date Modified: 2020-01-15.” Thus, Apple’s citation to the webpage
`
`does not clarify the date EX1056 was allegedly available.
`
`Apple also alleges that EX1056 and paragraph 31 of EX1042 are admissible
`
`under FRE 401-402 as relevant to the state of the art. But EX1056 is undated and
`
`Apple does not dispute that it is unsigned and not peer-reviewed. Apple offers no
`
`evidence of the reliability of EX1056. Apple has not established EX1056 as prior
`
`art (see Paper 56, 7-8). Thus, EX1056 and EX1042, ¶31 do not have “any tendency
`
`to make a fact more or less probable than it would be without the evidence” and
`
`therefore should be excluded as irrelevant. FRE 401, 402.
`
`Apple argues that EX1056 is admissible because Anthony stated it is
`
`something an “expert would rely upon” and “can be disclosed to the factfinder as
`
`long as the probative value of the evidence substantially outweighs its prejudicial
`
`effect.” Opp’n, 7. Because Apple failed to demonstrate that EX1056 is prior art or
`
`an authentic document with the hallmarks of reliability, it is irrelevant and without
`
`- 3 -
`
`
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`probative value. Apple asserts the objection goes “at most, to the weight of the
`
`evidence.” Opp’n, 7 (citing Hamilton Techs. & Whittington). But unlike those
`
`cases, there is no evidence that EX1056 was ever available during the relevant time,
`
`or, indeed, even an authentic copy of any document available before 2020. Nor did
`
`Apple establish that an expert can reasonably rely on undated, unauthenticated
`
`documents to assess the state of the art. Wi-LAN Inc. v. Sharp Elecs. Corp., 992 F.3d
`
`1366, 1373-74 (Fed. Cir. 2021) (affirming exclusion of unauthenticated source code
`
`and expert opinions relying on such code because proffering party did not establish
`
`experts reasonably rely on unauthenticated code).
`
`Masimo also moved to exclude EX1042, ¶31 for lack of foundation. Mot., 4-
`
`6. Apple’s Opposition did not respond to that objection. Opp’n 5-8. Apple thus
`
`conceded the testimony lacks foundation and should be excluded.
`
`IV. Paragraphs 27, 31, and 33-34, 40-50, and 61-64 of EX1042 and EX1054,
`EX1058, EX1063-1066 Should Be Excluded
`Apple’s Reply does not cite any specific portion of EX1054, EX1058,
`
`EX1063-EX1066 or explain their relevance. 1291 Reply, 15-17. Instead, the Reply
`
`states “Anthony reviewed these references,” and that Anthony “explained how they
`
`further demonstrate” reasonable expectation of success. See id. (relying exclusively
`
`on EX1042, ¶¶27, 31, 33-34). Apple suggests that Anthony’s declaration is
`
`“supporting the arguments made in the Petitioner’s Reply, not stand-alone
`
`arguments.” Opp’n, 8. But Anthony’s declaration is the only place where these
`
`- 4 -
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`
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`arguments are found. The Board’s rules prohibit such incorporation by reference.
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9 (Aug. 29,
`
`2014) (informative) (“This conclusory paragraph is followed by a footnote, citing
`
`to ¶¶271-273 of Dr. Roy’s Declaration…. This practice … also amounts to
`
`incorporation by reference.”) (emphasis added).
`
`Likewise, Apple’s Reply refers to “portions of the engineers’ ITC testimony
`
`not cited in the POR,” but only includes a six-line string cite to testimony. Reply,
`
`22-23. The Reply directs the reader to Anthony’s declaration for “detail,” but the
`
`actual argument regarding this evidence is contained exclusively in Anthony’s
`
`declaration. Once again, this is improper incorporation.
`
`Apple asserts the Petition identified “multiple reasons” to combine Sarantos
`
`and Shie. Opp’n, 14. But Apple does not dispute that the arguments and exhibits
`
`presented in paragraphs 61-64 of EX1042 were not made in the Reply. Anthony’s
`
`declaration thus impermissibly includes standalone arguments and evidence.
`
`Finally, Apple argues Masimo’s leave to file an expert declaration cures any
`
`prejudice caused by its incorporation by reference. The opportunity to respond to
`
`Apple’s sandbagging does not cure the prejudice stemming from confusion as to
`
`what arguments Apple is embracing. The Board’s rules were intended to prevent
`
`exactly this type of abuse. Parus Holdings Inc. v. Google LLC, 70 F.4th 1365, 1372
`
`(Fed. Cir. 2023).
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`- 5 -
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`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Daniel C. Kiang/
`Daniel Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`Dated: November 13, 2023
`
`
`
`
`
`- 6 -
`
`
`
`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 REPLY
`
`IN SUPPORT OF ITS MOTION TO EXCLUDE is being served electronically
`
`on November 13, 2023, to the e-mail addresses shown below:
`
`
`
`W. Karl Renner, Reg. No. 41,265
`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: November 13, 2023
`
`56865131
`
`Nicholas Stephens
`Andrew B. Patrick
`Kim Leung
`Patrick J. Bisenius
`Patrick J. King
`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
`
`
`
`/Daniel C. Kiang/
`Daniel Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`- 7 -
`
`
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