`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Irfan A. Lateef (Reg. No. 51,922)
`Ted M. Cannon (Reg. No. 55,036)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`
`
`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:
`AppleIPR127-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01299
`U.S. Patent 7,761,127
`
`
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`
`
`
`
`IPR2022-01299
`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.
`
`Exhibit
`
`1003
`
`Objections
`
`FRE 402: The exhibit includes testimony that is not
`
`relevant to the issues set forth in the Petition, including,
`
`without limitation, testimony related to Exhibits 1004 and
`
`1014, which are not relevant for the reasons set forth below
`
`in the objections to those exhibits. By way of example and
`
`not limitation, this objection applies to at least the
`
`-1-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`following paragraphs of the exhibit: 24-27, 39-52, 56, 59-
`
`66, 70, 72, 80, 85, 88, 91, 94-95, 98-103, 105, 109, 111,
`
`122, 131, 136-145, 148, 166, 178-180, and any other
`
`paragraph incorporating or referencing the foregoing
`
`paragraphs.
`
`FRE 602: The declarant admits that he relied on his “own
`
`knowledge.” Ex. 1003 ¶ 14. However, insufficient
`
`evidence has been introduced to establish that the declarant
`
`has sufficient personal knowledge to rely on his own
`
`knowledge to support his obviousness opinions. This
`
`deficiency infects the declarant’s entire testimony because
`
`he did not identify which portions of his analysis rely on
`
`his own knowledge.
`
`FRE 701-702: The exhibit includes opinion testimony that
`
`does not comply with the requirements of FRE 701 and
`
`702. The testimony is not lay opinion testimony under FRE
`
`701. With respect to FRE 702, the evidence does not
`
`establish that the declarant’s obviousness opinions are (1)
`
`“based on sufficient facts or data,” (2) “the product of
`
`-2-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`reliable principles and methods,” and that (3) “the expert
`
`has reliably applied the principles and methods to the facts
`
`of the case.” Deficiencies in the declarant’s analysis
`
`include, without limitation: (1) conclusory assertions,
`
`including mere repetition of arguments in the Petition or
`
`Apple’s ITC briefing, unsupported by sufficient underlying
`
`facts, data, or reasoning, (2) reliance on allegedly known
`
`facts or alleged motivations to combine without citation to
`
`contemporaneous evidence of what knowledge and
`
`motivation a POSITA would have possessed at the relevant
`
`time; (3) reliance on his “own knowledge,” without any
`
`specific indication what portions of his analysis are based
`
`on his own knowledge, explanation how he obtained such
`
`knowledge, or evidence that a POSITA would have
`
`possessed the knowledge at the relevant time; (4) failure to
`
`set forth constructions of relevant claim terms, and (5)
`
`failure to consider evidence or factors necessary to an
`
`obviousness analysis, including objective evidence of
`
`nonobviousness known to Apple before filing the Petition.
`
`-3-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`By way of example and not limitation, this objection
`
`applies to at least the following paragraphs of the exhibit:
`
`41-48, 53-54, 60-62, 74-80, 85, 90-91, 104-105, 132-134,
`
`138, 156, 170, 180-188, and any other paragraph
`
`incorporating or referencing the foregoing paragraphs.
`
`FRE 802: The exhibit includes testimony that relies on
`
`inadmissible hearsay included in cited exhibits if Apple
`
`relies on the content of the cited exhibits to prove the truth
`
`of matters allegedly asserted therein. By way of example
`
`and not limitation, this objection applies to at least the
`
`following paragraphs of the exhibit: 28, 31, 34, 89, 105,
`
`118, 132, 156, and any other paragraph incorporating or
`
`referencing the foregoing paragraphs.
`
`Objection to Testimony Relying on Inadmissible
`
`Exhibits: The exhibit includes testimony that relies on
`
`exhibits that are inadmissible for the reasons set forth in the
`
`objections below. Masimo objects to such testimony for
`
`the same reasons set forth below for the underlying
`
`exhibits.
`
`-4-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`Reservation of Right to Move to Exclude Additional
`
`Testimony: While Masimo has attempted in good faith to
`
`identify example paragraphs to which the foregoing
`
`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.
`
`1004 and 1011
`
`FRE 602: No evidence establishes that the signer of the
`
`translation certification of Exhibit 1004, Samuel Goldfarb,
`
`has personal knowledge sufficient to support his assertion
`
`that “the aforementioned documents are a true, full and
`
`accurate translation of the specified documents.”
`
`FRE 701-702: If the translation certification is offered as
`
`lay or expert opinion testimony, no evidence establishes
`
`that the requirements of FRE 701 (lay opinion testimony)
`
`or FRE 702 (expert opinion testimony) are satisfied.
`
`-5-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`FRE 802: If the signer of the translation certification relied
`
`on another person asserting that Exhibit 1004 is an accurate
`
`translation, the assertion is inadmissible hearsay. Masimo
`
`also objects to any reliance by Apple on Exhibit 1004 to
`
`prove the truth of any assertion therein that the disclosed
`
`board is effective for any thermal management function or
`
`the disclosed temperature sensor allows an accurate
`
`determination of LED wavelengths.
`
`FRE 901: Apple has not produced evidence sufficient to
`
`support a finding that Exhibit 1004 is an accurate
`
`translation, as Apple claims it is.
`
`37 C.F.R. § 42.63(b) and FRE 402: In view of at least the
`
`foregoing deficiencies, the translation certification is not an
`
`adequate “affidavit attesting to the accuracy of the
`
`translation” under 37 C.F.R. § 42.63(b). Because the filing
`
`of a § 42.63(b)-compliant affidavit with any “document in
`
`a language other than English” is mandatory, the exhibits
`
`are irrelevant under FRE 402 as a matter of law.
`
`1005
`
`FRE 802: Masimo objects, on the basis of inadmissible
`
`-6-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`hearsay, to any statement included in the exhibit that Apple
`
`relies upon to prove the truth of the matter asserted in the
`
`statement, including, without limitation:
`
` the assertion
`
`that “[a]though circuit boards
`
`possessed of a core comprising a sheet of naturally
`
`electrically nonconducting material have been
`
`widely used and have been highly effective, they
`
`lack the desirable property of being capable of
`
`quickly and effectively dissipating heat which is
`
`generated by components in the circuit when the
`
`apparatus in which they are used is operated.”
`
`Ex. 1005 at 1:35-44.
`
` Any assertion therein that the disclosed structures
`
`are effective for any thermal management function.
`
`1006
`
`FRE 802: Masimo objects, on the basis of inadmissible
`
`hearsay, to any statement included in the exhibit that Apple
`
`relies upon to prove the truth of the matter asserted in the
`
`statement, including, without limitation:
`
` the assertion that “[s]ince the principal materials
`
`-7-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`used in circuit boards are insulators, the boards have
`
`traditionally played no significant role in dissipating
`
`heat from the components that they support.”
`
`Ex. 1006 at 1:56-64.
`
` Any assertion therein that the disclosed structures
`
`are effective for any thermal management function.
`
`1007
`
`FRE 802: Masimo objects, on the basis of inadmissible
`
`hearsay, to any statement included in the exhibit that Apple
`
`relies upon to prove the truth of the matter asserted in the
`
`statement, including, without limitation, the assertion that
`
`the disclosed temperature signal and coding resistor value
`
`allow an accurate determination of LED wavelengths. See
`
`Ex. 1007 at 13:28-33.
`
`1008
`
`FRE 802: Masimo objects, on the basis of inadmissible
`
`hearsay, to any statement included in the exhibit that Apple
`
`relies upon to prove the truth of the matter asserted in the
`
`statement, including, without limitation, any assertion that
`
`the disclosed temperature sensor allows an accurate
`
`determination of LED wavelengths.
`
`-8-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`1014
`
`FRE 402: The Petition defines the scope of the issues in
`
`this IPR. The Petition does not rely on Exhibit 1014 as part
`
`of any obviousness combination. The Petition cites Exhibit
`
`1014 as purported support for Apple’s assertion that
`
`thermal cores used for heat dissipation were well known.
`
`Masimo objects to any reliance by Apple on Exhibit 1014
`
`for any other purpose, including any attempt to incorporate
`
`Exhibit 1014 into any obviousness combination, on the
`
`basis that such reliance on Exhibit 1014 is not relevant to
`
`any issue set forth in the Petition or in this IPR.
`
`FRE 802: Masimo objects, on the basis of inadmissible
`
`hearsay, to any statement included in the exhibit that Apple
`
`relies upon to prove the truth of the matter asserted in the
`
`statement, including, without limitation, any assertion that
`
`the disclosed structures are effective for any thermal
`
`management function.
`
`1016
`
`FRE 402: Exhibit 1016, which Apple filed in connection
`
`with its opposition to Masimo’s Motion to Seal, is not
`
`relevant to any substantive patentability issue set forth in
`
`-9-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`the Petition or in this IPR. Masimo objects to any reliance
`
`by Apple on Exhibit 1016 for any purpose unrelated to
`
`Masimo’s Motion to Seal and Renewed Motion to Seal.
`
`1017-1025
`
`FRE 402: Exhibits 1017-1025 are briefs and documents
`
`that were filed by the parties in the ITC Investigation
`
`related to the ’127 patent and other patents. These exhibits
`
`include arguments that are not relevant to any issue set
`
`forth in the Petition or in this IPR. Masimo objects to any
`
`reliance by Apple on these exhibits for any purpose not
`
`relevant to any issue set forth in the Petition or in this IPR.
`
`FRE 602, 701, 702, 802, and 901: Apple has not relied on
`
`these exhibits in this IPR. Masimo cannot reasonably
`
`anticipate how Apple may subsequently rely on these
`
`exhibits and object specifically to Apple’s anticipated
`
`reliance. Masimo objects to any reliance by Apple on any
`
`portion of these exhibits that is inadmissible under the
`
`Federal Rules of Evidence, including, without limitation,
`
`any testimony not supported by evidence that the witness
`
`has personal knowledge under FRE 602, lay or expert
`
`-10-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`opinions not compliant with FRE 701 or 702, any hearsay
`
`statement under FRE 802, or any evidence that has not
`
`been properly authenticated under FRE 901.
`
`
`
`Dated: February 15, 2023
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`-11-
`
`
`
`IPR2022-01299
`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 are 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: IPR50095-0046IP1@fr.com
`
`Dated: February 15, 2023
`
`57123816
`
`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
`
`
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`-1-
`
`
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