`
`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: September 8, 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
`SERVED AUGUST 31, 2023
`
`
`
`
`
`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 with its Reply on
`
`August 31, 2023. 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
`
`Objections
`
`1050-1054
`
`FRE 402: The Petition defines the scope of the issues in
`
`this IPR. Masimo objects to these exhibits because they are
`
`not relevant to the unpatentability theories set forth in the
`
`Petition. Masimo further objects to Apple’s reliance on
`
`these exhibits to substitute alleged teachings of these
`
`exhibits for the alleged teachings of the references upon
`
`-1-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`which Apple relied in the Petition. Masimo also objects to
`
`Apple’s reliance on these exhibits to support any argument
`
`or factual assertion beyond those for which Apple cited
`
`these exhibits in the Reply.
`
`FRE 802: Masimo objects, on the basis of inadmissible
`
`hearsay, to any statement included in the exhibits that
`
`Apple relies upon to prove the truth of the matter asserted
`
`in the statement.
`
`1055
`
`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 1050-
`
`1054. The exhibit also includes testimony that is not
`
`relevant to the arguments and factual assertions set forth in
`
`the Reply. By way of example and not limitation, this
`
`objection applies to at least paragraphs 32-52 of the exhibit,
`
`any other paragraph incorporating or referencing the
`
`foregoing paragraphs, and any other paragraph citing or
`
`referencing any of Exhibits 1050-1054.
`
`FRE 602: The declarant admits that he relied on his “own
`
`-2-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`knowledge.” Ex. 1055 ¶ 3; see also 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
`
`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
`
`unsupported by sufficient underlying facts, data, or
`
`reasoning, (2) reliance on allegedly known facts or alleged
`
`-3-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`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; and (4)
`
`failure to consider evidence or factors necessary to an
`
`obviousness analysis.
`
`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.
`
`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
`
`-4-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`exhibits.
`
`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 with respect to his
`
`supplemental declaration. It may become apparent, based
`
`on Dr. Anthony’s deposition testimony, 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.
`
`1056 and 1057
`
`These exhibits are deposition transcripts.
`
` Masimo
`
`maintains the objections it made during the depositions.
`
`See 37 C.F.R. § 42.64(a).
`
`1058 and 1059
`
`FRE 402: Masimo objects to these exhibits as irrelevant to
`
`the meaning of “bulk temperature,” as used in the ’127
`
`patent, at least because (1) a POSITA would understand the
`
`meaning of “bulk temperature” from its usage in the
`
`specification, without reference to extrinsic evidence and
`
`-5-
`
`
`
`IPR2022-01299
`Apple Inc. v. Masimo Corporation
`Exhibit
`
`Objections
`
`(2) the general-purpose dictionaries do not define “bulk” in
`
`the particular context of the ’127 patent or even in the
`
`general field of the ’127 patent.
`
`
`
`Dated: September 8, 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
`
`
`
`
`-6-
`
`
`
`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 SERVED AUGUST 31, 2023 is being served
`
`electronically on September 8, 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: September 8, 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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