9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
` APPLE, INC.,
` )
` Petitioner, )
` v. ) Case No.
` MASIMO CORPORATION,) IPR2022-01299
` Patent Owner. )
`____________________)
`
` HIGHLY CONFIDENTIAL
` PURSUANT TO PROTECTIVE ORDER
`
` TELEPHONIC HEARING
` Thursday, September 14, 2023
` 2:00 p.m. EDT
`
` Reported by Lisa A. Knight, RDR, CRR, RSA
`________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
` APPLE, INC.,
` )
` Petitioner, )
` v. ) Case No.
` MASIMO CORPORATION,) IPR2022-01299
` Patent Owner. )
`____________________)
`
` HIGHLY CONFIDENTIAL
` PURSUANT TO PROTECTIVE ORDER
`
` TELEPHONIC HEARING
` Thursday, September 14, 2023
` 2:00 p.m. EDT
`
` Reported by Lisa A. Knight, RDR, CRR, RSA
`________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
`(202) 232-0646
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 2
`
` A P P E A R A N C E S
` (All appearing telephonically)
`
`THE PANEL:
` ROBERT POLLOCK, Administrative Patent Judge
` United States Patent and Trademark Office
` 703.756.1105
` -and-
` JOSIAH COCKS, Administrative Patent Judge
` United States Patent and Trademark Office
` 571.272.4874
`
`COUNSEL FOR THE PETITIONER
` FISH & RICHARDSON
` BY: NICHOLAS W. STEPHENS, ESQUIRE
` nstephens@fr.com
` 60 South 6th Street
` Suite 3200
` Minneapolis, Minnesota 55402
` 612.766.2018
` -and-
` BY: ANDREW B. PATRICK, ESQUIRE
` patrick@fr.com
` 1000 Maine Avenue SW
` Washington, District of Columbia 20024
` 202.626.7735
`
`1
`2
`
`34
`
`5
`
`6
`7
`
`8
`9
`10
`11
`
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
` A P P E A R A N C E S CON'T
`
`Page 3
`
`COUNSEL FOR THE PATENT OWNER
` KNOBBE MARTENS
` BY: TED M. CANNON, ESQUIRE
` ted.cannon@knobbe.com
` 2040 Main Street
` 14th Floor
` Irvine, California 92614
` 949.760.0404
`
`1
`
`2 3
`
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`19
`20
`21
`22
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 4
`
`1
`2
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`
` PROCEEDINGS
` (September 14, 2023, at 2:00 p.m. EDT)
` JUDGE POLLACK: Good afternoon.
` This is Judge Pollack. I'm here with
` Judge Cocks. This calls for IPR
` 2022-01299.
` Who is on the call for
` Petitioner Apple?
` MR. STEPHENS: Good afternoon,
` Your Honors. This is Nick Stephens on
` the call for Petitioner Apple. I'm
` here with my colleague Andrew Patrick,
` who is also backup counsel on this
` proceeding.
` JUDGE POLLACK: Good afternoon.
` Who do we have on the call for
` Patent Owner Masimo?
` MR. CANNON: Good afternoon,
` Your Honors. This is Ted Cannon of
` Knobbe Martens for Patent Owner
` Masimo.
` JUDGE POLLACK: Is the court
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 5
`
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`
` reporter present?
` THE STENOGRAPHER: Yes, sir,
` I am. This is Lisa Knight. I'm the
` stenographer.
` JUDGE POLLACK: Very good.
` As a record of this call, the
` Patent Owner shall timely file the
` transcript as an exhibit.
` MR. CANNON: Yes, sir. We will
` file the transcript.
` JUDGE POLLACK: Great.
` Patent Owner has requested this
` call seeking a motion to strike
` allegedly new evidence set forth in
` Petitioner's Reply, specifically those
` paragraphs extending from the bottom
` of page 16 to the middle of page 18,
` as well as Exhibits 1050 to 1054, and
` paragraphs 32 to 52 of Dr. Anthony's
` supplemental declaration,
` Exhibit 1055, all of which are cited
` within that section.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 6
`
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`22
`
` Patent Owner further seeks
` authorization to submit a responsive
` surreply expert declaration, which
` I presume it would discuss in the
` surreply due October 11th.
` Mr. Cannon, my initial reading
` of the objected-to portions of the
` reply suggests that it fairly responds
` to positions Dr. King took in his
` declaration and that were
` substantively probed during his
` cross-examination.
` Would you please explain to the
` Panel why relief is warranted.
` MR. CANNON: Yes, Your Honors.
` The Consolidated Trial Practice
` Guide gives the key as to whether
` something is responsive or whether it
` is improper new argument.
` And the key that the guide
` provides is that Petitioner may not
` submit new evidence or argument in
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 7
`
`1
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`
` reply that it could have presented
` earlier, e.g., to make out a prima
` facie case of unpatentability.
` The guide further says examples
` of indications that a new issue has
` been raised in a reply include new
` evidence necessary to make out a prima
` facie case of unpatentability.
` So that's really the issue, is:
` Was the new evidence necessary to make
` out a prima facie case of
` unpatentability?
` And, in our view, introducing
` in the reply new evidence necessary to
` make out a prima facie case of
` unpatentability is exactly what Apple
` attempts to do in this case.
` With respect to the
` '127 patent, a prima facie case of
` unpatentability requires proof that
` the prior art discloses or makes
` obvious using a temperature sensor to
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 8
`
`1
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`
` measure a bulk temperature of a
` thermal mass and using the measured
` bulk temperature to estimate LED
` operating wavelengths.
` To make out such a prima facie,
` Apple's petition needed to introduce
` both evidence that the prior art
` discloses the thermal mass and
` temperature limitations and evidence
` of a motivation to combine. Masimo
` showed in its Patent Owner response
` that the petition lacks both types of
` evidence.
` Apple's reply is an attempt to
` try to plug the holes in the petition
` by introducing five new references:
` Oldham, Muthu, Dry, Mann, and
` Littleton. And Apple alleges that the
` new references disclose a temperature
` measured from a thermal mass to
` facilitate temperature or wavelength
` estimation of multiple LEDs.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 9
`
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`
` That's an allegation that could
` have been made in the petition but was
` not. And because that allegation is a
` necessary part of its prima facie
` case, Apple needed to introduce the
` new references in the petition, not
` for the first time on reply. There's
` no doubt that Apple could have
` introduced those references in the
` petition.
` The issue about Dr. King
` raising this and pointing out the
` deficiencies does not make Apple's
` attempt to plug the holes into a
` proper response because, as the guide
` points out, the distinction between a
` proper and improper response is
` whether Apple could have introduced it
` in the petition and whether it was a
` necessary part of their prima facie
` case.
` Apple chose to rely on
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 10
`
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`
` different references. They relied on,
` for example, Chadwick to disclose heat
` syncs for cooling electronic
` components. And they rely on, for
` example, Yamata, Chung, and Naguchi as
` disclosing a temperature sensor but
` not measuring the bulk temperature of
` any thermal mass for estimating LED
` operating wavelengths.
` And finally Apple relied on
` expert testimony to allege a
` motivation to combine, but did not
` rely on any of the new references.
` Apple's attempt to plug holes
` in the petition is not properly
` responsive. Masimo simply pointed out
` the holes in the petition; mainly,
` that the petition lacks evidence of
` any prior art teaching of or
` motivation for using the temperature
` sensor to measure a bulk temperature
` of a thermal mass for estimating LED
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 11
`
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`
` operating wavelengths.
` Masimo's pointing out of these
` holes in the petition does not open
` the door for Apple to attempt to plug
` those holes by introducing new
` references in the reply.
` If it were otherwise,
` petitioners could always strategically
` withhold references from the petition
` and then belatedly submit the
` references when the patent owner
` inevitably pointed out the
` deficiencies in those references.
` The Consolidated Trial Practice
` Guide wisely prohibits that tactic by
` barring petitioners from submitting in
` the reply new evidence necessary to
` make out a prima facie case of
` unpatentability.
` And for those reasons, Masimo
` requests authorizations to file a
` motion to strike. And in the motion,
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 12
`
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`
` Masimo will further demonstrate that
` Apple's reply improperly introduces
` new evidence.
` Do you have any questions,
` Your Honors?
` JUDGE POLLACK: Not before I've
` heard from Mr. Stephens.
` Mr. Stephens?
` MR. STEPHENS: Yes. Thank you,
` Your Honor.
` I'll first address the motion
` to strike. And with respect to
` Masimo's requested authorization
` there, Apple opposes the requested
` authorization because the implicated
` arguments and evidence from the reply
` falls squarely within the bounds of a
` proper reply to Masimo's Patent
` Owner's response.
` And I think that's clear from a
` recent case that was just issued --
` that was released by the Federal
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 13
`
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`
` Circuit just about a month ago,
` Rembrandt Diagnostics v. Alere Inc.
` That's Case No. 2021-1796 released on
` August 11th. Just last month.
` And in Rembrandt, the Federal
` Circuit explained that the very nature
` of the reply and surreply briefs are
` to respond; that is, to refute, rebut,
` explain, discredit, and so on prior
` raised arguments.
` And that's exactly what the
` paragraphs from the reply and the
` evidence, the exhibits that Masimo
` seeks to strike, do here.
` Specifically the material that
` Masimo seeks to strike is responsive
` to at least two aspects of the Patent
` Owner's response.
` First, the evidence is
` responsive to assertions from Masimo
` and its expert, Dr. King, that the use
` of a bulk temperature from a thermal
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 14
`
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`
` mass was, quote, counterintuitive and
` therefore not among several known and
` obvious alternative solutions for
` estimating LED temperatures in
` wavelengths.
` And, second, the evidence is
` responsive to assertions from Masimo
` that secondary considerations evidence
` has a nexus to the claimed invention.
` And this is because the
` demonstration of the nexus in fact
` requires a showing that the alleged
` secondary consideration is the direct
` result of unique characteristics of
` the claimed invention.
` So the reply evidence further
` refutes the notion that there were
` unique characteristics that existed
` for the demonstration of nexus in the
` claims of the '127 patent.
` I'd like to just touch on the
` first point with respect to
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 15
`
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`22
`
` responsiveness to Masimo's challenging
` of the petition for motivation to
` combine.
` And I would note that the
` petition, for example, at page 16,
` provided a motivation to combine the
` teachings of Yamata and Chadwick to
` integrate a thermal core into Yamata's
` substrate for the purpose of measuring
` a temperature indicative of
` temperatures of the LEDs.
` We further explained in the
` petition and in Dr. Anthony's first
` declaration that a POSITA will seek to
` use the estimated LED temperature to
` compensate for the effect of
` temperature-induced wavelength
` fluctuations.
` So this is all highlighted on
` page 12 of the reply, for example.
` And the evidence is -- the evidence
` and argument in the reply that Masimo
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 16
`
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`
` now seeks to strike is, I think,
` consistent with the motivations and
` the arguments that were set forth
` originally in the petition and
` responsive to the assertions that
` Masimo made in its Patent Owner's
` response.
` Just for a flavor of that,
` Your Honors, I would point to, for
` example, paragraph 177 of Dr. King's
` declaration. That's Exhibit 2151.
` And this kind of begins the
` discussion of his point of view that a
` POSITA would not have motivation to
` combine in the way that we explained
` in the petition because he
` characterized kind of the universe of
` prior art and whether it encompasses
` several alternative solutions for
` estimating LED temperatures and
` wavelengths.
` And he said that Dr. King
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 17
`
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`
` explains that the use of a bulk
` temperature, as we would obtain from
` Yamata and Chadwick, would be
` unexpected and not obvious.
` Dr. Anthony had already
` explained that was not the case based
` on the teachings of the prior art,
` including Chung and Naguchi, in his
` first declaration submitted with the
` petition. But the additional exhibits
` that we submitted certainly further
` reinforced that fact and respond to
` the arguments that Masimo made in the
` Patent Owner's response.
` One particular -- the Oldham
` reference, which is Exhibit 1050,
` Masimo was fully aware and on notice
` of Oldham's relevance to state of the
` art before the '127 patent. That's
` clear because Dr. King actually
` addressed it at, I believe,
` paragraph 40 of his declaration.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 18
`
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`
` So I think it was fully within
` our rights to respond to Dr. King's
` characterizations of the Oldham
` reference. And to not allow us to do
` so I think would raise -- would be
` concerning and raise some due process
` issues.
` So I don't think that there's any
` basis for Masimo to argue now that we
` shouldn't have an opportunity to respond
` to its expert's characterization of
` Oldham.
` And the additional references
` that Masimo seeks to strike have
` teachings in a similar vein to Oldham
` and further refute the response to the
` arguments that were made in the Patent
` Owner's response.
` JUDGE POLLACK: All right.
` Mr. Cannon?
` MR. CANNON: Thank you,
` Your Honors.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 19
`
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`
` First of all, the first two
` reasons that Mr. Stephens gave for
` saying that they -- that the new
` references are responsive, the
` counterintuitive nature, and the
` secondary considerations, are not
` argued in the reply.
` The reply doesn't put forward
` those as -- it doesn't suggest that
` these references respond to those at
` all. So this is introducing yet
` another new argument into the record
` on this conference call.
` With respect to what Dr. King
` said in paragraph 177, Dr. King said
` that Apple had not provided evidence
` of what they were trying to show
` through the various references:
` Chadwick, Chung, Yamata, and Naguchi.
` And he's referring to the
` evidence of record, which is exactly
` what Patent Owner does in these types
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 20
`
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`
` of cases. Patent Owner does not have
` any burden in these cases; Petitioner
` does. Petitioner defines the scope of
` the IPR through the petition.
` The Federal Circuit has been
` very clear on that. The Supreme Court
` was as well. The Federal Circuit has
` reaffirmed that multiple times, that
` the petition defines the scope of the
` petition.
` And so Dr. King has no burden
` at all, but he certainly has no burden
` to address the universe of prior art
` and to anticipate all of the
` references that Apple could have put
` into the petition but didn't.
` What he did was show a very
` clear deficiency in the petition,
` namely, that the petition has no prior
` art that shows using a bulk
` temperature of a thermal mass to
` estimate LED operating wavelengths.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 21
`
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`
` And in our view, it's still the
` case, even with the new references.
` But the point being, Dr. King pointed
` out that the petition lacked that
` proof. There was a complete gap in
` proof.
` And the Trial Practice Guide
` says that you can't fill gaps in proof
` on reply. You can't fill issues that
` you needed to bring up in your
` petition in order to meet your prima
` facie burden of proof to go forward.
` And so you simply can't say,
` Hey, because Dr. King pointed out that
` our petition was deficient, we get to,
` in response, fill in a gap in the
` petition something that we left out.
` And that is what is going on here.
` If they simply said Dr. King is
` wrong in pointing out that our
` petition was deficient and here's
` where our petition pointed it out,
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 22
`
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`
` that would be responsive. But they
` can't say Dr. King pointed out a
` deficiency in our petition, and
` therefore here's additional prior art
` that we could have cited but we
` didn't. And you should now rely on
` that instead to find obviousness.
` So we don't believe that it's
` properly responsive. It's a clear
` gap-filling measure.
` In addition, in their notice
` related to multiple petitions, when
` they filed two petitions, one of which
` included Oldham, Apple clearly
` indicated that the petition that the
` Board did institute, which is this
` one, was the preferred petition to be
` instituted.
` And it also indicated that the
` prior art in the other petition that
` was not instituted was different from
` the prior art in this petition.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 23
`
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`
` And so now Apple saying that it
` is supportive of this petition is
` contradictory to their prior assertion
` that the two petitions were related to
` different approaches to attacking the
` validity of the '127 patent.
` Thank you.
` JUDGE POLLACK: All right.
` Mr. Stephens, is there a gap in
` proof in the petition?
` Can you point me to where the
` petition has this information?
` MR. STEPHENS: Your Honors,
` thank you.
` There is no gap in proof in the
` petition, Your Honors. I can point
` you, for example -- I mean, it's --
` throughout the petition we cited both
` the prior art and the grounds
` throughout the petition and also some
` corroborating reference discussed in
` Dr. Anthony's declaration.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 24
`
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`
` So I think that's all there.
` And some of it is laid out, for
` example -- I just -- I'm not able to
` point, I don't think at this time, to
` every argument and piece of evidence
` that we addressed in the petition.
` But some of that is discussed on pages
` 12 and 13 of our reply, if Your Honors
` are interested in that.
` I would say that we are not
` contending said Patent Owner have any
` burden to examine the universe of
` prior art here. Of course the burden
` of demonstrating unpatentability
` relies on the -- is the Petitioner's.
` But here, Masimo opened the
` door for Apple to respond to Masimo
` and its expert's own characterizations
` of the prior art that was cited in the
` petition, but also more broadly the
` state of the art as Masimo saw it and
` as Dr. King, their expert, saw it.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 25
`
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`
` So it wasn't just the case that
` Dr. King was identifying alleged gaps
` in the prior art that was brought
` forward in the petition. Instead,
` Masimo and Dr. King elected to discuss
` the Oldham reference or seek to
` strike.
` So they brought Oldham into
` this proceeding. Of course we should
` have a response to it, especially
` given that, you know, in our view,
` they did not address the more
` pertinent teachings of Oldham that
` undermine
` Dr. King's analysis in his
` declaration.
` But it wasn't just Oldham.
` They also relied on other references
` such as Webster and Huwicku to
` identify other allegedly obvious
` solutions to estimating LED
` temperatures in wavelengths.
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 26
`
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`
` And so they used the collection
` of solutions that were described in
` Webster, Huwicku, and their
` interpretations of prior art cited in
` the petition to try to poke holes in
` the petition. We disagree with that.
` But what they've done is tried
` to create a universe of known
` solutions that would not include the
` features in the challenged claim. And
` I think the analysis was inaccurate
` and incomplete.
` And so all we've done in the
` reply and with Dr. Anthony's
` declaration is to identify portions of
` Oldham, for example, that, you know,
` undermine, I think, Dr. King's
` analysis of that reference and shows
` that his assertions, for example, at
` paragraph 177 of the declaration just
` are not accurate.
` So I think that's the nature of
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 27
`
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`22
`
` the argument and evidence in the
` reply. It's entirely consistent with
` the obviousness case brought forward
` in the petition and responsive to
` arguments and the characterizations
` brought by Masimo in its response.
` JUDGE POLLACK: All right.
` Let's go back to opening the door.
` Mr. Cannon said that the --
` I believe that the counterintuitive
` arguments, the secondary
` considerations arguments, are not in
` the reply.
` Why is that fair for you to
` address them in the surreply now?
` MR. CANNON: We don't intend to
` address them in the surreply. We
` didn't intend to address the reply
` issues.
` What we're saying is they
` didn't raise that as a reason for
` so-called opening the door in the
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 28
`
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`
` reply. And it's not something that --
` you know, it can't be a basis for
` being fairly responsive when the reply
` doesn't point out that that's what
` they're responding to.
` JUDGE POLLACK: Okay.
` MR. CANNON: So, you know,
` they've come up with a new reason that
` they're responding to that's not even
` reflected in the reply.
` And there's a broader issue
` about opening the door. I think what
` Petitioner is saying is that if Masimo
` goes outside the petition in any way
` to talk about any reference, that
` suddenly they're opening the door for
` every other possible reference to be
` introduced.
` And that's, I think, an
` untenable position and one that they
` really can't work in the practicalities
` of an adversary proceeding where
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 29
`
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`13
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`15
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`22
`
` Petitioner defines the universe of what
` the grounds are.
` And Masimo deals with that
` universe and points out that in that
` universe that Apple defines, there are
` gaps in the petition, and they haven't
` proved their case.
` They cannot respond to that by
` saying -- by asking Dr. King some
` questions at the deposition and
` saying, "Did you consider Mann?"
` And then when he says: "No,
` I didn't look at Mann," and say, Oh,
` he didn't look at the whole -- the
` entire universe of references that we
` never put into the petition. And for
` that reason, we get to put Mann into
` the record.
` If that were the case,
` petitioners would always be able to
` put whatever reference they wanted
` into the reply simply by pointing out
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2023
`
`202-232-0646
`
`MASIMO 2192
`Apple v. Masimo
`IPR2022-01299
`
`
`
`9/14/2023
`
`Apple, Inc. v. Masimo Corp.
`Highly Confidential - Pursuant to Protective Order
`
`Telephonic Hearing
`
`Page 30
`
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`
` that the Patent Owner hadn't talked
` about that reference.
` But the reason that we didn't
` talk abou
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