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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner.
`____________
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`Case IPR2022-01465
`U.S. Patent 10,687,745
`____________
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`PETITIONER’S MOTION TO EXCLUDE
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`TABLE OF CONTENTS
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 1
`A. Exhibits 2074, 2076-2086, and 2089-2090 Should be Excluded as
`Inadmissible Hearsay .................................................................................. 1
`B. Portions of Exhibit 2070 Should be Excluded ........................................... 3
`C. Portions of Exhibit 2100 Should be Excluded ........................................... 3
`III. CONCLUSION ................................................................................................ 5
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`I.
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, Petitioner
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`Apple Inc. moves to exclude Exhibits 2074, 2076-2086, and 2089-2090, and
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`portions of Exhibits 2070 and 2100. Exhibits 2074, 2076-2086, and 2089-2090
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`contain inadmissible hearsay statements made outside of this proceeding submitted
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`for the truth of the matter asserted. Exhibits 2070 and 2100 are declarations from
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`Patent Owner’s expert, Dr. Duckworth, that improperly rely on statements made
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`outside of this proceeding for the truth of the matter asserted, and which constitute
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`inadmissible hearsay.
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`Petitioner timely objected to these exhibits in Objections to Evidence filed
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`on June 5, 2023 and Oct. 10, 2023. See Paper 31; Paper 51. For the reasons
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`described below, Exhibits 2072-2074 and 2076-2092, and the identified portions of
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`Exhibits 2070 and 2100 should be excluded from evidence in this proceeding.
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`II. ARGUMENT
`A. Exhibits 2074, 2076-2086, and 2089-2090 Should be Excluded as
`Inadmissible Hearsay
`Exhibits 2074, 2076-2086, and 2089-2090 constitute inadmissible hearsay as
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`statements made outside of this proceeding submitted for the truth of the matter
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`asserted, and should therefore be excluded under FRE 801. These exhibits were
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`cited at, for example, pages 1-2, 30, 31-39, and 54 of the POR. With only some
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`exceptions that are expressly included in the Federal Rules of Evidence, which are
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`not applicable here, hearsay statements are deemed unreliable and should not be
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`admitted into evidence.
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`Exhibits 2074, 2076-2086, and 2089-2090 contain transcripts of testimony
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`from witnesses in an ITC proceeding that is separate from the present proceeding.
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`They are therefore statements made outside of the current trial and they are offered
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`to prove the truth of the matter asserted in the statements, thereby meeting the
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`definition of hearsay under FRE 801.
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`Patent Owner has identified no applicable hearsay exceptions, and indeed,
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`the above identified exhibits also do not fall under any such exception. The
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`“residual exception” of Federal Rule of Evidence 807 is illustrative, and does not
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`apply here. The residual exception requires that a statement must: 1) have
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`equivalent circumstantial guarantees of trustworthiness; 2) be offered as evidence
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`of a material fact; 3) be more probative on the point for which it is offered than any
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`other evidence that the proponent can obtain through reasonable efforts; and 4) be
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`in the interests of justice to admit. Fed. R. Evid. 807. The Federal Circuit has been
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`clear that the residual exception to the hearsay rule is to be reserved for
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`“exceptional cases,” and is not “a broad license on trial judges to admit hearsay
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`statements that do not fall within one of the other exceptions.” See Conoco Inc. v.
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`Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996), as amended on reh’g in part
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`(Jan. 2, 1997) (internal quotations omitted). The hearsay statements in 2074, 2076-
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`2086, and 2089-2090 do not rise to this level of exceptionality and should be
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`excluded.
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`B.
`Portions of Exhibit 2070 Should be Excluded
`Paragraphs ¶¶ 22-28, 30-33, 53, 73 of Exhibit 2070 (Second Declaration of
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`Dr. Duckworth) should be excluded under FRE 802 because they include
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`testimony based on statements made outside of this proceeding that are relied upon
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`for the truth of the matter asserted. These paragraphs of Exhibit 2070 were cited
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`at, for example, pages 28, 30-31, 34-36, 38-39, and 54 of the POR. The statements
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`are offered for the truth of the matter asserted. For example, these paragraphs
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`include testimony from witnesses made in the course of a co-pending ITC
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`proceeding, not the current IPR proceeding. With only some exceptions set forth in
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`the Federal Rules of Evidence, but which are not applicable here, hearsay
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`statements are deemed unreliable and should not be admitted into evidence.
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`Consistent with this policy, paragraphs ¶¶ 22-28, 30-33, 53, 73 of Exhibit 2070
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`should be excluded.
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`C.
`Portions of Exhibit 2100 Should be Excluded
`Paragraphs ¶¶ 9, 17, 19, 20, 23, 26, 28, 32, 33, 48, 49, 64, and 69-71 of
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`Exhibit 2100 (Third Declaration of Dr. Duckworth) should be excluded under FRE
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`702 and 703 because they contain opinions that are conclusory, do not disclose
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`supporting facts or data, are based on unreliable facts, data, or methods, and/or
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`include testimony outside the scope of Dr. Duckworth’s purported areas of
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`expertise that will not assist the trier of fact. These paragraphs of Exhibit 2100
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`were cited at, for example, pages 3, 5, 7-9, 11, 15, and 21 of the Patent Owner’s
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`Sur-Reply. These paragraphs of Exhibit 2100 include of a series of conclusory
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`statements and arguments that are presented without citation to evidence. Dr.
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`Duckworth’s failure to disclose the underlying facts or data upon which his
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`opinions are based (to the extent any such facts or data exist) render his opinions
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`unreliable.
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`The above identified paragraphs of Exhibit 2100 should be excluded because
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`Patent Owner did not submit underlying facts or data to support its purported
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`expert’s opinions. For example, at ¶ 9, Dr. Duckworth asserts that “[a] binary
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`indication of sufficient signal does not actually determine a user's oxygen
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`saturation value” without providing citation to any support for this assertion. As
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`another example, at ¶ 17, Dr. Duckworth makes several unsupported assertions,
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`including asserting that “[u]sing a dark-colored coating on the light shielding frame
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`in Iwamiya would have eliminated that effect of funneling light back to the light
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`receiving unit, and thus would reduce the strength of the received signal” without
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`providing citation to any support for this assertion. Each of the above identified
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`paragraphs contain similar deficiencies and should therefore be excluded.
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`Paragraphs ¶¶ 32, 44, 51, 57, 64, and 81-95 of Exhibit 2100 should be
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`excluded under FRE 802 because they include testimony based on statements made
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`outside of this proceeding that are relied upon for the truth of the matter asserted.
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`These paragraphs of Exhibit 2070 were cited at, for example, pages 8, 14, 16, 19-
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`21, 25, and 28-31 of Patent Owner’s Sur-Reply. The statements are offered for the
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`truth of the matter asserted. For example, these paragraphs include testimony from
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`witnesses made in the course of a co-pending ITC proceeding, not the current IPR
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`proceeding. With only some exceptions set forth in the Federal Rules of Evidence,
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`but which are not applicable here, Congress and the Supreme Court have made the
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`policy decision that hearsay statements are unreliable and should not be admitted
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`into evidence. Consistent with this policy, paragraphs ¶¶ 32, 44, 51, 57, 64, and
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`81-95 of Exhibit 2070 should be excluded.
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`III. CONCLUSION
`In view of the foregoing, Petitioner respectfully submits Exhibits 2074,
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`2076-2086, and 2089-2090, and the identified portions of Exhibits 2070 and 2100
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`are inadmissible under the Federal Rules of Evidence and, thus, should be
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`excluded from evidence in this proceeding.
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`Respectfully submitted,
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`/Nicholas W. Stephens/
`Nicholas Stephens, Reg. No. 74,320
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
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`Dated 10/30/2023
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on October 30, 2023, a complete and entire copy of this Motion to
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`Exclude was provided via email to the Patent Owner by serving the email
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`correspondence addresses of record as follows:
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`Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel C. Kiang (Reg. No. 79,631)
`Jeremiah S. Helm (Pro Hac Vice)
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
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`E-mail: AppleIPR745-3@knobbe.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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