UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`________________
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`________________
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`Case IPR2022-01465
`Attorney Docket No. 50095-0045IP3
`
`LIST OF EXHIBITS
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`APPLE-1001 U.S. Pat. No. 10,687,745 to Al-Ali (“the ’745 Patent”)
`
`APPLE-1002 Prosecution History of the ’745 Patent (Serial No. 16/835,772)
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`APPLE-1003 Declaration of Dr. Brian Anthony
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`APPLE-1004 U.S. Pat. No. 8,670,819 (“Iwamiya”)
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`APPLE-1005 U.S. Pat. No. 9,392,946 (“Sarantos”)
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`APPLE-1006 U.S. Pub. No. 2014/0275854 (“Venkataraman”)
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`APPLE-1007 U.S. Pat. No. 6,483,976 (“Shie”)
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`APPLE-1008 U.S. Pat. No. 6,801,799 (“Mendelson-799”)
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`APPLE-1009 U.S. Pub. No. 2015/0018647 (“Mandel”)
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`APPLE-1010 U.S. Pub. No. 2009/0275810 (“Ayers”)
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`APPLE-1011 PCT. Pub. No. 2011/051888 (“Ackermans”)
`
`APPLE-1012 U.S. Pat. No. 6,158,245 (“Savant”)
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`APPLE-1013 Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1014 U.S. Pub. No. 2009/0054112 (“Cybart”)
`
`APPLE-1015 U.S. Pat. No. 5,893,364 (“Haar”)
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`APPLE-1016 U.S. Pat. No. 5,952,084 (“Anderson”)
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`APPLE-1017 U.S. Pat. No. 10,470,695 (the “’695 patent”)
`
`APPLE-1018 Apple v. Masimo, Case No. IPR2020-01722, Paper 29 (Final
`Written Decision) (PTAB May 5, 2022) (the “’695 FWD”)
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`i
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`APPLE-1019 – APPLE-1030 RESERVED
`
`APPLE-1031 Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 337-TA-1276
`
`APPLE-1032 Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`
`APPLE-1033 Final Initial Determination on Violation of Section 337, Public
`Version, ITC Inv. No. 337-TA-1276, January 10, 2023
`
`APPLE-1034 Emails re Masimo’s Request for Authorization to Motion for
`Additional Discovery
`
`APPLE-1035 Protective Order
`
`APPLE-1036 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Ueyn Block
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`APPLE-1037 CONFIDENTIAL - ITC Inv. No. 337-TA-1276 Hearing Transcript
`of Dr. Saahil Mehra
`
`APPLE-1038 ITC Inv. No. 337-TA-1276 Exhibit RX-0335 (U.S. Pat. No.
`5,830,137 (“Scharf”))
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`APPLE-1039 ITC Inv. No. 337-TA-1276 Exhibit RX-0504 (Austin Wareing,
`Optimization of Reflectance-Mode Pulse Oximeter Sensors)
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`APPLE-1040 ITC Inv. No. 337-TA-1276 Exhibit RX-0508 (Jianchu Yao and
`Steve Warren, Stimulating Student Learning with a Novel “In-
`House” Pulse Oximeter Design (2005))
`
`APPLE-1041 ITC Inv. No. 337-TA-1276 Exhibit RX-0632
`
`APPLE-1042 CONFIDENTIAL - Supplemental Declaration of Dr. Brian
`Anthony
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`ii
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`APPLE-1043 Excerpt of The American Heritage Dictionary of the English
`Language, Fifth Edition, Houghton Mifflin Harcourt Publishing
`Company (2011)
`
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`APPLE-1044 Excerpt of Collins Dictionary, HarperCollins Publishers (2010)
`
`APPLE-1045 Excerpt of Merriam-Webster’s Collegiate Dictionary, Eleventh
`Edition, Merriam-Webster, Incorporated (2014)
`
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`APPLE-1046 Excerpts from Bronzino, The Biomedical Engineering Handbook,
`CRC Press, Inc. (1995) (“Bronzino”)
`
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`APPLE-1047 U.S. Patent No. 6,014,576 to Raley
`
`APPLE-1048 Severinghaus et al., Recent Developments in Pulse Oximetry,
`Anesthesiology, Vol. 76, No. 6 (June 1992)
`
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`APPLE-1049 Duffy, MIO Alpha BLE Review, PC Magazine (Jan. 28, 2013)
`available at https://www.pcmag.com/reviews/mio-alpha-ble
`
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`APPLE-1050 Pang et al., A Neo-Reflective Wrist Pulse Oximeter, IEEE Access,
`Volume 2 (January 12, 2015)
`
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`APPLE-1051 Li et al., A Wireless Reflectance Pulse Oximeter With Digital
`Baseline Control for Unfiltered Photoplethysmograms, IEEE
`Transactions on Biomedical Circuits and Systems, Vol. 6, No. 3
`(June 2012)
`
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`APPLE-1052 U.S. Patent Application Publication No. 2006/0253010 to Brady et
`al.
`
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`APPLE-1053 Cai et al., Implementation of a Wireless Pulse Oximeter Based on
`Wrist Band Sensor, 2010 3rd International Conference on
`Biomedical Engineering and Informatics (BMEI 2010)
`
`International Publication No. WO 2001/17421 to Lindberg et al.
`
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`APPLE-1054
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`APPLE-1055 Maattala et al., Optimum Place for Measuring Pulse Oximeter
`Signal in Wireless Sensor-Belt or Wrist-Band, 2007 International
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`iii
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`Conference on Convergence Information Technology, IEEE
`(2007)
`
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`APPLE-1056 Fontaine et al., Reflectance-Based Pulse Oximeter for the Chest
`and Wrist, Worchester Polytechnic Institute (April 2013) available
`at https://digital.wpi.edu/show/6969z2326
`
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`APPLE-1057 Stein, “Withings Pulse O2 review: Fitness band plus heart rate
`monitor checks blood oxygen, too,” CNET.com (April 25, 2014),
`available at https://www.cnet.com/reviews/withings-pulse-o2-
`review/
`
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`APPLE-1058 U.S. Patent No. 7,468,036 to Rulkov et al.
`
`APPLE-1059 CONFIDENTIAL - Transcript of the Deposition of Dr. R. James
`Duckworth (August 9, 2023)
`
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`APPLE-1060 Mendelson et al., A Wearable Reflectance Pulse Oximeter for
`Remote Physiological Monitoring, Proceedings of the 28th IEEE
`EMBS Annual International Conference (Sept. 3, 2006)
`
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`APPLE-1061
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`International Publication No. WO 2011/051888 to Ackermans et
`al.
`
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`APPLE-1062 U.S. Patent Application Publication No. 2005/0116820 to
`Goldreich
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`International Publication No. WO 2012/140559 to Shmueli et al.
`
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`APPLE-1063
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`APPLE-1064 U.S. Patent No. 7,650,176 to Sarussi et al.
`
`APPLE-1065 U.S. Patent Application Publication No. 2002/0095092 to Kondo
`et al.
`
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`APPLE-1066 U.S. Patent Application Publication No. 2015/0355604 to Fraser et
`al.
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`APPLE-1067 U.S. Patent No. 6,580,086 to Schulz et al.
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`APPLE-1068 U.S. Patent Application Publication No. 2013/0267854 to Johnson
`et al.
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`APPLE-1069
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`ITC Inv. No. 337-TA-1276 Exhibit RX-0498 (Takatani et al.,
`Optical Oximetry Sensors for Whole Blood and Tissue, IEEE
`Engineering in Medicine and Biology (June/July 1994))
`
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`APPLE-1070 U.S. Patent No. 5,164,858 to Aguilera, Jr. et al.
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`APPLE-1071 U.S. Patent Application Publication No. 2005/0267346 to Faber et
`al.
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`APPLE-1072 U.S. Patent No. 9,316,495 to Suzuki et al.
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`APPLE-1073 U.S. Patent Application Publication No. 2014/0051955 to Tiao et
`al.
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`APPLE-1074 U.S. Patent Application Publication No. 2016/0058312 to Han et
`al.
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`APPLE-1075 U.S. Patent Application Publication No. 2010/0261986 to Chin et
`al.
`
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`APPLE-1076 Beam Shaping with Cylindrical Lenses, available at
`https://www.newport.com/n/beam-shaping-with-cylindrical-lenses
`
`
`APPLE-1077 Dickey, Laser Beam Shaping Theory and Techniques, Second
`Edition, Taylor & Francis Group, LLC (2014)
`
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`APPLE-1078 Lee et al., Micro-LED Technologies and Applications, Information
`Display (June 2016)
`
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`APPLE-1079 U.S. Patent No. 6,398,727 to Bui et al.
`
`APPLE-1080 U.S. Patent Application Publication No. 2014/0323829 to LeBoeuf
`et al.
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`APPLE-1081 Transcript of the Deposition of Dr. R. James Duckworth (October
`18, 2023)
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`APPLE-1082 Second Supplemental Declaration of Brian W. Anthony
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`APPLE-1083 Declaration of Anne Koch Baland
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`TABLE OF CONTENTS
`
`I.
`II.
`
`A.
`
`B.
`C.
`D.
`E.
`
`Introduction ...................................................................................................... 1
`Argument ......................................................................................................... 1
`APPLE-1009, APPLE-1010, and APPLE-1014 to APPLE-1016 are
`admissible .................................................................................................... 1
`APPLE-1039 and APPLE-1041 are admissible .......................................... 1
`Paragraph 31 of APPLE-1042 and APPLE-1056 are admissible ................ 5
`Paragraphs 27, 31, and 33-34 of APPLE-1042 are admissible ................... 8
`Exhibits APPLE-1054, APPLE-1058, and APPLE-1063 to APPLE-1066
`are admissible ............................................................................................ 10
`Paragraphs 40-50 of APPLE-1042 are admissible .................................... 11
`F.
`Paragraphs 61-64 of APPLE-1042 are admissible .................................... 14
`G.
`III. Conclusion ..................................................................................................... 15
`
`vii
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`Case IPR2022-01465
`Attorney Docket No. 50095-0045IP3
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`I.
`
`INTRODUCTION
`Petitioner respectfully submits that the Board should deny Patent Owner’s
`
`Motion to Exclude (“MTE”) and decide the patentability of the claims at issue on
`
`the full record presented. Each of the complained-of exhibits were submitted to the
`
`Board in compliance with PTAB rules and the Rules of Evidence.
`
`II. ARGUMENT
`A. APPLE-1009, APPLE-1010, and APPLE-1014 to APPLE-1016 are
`admissible
`In both his initial and supplemental declarations, Dr. Anthony explained that
`
`he reviewed Exhibits APPLE-1009, APPLE-1010, APPLE-1014, APPLE-1015, and
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`APPLE-1016 and that they informed his opinions therein. APPLE-1003, ¶11;
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`APPLE-1042, ¶3. These Exhibits are admissible under FRE 703 as materials that
`
`“experts in the particular field would reasonably rely on … in forming an opinion
`
`on the subject.” See also Argentum Pharms. LLC, v. Res. Corp. Techs., Inc.,
`
`IPR2016-00204, Paper 85 at 47-48 (PTAB March 22, 2017).
`
`B. APPLE-1039 and APPLE-1041 are admissible
`Record evidence establishes that exhibits APPLE-1039 and APPLE-1041 are
`
`authentic documents from a related ITC proceeding involving the ’745 Patent (ITC
`
`Inv. No. 337-TA-1276). These documents specifically relate to pulse oximetry
`
`experiments performed by students at Kansas State University in the early 2000s
`
`under Dr. Steve Warren.
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`Regarding APPLE-1039, the face of the exhibit identifies it as a poster titled
`
`
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`“Optimization of Reflectance-Mode Pulse Oximeter Sensors” by Austin Wareing,
`
`with Dr. Steve Warren as an “[a]dvisor.” APPLE-1039 bears its original document
`
`stamp (“RX-0504”) from the ITC proceeding.
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`APPLE-1041 is a photograph of Dr. Warren’s students performing pulse
`
`oximetry experiments, which even shows a student in the foreground collecting
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`measurements from the wrist. APPLE-1041 likewise bears its original document
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`stamp (“RX-0632”) from the ITC proceeding.
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`The original ITC document stamps show that APPLE-1039 and -1041 are the
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`same exhibits that Apple relied upon in the ITC proceeding, and which the ALJ
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`properly recognized as “evidence that Dr. Warren experimented with measuring
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`pulse oximetry on the wrist with his students at Kansas State University in 2002.”
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`EX1033, 114 (referring to RX-0632 as a “2002 photograph” and RX-0504 as a
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`“2005 poster”). Additional details regarding Dr. Warren’s lab experiments, Mr.
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`Wareing’s and additional KSU students’ sensors, and further context around both
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`the poster of APPLE-1039 and the photograph of APPLE-1041 are described in
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`Apple’s Post-Hearing ITC Brief. See, e.g., APPLE-2050, 64-65, 66, 118. Ms.
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`Baland also personally verified that the exhibits submitted as APPLE-1039 and
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`APPLE-1041 in this IPR match exhibits RX-0504 and RX-0632 submitted by Apple
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`in the ITC proceeding. See APPLE-1083, ¶¶4, 6, Appxs. A, C. In short, APPLE-
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`1039 and APPLE-1041 more than clear the “low” bar for authentication under FRE
`
`
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`901(a). United States v. Ceballos, 789 F.3d 607, 617–18 (5th Cir. 2015).
`
`APPLE-1039 and APPLE-1041 are admissible for additional reasons as well.
`
`For example, the documents are admissible under FRE 703 as information that Dr.
`
`Anthony reasonably relied upon in forming the opinions stated in his second
`
`declaration. See APPLE-1042, FN5. Under FRE 703, an expert may base an opinion
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`on facts or data that is not otherwise admissible “[i]f experts in the particular field
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`would reasonably rely on those kinds of facts or data in forming an opinion on the
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`subject.” FRE 703; see also Argentum Pharms., IPR2016-00204, Paper 85 at 47-48.
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`Evidence on which an expert relies, even if otherwise inadmissible, can be disclosed
`
`to the factfinder provided that the probative value of the evidence substantially
`
`outweighs its prejudicial effect. RTI Surgical, Inc. v. LifeNet Health, IPR2019-
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`00571, Paper 75, 7-9 (PTAB Aug. 14, 2020) (denying motion to exclude as hearsay
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`documents relied upon by an expert because the probative value outweighed any
`
`prejudicial effect). The PTAB routinely applies Rule 703 to deny motions to exclude
`
`evidence relied upon by experts, even if that evidence would not be admissible
`
`before a jury. Id., 8-9 (collecting cases). Patent Owner’s stated concerns with
`
`Exhibits APPLE-1039 and APPLE-1041 go toward the weight that should be
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`accorded to the exhibits rather than admissibility. “[S]imilar to a district court in a
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`bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is
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`well-positioned to determine and assign appropriate weight to evidence presented.”
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`Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1,
`
`2014) (“One who is capable of ruling accurately upon the admissibility of evidence
`
`is equally capable of sifting it accurately after it has been received.”)
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`Here, Dr. Anthony relied on APPLE-1039 and APPLE-1041 to corroborate
`
`his assessment regarding the state of the art. See, e.g., APPLE-1042, FN 5. Dr.
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`Anthony expressly confirmed that APPLE-1039 and APPLE-1041 are “of a type that
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`an expert would rely upon in formulating opinions” on issues for which they are
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`cited in his second declaration. APPLE-1082, ¶4. These exhibits are thus admissible
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`under FRE 703.
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`Furthermore, Exhibits APPLE-1039 and APPLE-1041 are admissible under
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`FRE 106 for the sake of completeness. U.S.A. v. Darryl Green, 694 F. Supp. 107
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`(E.D. Pa. 1988). Patent Owner submitted and relies upon numerous exhibits from
`
`the related ITC proceeding involving the ’745 Patent, which Petitioner had produced
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`to Patent Owner pursuant to the Board’s order granting-in-part Patent Owner’s
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`motion for additional discovery. Paper 23. Patent Owner should not be permitted
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`to cherry-pick only those portions of the ITC record that it believes favors its position
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`while shielding other portions of the record that it finds unfavorable to its arguments.
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`The additional exhibits that Petitioner entered as supplemental information,
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`including APPLE-1039 and APPLE-1041, are admissible in that “in fairness [they]
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`ought to be considered at the same time.” FRE 106.
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`C.
`Paragraph 31 of APPLE-1042 and APPLE-1056 are admissible
`Paragraph 31 of APPLE-1042 and Exhibit APPLE-1056 are relevant to
`
`informing the state of the art of pulse oximetry technology before the ’745 Patent
`
`and are admissible under FRE 401-402. Indeed, each makes the fact that a POSITA
`
`would have reasonably expected success determining oxygen saturation at the
`
`wrist—a fact that is plainly of consequence in this proceeding—more probable.
`
`Accordingly, APPLE-1042, ¶ 31 and APPLE-1056 are relevant under FRE 401-402
`
`and should not be excluded. FRE 401 (evidence is relevant if it “has any tendency
`
`to make a fact more or less probable than it would be without the evidence” and “the
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`fact is of consequence in determining the action”); FRE 402 (“[r]elevant evidence is
`
`admissible”); United States v. White, 692 F.3d 235, 246 (2d Cir. 2012) (noting the
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`“very low” threshold for relevance required under FRE 401).
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`Patent Owner’s attempts to question the circumstances of APPLE-1056’s
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`publication are also unfounded and fail to show that either APPLE-1056 or APPLE-
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`1042, ¶ 31 is inadmissible. APPLE-1056 does not form the “basis” of any ground
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`in the Petition or the instituted IPR, and Petitioner therefore has no burden to
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`demonstrate that APPLE-1056 was publicly accessible by a preponderance of the
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`evidence under 35 U.S.C. § 311(b). The record nonetheless contains ample evidence
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`that APPLE-1056 is authentic under FRE 901, that it was published, and that it
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`reflects the knowledge of a POSITA regarding the state of the art of pulse oximetry
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`technologies before the critical date of the ’745 Patent sufficient to meet the low bar
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`for relevance under FRE 401-402. White, 692 F.3d at 246. For example, both the
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`Petitioner’s Reply and the Supplemental Anthony Declaration provide the URL at
`
`which APPLE-1056 was accessed, which includes publication details (including the
`
`publication date) explained by Dr. Anthony. Pet. Rep., p. vi; APPLE-1042, ¶¶3, 31.
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`The identified website, hosted by the Worcester Polytechnic Institute, evidences that
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`APPLE-1056 was published on April 24, 2013. Id.; Argentum Pharms., IPR2016-
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`00204, Paper 85 at 47-48.
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`Ms. Baland further authenticated APPLE-1056 by personally retrieving a
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`copy of “Reflectance-Based Pulse Oximeter for the Chest and Wrist” by Fontaine et
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`al. from the Worcester Polytechnic Institute Website and verifying that it matches
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`the document submitted as APPLE-1056 in this proceeding. APPLE-1083, ¶ 19.
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`This evidence is complemented by various indicia on APPLE-1056 that confirms it
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`is exactly what Apple and Dr. Anthony have purported it to be, namely a report on
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`“Reflectance-based Pulse Oximeter for the Chest and Wrist” by Fontaine et al. at the
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`Worcester Polytechnic Institute. See APPLE-1056, 1-2; Hamilton Techs., IPR2020-
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`01199, Paper 57 at 55 (PTAB Dec. 28, 2021) (“As for authentication, documents are
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`authenticated by evidence ‘sufficient to support a finding that the item is what the
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`proponent claims it is.’ Fed. R. Evid. 901(a). Authenticity is, therefore, not an
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`especially high hurdle for a party to overcome.”).
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`Contrary to Patent Owner’s assertions, no legal requirement exists for Dr.
`
`Anthony to be an “expert in determining whether a document is prior art” (see MTE,
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`p. 5) for him to properly rely on a document as corroborating evidence regarding the
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`state of the art before the ’745 Patent. Patent Owner’s objections to APPLE-1041,
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`¶31 and APPLE-1056 are directed, at most, to the weight of the evidence, which is
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`not a proper basis for a motion to exclude. Hamilton Techs., IPR2020-01199, Paper
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`57 at 55 (“we find that [the movant’s] arguments deal not with prejudice, but rather,
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`the weight we should give the evidence”); United States v. Whittington, 455 F.3d
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`736, 739 (6th Cir. 2006) (“the relevance threshold is very low under Rule 401.”).
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`To be sure, even if APPLE-1056 was not otherwise admissible on its own
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`accord (which is not the case here), it would still be admissible as evidence relied
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`upon to inform Dr. Anthony’s opinions under FRE 703. It is well-established that
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`evidence on which an expert relies, even if otherwise inadmissible, can be disclosed
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`to the factfinder as long as the probative value of the evidence substantially
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`outweighs its prejudicial effect. RTI, IPR2019-00571, Paper 75 at 7-9. This is
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`especially true here, where there is no jury to be confused and where Dr. Anthony
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`has expressly noted that APPLE-1056 is a document “of a type that an expert would
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`rely upon in formulating opinions … [and] for which have I [sic] cited those exhibits
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`in my second declaration.” APPLE-1082, ¶4; Hamilton Techs., IPR2020-01199,
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`
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`Paper 57 at 55 (PTAB Dec. 28, 2021) (citing Schultz v. Butcher, 24 F.3d 626, 632
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`(4th Cir. 1994)). APPLE-1041, ¶31 and APPLE-1056 should not be excluded.
`
`D.
`Paragraphs 27, 31, and 33-34 of APPLE-1042 are admissible
`In the Reply, Petitioner referred to various prior art references corroborating
`
`the fact that “a POSITA would have reasonably expected success implementing the
`
`combinations to determine oxygen saturation at the wrist before the ’745 Patent.”
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`Pet. Rep., 13-15. Petitioner identified portions of multiple prior art references to
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`support this argument. Id. Paragraphs 27, 31, and 33-34 of APPLE-1042 constitute
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`additional evidence of what a POSITA would have understood from these prior art
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`references and are therefore relevant and admissible as supporting the arguments
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`made in the Petitioner’s Reply, not stand-alone arguments incorporated by reference
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`into the Reply. See e.g., Sage Products, LLC v. PureWick Corp., IPR2020-01426,
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`Paper 3 at 50 (PTAB Feb. 14, 2022) (“nothing in our rules forbids the declaration
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`from having more detail and reasoning to support the testimony of the declarant”);
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`Primera Tech. v. Automatic Manufact. Sys., IPR2013-00196, Paper 50 at 30 (PTAB
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`July 17, 2014); Group III Int’l, Inc. v. Targus Int’l LLC, IPR2021-00371, Paper 43
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`at 3-4 (PTAB Oct. 21, 2021).
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`Petitioner’s Reply dedicated nearly nine pages to refuting Patent Owner’s
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`specious arguments that a POSITA would have lacked reasonable expectation of
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`success determining oxygen saturation at the wrist before the ’745 Patent, and the
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`complained of portions of Paragraphs 27, 31, and 33-34 of APPLE-1042 constitutes
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`proper evidence in support of the arguments made in the Reply. Pet. Rep., 13-15. In
`
`Paragraphs 27, 31, and 33-34 of APPLE-1042. Dr. Anthony “disclose[s] the
`
`underlying facts or data upon which the opinion is based” consistent with the
`
`PTAB’s Trial Practice Guide and 37 C.F.R. § 42.65. Therefore, contrary to Patent
`
`Owner’s assertions, paragraphs 27, 31, and 33-34 of APPLE-1042 are not arguments
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`improperly incorporated by reference into Petitioner’s Reply but rather evidence and
`
`explanation that support the arguments made in the Reply. Patent Owner’s concerns
`
`are directed, at most, to the weight that should be accorded to these portions of the
`
`declaration rather than admissibility. Corning, IPR2013-00053, Paper 66 at 19.
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`Patent Owner’s complaints about Dr. Anthony’s analysis in paragraphs 27,
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`31, and 33-34 of APPLE-1042 being “prejudicial” reflect the compelling substance
`
`of his testimony, but Patent Owner has not been prejudiced by any alleged
`
`incorporation by reference. While concerns over potential “abuse” may be
`
`legitimate in cases of actual incorporation by reference, they are not here—
`
`especially in view of relief that the Board has already granted Patent Owner in this
`
`proceeding. Specifically, at Patent Owner’s request, the Board authorized Patent
`
`Owner to file an expert declaration with its Sur-Reply to address the arguments and
`
`evidence Petitioner submitted with Petitioner’s Reply. Papers 43, 50. Beyond the
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`Attorney Docket No. 50095-0045IP3
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`usual requirement for responsiveness, the Board’s Order placed no restrictions on
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`the scope of the expert declaration. Paper 43, 4. Patent Owner proceeded to file a
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`lengthy expert declaration (at least 77 pages) with its Sur-Reply that addressed
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`substantially all of the arguments presented in Petitioner’s Reply and Dr. Anthony’s
`
`supplemental declaration—including the complained-of paragraphs 27, 31, and 33-
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`34. See EX2100. The Board even asked Patent Owner if it would need additional
`
`pages for its Sur-Reply, but Patent Owner declined. Paper 50, 2. Under these
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`circumstances, Patent Owner’s complaints are unfounded. There has been no
`
`prejudice or incorporation by reference, and these portions of Dr. Anthony’s
`
`declaration should not be excluded.
`
`E.
`Exhibits APPLE-1054, APPLE-1058, and APPLE-1063 to
`APPLE-1066 are admissible
`Exhibits APPLE-1054, APPLE-1058, and APPLE-1063 to APPLE-1066 are
`
`properly relied upon by both the Petitioner’s Reply and the Supplemental Anthony
`
`declaration to “demonstrate that a POSITA would have reasonably expected success
`
`implementing the combinations to determine oxygen saturation at the wrist before
`
`the ’745 Patent.” Pet. Rep., 13-15; APPLE-1042, ¶¶27, 31, and 33-34. Evidence
`
`should be admitted “if, (a) it has any tendency to make a fact more or less probable
`
`than it would be without the evidence; and (b) the fact is of consequence in
`
`determining the action.” Hamilton Techs., IPR2020-01199, Paper 57 at 55; FRE
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`10
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`Case IPR2022-01465
`Attorney Docket No. 50095-0045IP3
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`401-402. Each of Exhibits APPLE-1054, APPLE-1058, and APPLE-1063 to
`
`
`
`APPLE-1066 make the fact that a POSITA would have reasonably expected success
`
`implementing the combinations to determine oxygen saturation at the wrist more
`
`probable. This fact is clearly of consequence in the current proceeding, and therefore
`
`none of APPLE-1054, APPLE-1058, and APPLE-1063 to APPLE-1066 should be
`
`excluded.
`
`These publications also represent the underlying facts and data that “experts
`
`in the particular field would reasonably rely on … in forming an opinion on the
`
`subject.” FRE 703, see also Argentum Pharms., IPR2016-00204, Paper 85 at 47-48.
`
`Such evidence is admissible when its probative value outweighs its prejudicial
`
`effect, as it does here. RTI, IPR2019-00571, Paper 75 at 7-9.
`
`F.
`Paragraphs 40-50 of APPLE-1042 are admissible
`Paragraphs 40-50 of APPLE-1042 constitute additional evidence of the proper
`
`context of statements made by Apple engineers, as explained in the Petitioner’s
`
`Reply, not stand-alone arguments incorporated by reference into the Reply, and are
`
`therefore admissible. See e.g., Sage Products, IPR2020-01426, Paper 3 at 50;
`
`Primera Tech., IPR2013-00196, Paper 50 at 30; Group III Int’l, IPR2021-00371,
`
`Paper 43 at 3-4. In the Reply, Petitioner argued that Dr. Duckworth did not
`
`understand the testimony of the Apple engineers and had failed to address their
`
`testimony in its proper context. Pet. Rep., 18-19. Petitioner then explained the
`
`11
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`Attorney Docket No. 50095-0045IP3
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`proper context for this testimony. Id. The Petitioner’s Reply included multiple pages
`
`
`
`of explanation of the relevance of these portions of Paragraphs 40-50 of APPLE-
`
`1042 and the underlying exhibits relied upon. Pet. Rep., 18-21. The Petitioner’s
`
`Reply therefore precisely meets the requirements of Parus Holdings to “cit[e] the
`
`relevant record evidence with specificity and explaining the significance of the
`
`produced material” with respect to Paragraphs 40-50 of APPLE-104. 70 F.4th at
`
`1372. In Paragraphs 40-50 of APPLE-1042, Dr. Anthony “disclose[d] the
`
`underlying facts or data upon which the opinion is based” consistent with the
`
`PTAB’s Trial Practice Guide and 37 C.F.R. § 42.65. Therefore, contrary to Patent
`
`Owner’s assertions, paragraphs 40-50 of APPLE-1042 are not arguments improperly
`
`incorporated by reference into Petitioner’s Reply but rather evidence and
`
`explanation that support the arguments made in the Reply.
`
`Furthermore, Patent Owner’s concerns here go toward the weight that should
`
`be accorded to these portions of the Supplemental Anthony declaration rather than
`
`admissibility. Corning, IPR2013-00053, Paper 66 at 19. These paragraphs should
`
`not be excluded.
`
`Patent Owner’s assertion that Apple could have addressed arguments related
`
`to testimony of Dr. Duckworth based on exhibits containing testimony of Apple
`
`engineers that was submitted with the POR in its petition is simply unfounded.
`
`Apple was under no obligation to address every conceivable argument that Patent
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`12
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`Case IPR2022-01465
`Attorney Docket No. 50095-0045IP3
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`Owner could have made prior to Patent Owner actually making such arguments.
`
`
`
`Paragraphs 40-50 of APPLE-1042 are proper rebuttal evidence relying on
`
`underlaying facts that timely address arguments first raised in this proceeding in the
`
`POR.
`
`Patent Owner’s allegations of prejudice are also unfounded. While concerns
`
`over potential “abuse” may be legitimate in cases of actual incorporation by
`
`reference, they are not here—especially in light of relief that the Board has already
`
`granted Patent Owner in this proceeding. Specifically, at Patent Owner’s request,
`
`the Board authorized Patent Owner to file an expert declaration with its Sur-Reply
`
`to address the arguments and evidence Petitioner submitted with Petitioner’s Reply.
`
`Papers 43, 50. Beyond the usual requirement for responsiveness, the Board’s Order
`
`placed no restrictions on the scope of the expert declaration. Paper 43, 4. Patent
`
`Owner proceeded to file a lengthy expert declaration (at least 77 pages) with its Sur-
`
`Reply that addressed substantially all the arguments presented in Petitioner’s Reply
`
`and Dr. Anthony’s supplemental declaration—including the complained-of
`
`paragraphs 40-50. See EX2100. The Board even asked Patent Owner if it would
`
`need additional pages for its Sur-Reply, but Patent Owner declined. Paper 50, 2.
`
`Under these circumstances, Patent Owner’s complaints are unfounded. There has
`
`been no prejudice or incorporation by reference, and these portions of Dr. Anthony’s
`
`declaration should not be excluded.
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`G.
`Paragraphs 61-64 of APPLE-1042 are admissible
`Paragraphs 61-64 of APPLE-1042 constitute additional evidence of the proper
`
`context of statements made by Apple engineers, as explained in the Petitioner’s
`
`Reply, not stand-alone arguments incorporated by reference into the Reply, and are
`
`therefore admissible. See e.g., Sage Products, IPR2020-01426, Paper 3 at 50;
`
`Primera Tech., IPR2013-00196, Paper 50 at 30; Group III Int’l, IPR2021-00371,
`
`Paper 43 at 3-4.
`
`In the Petition, Petitioner identified multiple reasons that would have
`
`motivated a POSITA to implement a light-shape changing material, such as Shie’s,
`
`in the combination with Sarantos to precisely direct light emitted toward the tissue.
`
`Pet., 40-41. The Petitioner’s Reply cited back to the Petition to identify where these
`
`multiple reasons for combining the references had been initially explained while
`
`further arguing that “Masimo’s attempts to refute these straightforward motivations
`
`are based on Masimo’s incomplete understanding of the prior art.” Pet. Rep., 24.
`
`The Petitioner’s Reply then cites to portions of the Supplemental Anthony
`
`Declaration that provide explanation of Masimo’s incomplete understanding of the
`
`prior art. Id. In Paragraphs 61-64 of APPLE-1042, Dr. Anthony “disclose[d] the
`
`underlying facts or data upon which the opinion is based” consistent with the
`
`PTAB’s Trial Practice Guide and 37 C.F.R. § 42.65.
`
`14
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`Attorney Docket No. 50095-0045IP3
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`The Petitioner’s Reply precisely meets the guidance in Parus Holdings to
`
`
`
`“cit[e] the relevant record evidence with specificity and explaining the significance
`
`of the produced material” with respect to Paragraphs 40-50 of APPLE-104. 70 F.4th
`
`at 1372. In this case, the Petitioner’s Reply explained the significance of the cited
`
`portions of the Supplemental Anthony Declaration as explaining Masimo’s attempts
`
`to refute these straightforward motivations are based on Masimo’s incomplete
`
`understanding of the prior art, including the fact that design tradeoffs do not detract
`
`from the obviousness of the combination. Pet. Rep., 24. Therefore, contrary to
`
`Patent Owner’s assertions, paragraphs 61-64 of APPLE-1042 are not arguments
`
`improperly incorporated by reference into Petitioner’s Reply but rather evidence and
`
`explanation that support the arguments made in the Reply.
`
`Furthermore, Patent Owner’s concerns here go toward the weight that should
`
`be accorded to these portions of the Supplemental Anthony declaration rather than
`
`admissibility. Corning, IPR2013-00053, Paper 66 at 19. And for similar reasons to
`
`those noted above, Patent Owner’s submission of a lengthy expert declaration
`
`addressing these issues with its Sur-Reply is inconsistent with its present allegations
`
`of prejudice. These paragraphs should not be excluded.
`
`III. CONCLUSION
`For the foregoing reasons, Masimo’s
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