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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.
`____________
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`____________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`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
`RESPONSIVE ARGUMENTS ....................................................................... 1
`A. Exhibits 2074, 2076-2086, and 2089-2090 should be excluded as
`inadmissible hearsay ................................................................................... 1
`B. Paragraphs 22-28, 30-33, 53, 73 of Exhibit 2070 and 32, 44, 51, 57, 64,
`and 81-95 of Exhibit 2100 should be excluded .......................................... 4
`C. Paragraphs 9, 17, 19, 20, 23, 26, 28, 32, 33, 48, 49, 64, and 69-71 of
`Exhibit 2100 should be excluded ............................................................... 4
`III. CONCLUSION ................................................................................................ 5
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`i
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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, Exhibits
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`2074, 2076-2086, and 2089-2090 and the previously identified portions of Exhibits
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`2070 and 2100 should be excluded for the reasons identified in Petitioner’s Motion
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`to Exclude (Paper 51, “MTE”). Below, Petitioner addresses the arguments made in
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`Patent Owner’s Opposition to Petitioner’s MTE (Papers 57, 58, “Opp.”).
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`II. RESPONSIVE ARGUMENTS
`A. Exhibits 2074, 2076-2086, and 2089-2090 should be excluded as
`inadmissible hearsay
`Patent Owner fails to identify any hearsay exception applicable to the
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`statements in Exhibits 2074, 2076-2086, or 2089-2090.
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`To start, Patent Owner has not shown that the testimony of Apple’s
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`employees from the ITC proceeding qualifies as admissible statements of the
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`opposing party. Federal Rule of Evidence (“FRE”) 801(d)(2)(C) requires that an
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`opposing party statement be made by a person whom the party authorized to make
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`a statement on the subject. FRE 801(d)(2)(D) requires that an opposing party
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`statement be made by a party’s agent or employee on a matter within the scope of
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`that relationship. Patent Owner has not shown that either provision is applicable.
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`In particular, Patent Owner relies on testimony of Apple employees from the
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`ITC proceeding to contend that a POSITA would not have reasonably expected
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`success in determining oxygen saturation at the wrist before the critical date of the
`1
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`’745 Patent. POR, 30-40; Sur-Reply, 19-31. But Apple’s employees did not
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`testify “on the subject” of a POSITA’s reasonable expectation of success. Even if
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`they had, a POSITA’s reasonable expectation of success is not a matter that falls
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`within the scope of the employment relationship between Apple and the witnesses
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`from the ITC proceeding. APPLE-1042, ¶¶39-42. As Dr. Anthony explained, the
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`employees testified at the ITC regarding their experiences developing pulse
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`oximetry for the Apple Watch. Id. None of the employee testimony identified at
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`page 7 of the Opposition was offered responsive to questioning framed to elicit
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`testimony about a POSITA’s view of expectation of success. Opp., 7.
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`Patent Owner’s position is further undermined by its own characterization of
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`the employee testimony as “statements of the declarants’ then-existing state of
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`mind” and statements concerning “what they thought about pulse oximetry at the
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`wrist. Opp., 10. But testimony regarding the employees’ alleged states of mind is
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`not the same as whether a POSITA reasonably would have expected success in
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`determining oxygen saturation at the wrist.
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`Indeed, no record evidence establishes that any of the employee witnesses
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`were aware of all (or even any) of the prior art cited by Petitioner in this
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`proceeding, which confirms widespread knowledge and feasibility of determining
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`oxygen saturation at the wrist before the ’745 Patent. APPLE-1042, ¶¶27-34. The
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`knowledge of any individual person is necessarily limited, but the law charges the
`2
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`POSITA with knowledge of all the prior art. No individual testifying as to their
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`own personal state of mind (as Masimo alleges) could possibly know of all the
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`prior art of which the POSITA would have known. In re Carlson, 983 F.2d 1032,
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`1037-38 (Fed. Cir. 1993) (a POSITA “is charged with knowledge of all the
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`contents of the relevant prior art” and “is presumed to know all the pertinent prior
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`art”); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Simply because
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`witnesses may be employees of a party-opponent does not exempt Patent Owner
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`from establishing that the witnesses’ statements fall within the contours of FRE
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`801(d)(2). Masimo has failed to do so.
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`Exhibits 2074, 2076-2086, or 2089-2090 also do not fall under the “residual
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`exception” of Federal Rule of Evidence 807. The residual exception to the hearsay
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`rule is to be reserved for “exceptional cases,” and is not “a broad license on trial
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`judges to admit hearsay statements that do not fall within one of the other
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`exceptions.” Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996).
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`Patent Owner has not established that these exhibits clear this high bar.
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`Exhibits 2074, 2076-2086, and 2089-2090 also are not admissible under
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`FRE 106. Contrary to assertions in the Opposition (Opp., 11-12), FRE 106 states
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`that “If a party introduces all or part of a writing or recorded statement, an adverse
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`party may require the introduction, at that time, of any other part.” Here, Patent
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`Owner submitted Exhibits 2074, 2076-2086, and 2089-2090. Patent Owner cannot
`3
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`rely on Petitioner’s lack of objection to Exhibit 2008 to grant admissibility to
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`additional portions of ITC testimony. Patent Owner is not “an adverse party” in
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`this sense, but rather is the party that submitted Exhibit 2008 on its own accord.
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`B.
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`Paragraphs 22-28, 30-33, 53, 73 of Exhibit 2070 and 32, 44, 51, 57,
`64, and 81-95 of Exhibit 2100 should be excluded
`Patent Owner fails to refute Petitioner’s showing that Dr. Duckworth’s
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`statements in the identified portions of Exhibits 2070 and 2100 should be excluded.
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`Paragraphs 22-28, 30-33, 53, 73 of Exhibit 2070 and paragraphs 32, 44, 51, 57, 64,
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`and 81-95 of Exhibit 2100 contain testimony from Dr. Duckworth regarding the
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`exhibits from the ITC proceeding that contain hearsay, and which are inadmissible
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`for the reasons addressed above and in the MTE. Dr. Duckworth’s testimony
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`regarding these exhibits is inadmissible for similar reasons.
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`C.
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`Paragraphs 9, 17, 19, 20, 23, 26, 28, 32, 33, 48, 49, 64, and 69-71 of
`Exhibit 2100 should be excluded
`Patent Owner next fails to refute Petitioner’s showing that paragraphs 9, 17,
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`19, 20, 23, 26, 28, 32, 33, 48, 49, 64, and 69-71 should be excluded. Patent
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`Owner’s complaint that the MTE “identifies only two statements” from the fifteen
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`identified paragraphs of Exhibit 2100 where Dr. Duckworth did not support his
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`conclusory statements only serve to highlight the exemplary nature of the
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`identified statements. The fact that Dr. Duckworth made numerous assertions for
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`which he provided no support across fifteen paragraphs of his declaration does not
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`4
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`require Petitioner to replicate every unsupported assertion made by Dr. Duckworth
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`Case No. IPR2022-01465
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`Attorney Docket: 50095-0045IP3
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`in a page-limited motion. Rather, the onus was on Dr. Duckworth to provide
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`support in the first place. The fact remains that the assertions made in the
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`identified paragraphs of Exhibit 2100 provide no supporting citation and should be
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`excluded.
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`III. CONCLUSION
`In view of the foregoing, Exhibits 2074, 2076-2086, and 2089-2090, and the
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`identified portions of Exhibits 2070 and 2100 should be excluded from evidence.
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`Respectfully submitted,
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`Dated 11/13/2023
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`/Nicholas W. Stephens/
`W. Karl Renner, Reg. No. 41,265
`Nicholas Stephens, Reg. No. 74,320
`Andrew B. Patrick, Reg. No. 63,471
`Kim Leung, Reg. No. 64,399
`Patrick J. Bisenius, Reg. No. 63,893
`Patrick J. King, Reg. No. 60,816
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
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`5
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`Case No. IPR2022-01465
`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 November 13, 2023 a complete and entire copy of this Reply in
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`Support of Petitioner’s Motion to Exclude was provided via email to the Patent
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`Owner by serving the email 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
`
`E-mail: AppleIPR745-3@knobbe.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
`
`
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