PUBLIC VERSION
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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` Inv. No. 337-TA-1276
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`In the Matter of
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`CERTAIN LIGHT-BASED
`PHYSIOLOGICAL MEASUREMENT
`DEVICES AND COMPONENTS
`THEREOF
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`ORDER NO. 40: DENYING COMPLAINANTS’ MOTION IN LIMINE NO. 2 TO
`PRECLUDE EVIDENCE REGARDING INSUFFICIENTLY
`IDENTIFIED DEFENSES
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`(June 1, 2022)
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`On May 17, 2022, Complainants Masimo Corporation and Cercacor Laboratories, Inc.
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`(collectively, “Masimo”) filed a motion in limine no. 2 (the “Motion,” Docket No. 1276-041) to
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`preclude Respondent Apple Inc. (“Apple”) from presenting four allegedly undisclosed invalidity
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`defenses: (1) prior art that was not identified in Apple’s narrowed contentions; (2) a combination
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`of components for the “Kansas State 6D” prior art device; (3) a lack of enablement defense for
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`the ’501 and ’502 patents; and (4) an undisclosed invalidity theory for the “touchscreen”
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`limitation of the ’745 patent.1 On May 24, 2022, Apple filed a response in opposition to the
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`motion (“Opp.”).
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`1. Additional Prior Art Grounds
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`Masimo seeks to preclude Apple from relying on prior art references that were not
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`disclosed in the narrowed prior art grounds that Apple disclosed on April 29 and May 5, 2022, in
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`accordance with the narrowing of issues that was discussed with the Administrative Law Judge.
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`See Teleconference Tr. at 13:17-14:3, EDIS Doc. ID 769634 (Apr. 28, 2022) (ordering Apple to
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`1 On May 31, 2022, Masimo filed a Supplement (EDIS Doc. ID 771854, “Supp.”), attaching exhibits that
`were cited in the Motion.
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`PUBLIC VERSION
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`narrow its prior art grounds). In opposition, Apple submits that the additional prior art
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`references identified in its prehearing brief will not be relied upon as grounds for anticipation or
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`obviousness but will be used for other purposes, “including for the purposes of showing the state
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`of the art and/or describing the basis for a person of ordinary skill in the art’s motivation to
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`combine.” Opp. at 1-2. Apple argues that its reliance on prior art references for these other
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`purposes was not the subject of any order regarding narrowing and is consistent with Federal
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`Circuit law. Id. at 2-5.
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`In consideration of the parties’ arguments, the undersigned agrees with Apple that the
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`teleconference regarding narrowing did not address reliance on prior art for other purposes. This
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`issue was raised in Apple’s letter on April 22, 2022, but it was not discussed at the subsequent
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`teleconference. See Opp. Exhibit D at 2 n.2.2 Accordingly, Apple will not be precluded from
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`presenting evidence with respect to the additional prior art references identified in its prehearing
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`brief.
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`2. “Kansas State 6D” Prior Art
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`Masimo submits that Apple’s prehearing brief identifies three physical exhibits (RPX-6,
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`RPX-7, and RPX-33) as part of a prior art device designated as “Kansas State 6D,” arguing that
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`this is inconsistent with the way that this prior art was identified in Apple’s invalidity
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`contentions and expert report. See Motion at 4-7. In response, Apple submits that while no prior
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`art device was identified as “Kansas 6D” in its invalidity contentions, the relevant physical
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`exhibits (RPX-6, RPX-7, and RPX-33) were identified and disclosed as part of a collection of
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`components that were identified as “Kansas State 4.” See Opp. Exhibit E at 7, Exhibit F at 7. In
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`his expert report, Dr. Warren referred to a sensor head (RPX-6) as “Kansas State 6D,” but he
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`2 During the teleconference, the parties agreed that there was no dispute with respect to Apple’s definition
`of a prior art “ground.” Teleconference Tr. at 8:20-9:13, EDIS Doc. ID 769634 (Apr. 28, 2022).
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`also described the use of RPX-6 in combination with RPX-7 and RPX-33. See Opp., Exhibit A
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`¶ 177 (describing the RPX-6 sensor head), ¶¶ 1221-22 (describing the RPX-6 sensor head with
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`the RPX-7 data acquisition board), ¶ 1236 (describing “Kansas State 6D” used with Bluetooth
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`module RPX-33). Apple argues that these combinations of components in Dr. Warren’s expert
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`report represent different configurations of “Kansas State 6D.” Opp. at 7-8.
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`In consideration of the parties’ arguments, the undersigned finds that Apple should not be
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`precluded from identifying RPX-6, RPX-7, and/or RPX-33 as part of the “Kansas State 6D”
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`prior art. Although Dr. Warren’s expert report uses the label “Kansas State 6D” to refer to
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`RPX-6 alone, he also describes “Kansas State 6D” as “a sensor head, the associated data
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`acquisition board, and the affiliated LabVIEW VI (software program).” Opp., Exhibit A ¶ 1221.
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`He further discloses that “Kansas State 6D . . . could be used with Bluetooth modules to wireless
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`communicate with other devices.” Id. ¶ 1236. Whether the label “Kansas State 6D” applies to
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`RPX-6 alone or in combination with RPX-7 and/or RPX-33 is an issue of nomenclature rather
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`than substance—Dr. Warren clearly disclosed opinions based on combinations of these
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`components. At the hearing, the parties should make it clear what exhibits are being referenced
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`when discussing “Kansas State 6D,” but there is no basis for excluding Apple from introducing
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`evidence regarding RPX-6, RPX-7, or RPX-33.
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`3. Lack of Enablement for “Light Piping”
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`Masimo contends that Apple’s prehearing brief identifies a new theory of invalidity based
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`on lack of enablement with respect to “light piping” for claim 12 of the ’501 patent and claim 28
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`of the ’502 patent,3 which was not disclosed in Apple’s invalidity expert report. See Motion at
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`8-9. Masimo submits that the relevant portion of Dr. Warren’s expert report failed to disclose
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`3 Masimo’s motion also identifies claim 22 of the ’502 patent, but Apple submits that there is no lack of
`enablement contention regarding “light piping” for claim 22 of the ’502 patent, mooting the issue with
`respect to this claim. See Opp. at 8 n.3.
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`these opinions, and no lack of enablement opinion for claim 12 of the ’501 patent was identified
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`in his summary of conclusions. Id. (citing Supp., CX-0324C at ¶¶ 56, 1842). Masimo thus
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`argues that Dr. Warren should be precluded from offering any opinions at the hearing regarding
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`lack of enablement for “light piping” with respect to claim 12 of the ’501 patent or claim 28 of
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`the ’502 patent. Id. In response, Apple submits that Dr. Warren’s lack of enablement opinions
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`with respect to “light piping” for the ’501 patent and ’502 patent were disclosed in Dr. Warren’s
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`expert report with a reference to his opinions for the ’648 patent: “Furthermore, and as explained
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`in detail below with respect to claims 5, 23, and 24 of the ’648 patent, with respect to at least
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`claim 1 of the ’501 patent and claim 28 of the ’502 patent (and their dependent claims), the
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`patent specification provides little guidance regarding enablement with respect to designs to
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`address the issue of ‘light piping.’” Id. at ¶ 1842. Dr. Warren then discloses the substantive
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`bases for his lack of enablement opinions regarding the “light piping” limitation in the context of
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`the ’648 patent. Id. at ¶¶ 1888-92.
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`In consideration of the parties’ arguments, the undersigned finds that Dr. Warren’s “light
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`piping” lack of enablement opinions for the ’501 patent and ’502 patent were adequately
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`disclosed in his expert report. This opinion is clearly disclosed in the context of the ’648 patent,
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`which is referenced in the relevant paragraph of the report addressing the ’501 patent and ’502
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`patent. Id. at ¶¶ 1842, 1888-92. Accordingly, Masimo had sufficient notice of Dr. Warren’s
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`opinions on this issue and they will not be excluded. See, e.g., Certain Microfluidic Systems and
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`Components Thereof and Products Containing Same, Inv. No. 337-TA-1100, Order No. 38 at 3-
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`4, EDIS Doc. ID 671677 (Mar. 12, 2019) (finding sufficient notice of invalidity opinion that was
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`“disclosed in the context of another asserted patent.”).
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`4. “Touch-Screen” Limitation of ’745 Patent
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`Masimo contends that Apple’s prehearing brief identifies a new theory of invalidity with
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`respect to the “touch-screen” limitation of the ’745 patent, which was not disclosed in Apple’s
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`invalidity contentions or expert report. See Motion at 9-10. Apple submits that its prehearing
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`brief is consistent with the opinions disclosed in Dr. Sarrafzadeh’s expert report. Opp. at 9-10.
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`In consideration of the parties’ arguments, the undersigned agrees with Apple that these
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`invalidity theories were adequately disclosed in Dr. Sarrafzadeh’s expert report. The statement
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`regarding a touchscreen in Apple’s prehearing brief for limitation [20G] of the ’745 patent is
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`identical to the cited disclosure in Dr. Sarrafzadeh’s expert report. Compare Apple’s Corrected
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`Prehearing Brief4 at 162 (“Additionally, Series 0 has a touchscreen, just like all of Apple’s other
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`Watch and phone products.”) to Supp., CX-0321C at ¶ 599 (“Apple Watch Series 0 has a
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`touchscreen, just like all of Apple’s other watch and phone products.”). Similarly, the prehearing
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`brief arguments regarding a “secondary processing device” are substantially similar to the cited
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`disclosures in Dr. Sarrafzadeh’s expert report. Compare Apple’s Corrected Prehearing Brief at
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`182 (“Thus, a POSITA would have been motivated to wirelessly connect the wristband-type
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`wearable fitness monitor of Sarantos to a secondary processing device having a user interface
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`with a touch screen display as taught by Venkatraman”) to Supp., CX-0321C at ¶ 543 (“A
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`POSITA would have been motivated to wirelessly connect the wristband-type wearable fitness
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`monitor 200 of Sarantos to a secondary processing device as taught by Venkatraman.”); compare
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`Apple’s Corrected Prehearing Brief at 174 to Supp., CX-0321C at ¶ 237 (similar statements
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`regarding Iwamiya and “secondary processing device” of Venkatraman). These arguments were
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`clearly disclosed in Dr. Sarrafzadeh’s expert report, and Masimo has identified no basis for
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`exclusion.
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`4 Apple filed a corrected prehearing brief on May 27, 2022 (EDIS Doc. ID 771819).
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`PUBLIC VERSION
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`For the reasons discussed above, Masimo’s motion in limine no. 2 (1276-041) is hereby
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`DENIED.
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`This order has been issued with a confidential designation. Within seven days of the date
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`of this document, the parties shall submit a joint statement as to whether or not they seek to have
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`any portion of this document deleted from the public version. If the parties do seek to have
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`portions of this document deleted from the public version, they must submit a single proposed
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`public version of this order with any proposed redactions in the manner specified by Ground
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`Rule 1.9. To the extent possible, the proposed redacting should be made electronically, in a PDF
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`of the issued order, using the “Redact Tool” within Adobe Acrobat, wherein the proposed
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`redactions are submitted as “marked” but not yet “applied.” The submission shall be made by
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`email to Bhattacharyya337@usitc.gov and need not be filed with the Commission Secretary.
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`SO ORDERED.
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`___________________________________
`Monica Bhattacharyya
`Administrative Law Judge
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