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`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. 42: DENYING COMPLAINANTS’ MOTION IN LIMINE NO. 3 TO
`PRECLUDE ROBERT ROWE FROM TESTIFYING AT THE
`HEARING
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`(June 2, 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. 1276-035) to
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`preclude third-party witness Robert Rowe from offering any live testimony at the hearing. On
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`May 24, 2022, Respondents Apple Inc. (“Apple”) filed a response in opposition to the motion
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`(“Opp.”).
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`Masimo seeks to preclude Robert Rowe, a third party, from “offering further fact or any
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`opinion testimony” at the hearing. Mot. at 1. Mr. Rowe is one of the named inventors of the
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`“Lumidigm” reference (U.S. Patent No. 7,620,212) asserted by Apple regarding invalidity and
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`was deposed during the course of this investigation. Masimo contends that the parties agreed
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`that Mr. Rowe’s designated deposition testimony could be used during the hearing in lieu of live
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`testimony. Id. at 2. Masimo states that any additional fact testimony from Mr. Rowe is
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`unnecessary and repetitious because of the parties’ agreement, and that any opinion testimony
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`from Mr. Rowe would be untimely and violate Ground Rule 7, which requires a written report
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`from expert witnesses. See id. at 2-3, 6-7. Masimo states that any hearing testimony going
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`beyond the deposition designations would be prejudicial to Masimo because its expert did not
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`PUBLIC VERSION
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`have an opportunity to consider such testimony in his rebuttal report. Id. at 5. Masimo also
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`argues that additional testimony from Mr. Rowe is unwarranted because “Apple’s defense must
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`be based on the asserted publication itself.” Id. at 3. Masimo states that “[t]he likelihood of
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`Apple using Rowe’s testimony to unfairly surprise Masimo with new facts or untimely opinions
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`at the Hearing warrants preclusion of Rowe’s Hearing testimony now.” Id. at 2-3.
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`In opposition, Apple argues that inventors’ factual testimony about their patents is
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`relevant and admissible. See Opp. at 3-4. Apple states that it will ask Dr. Rowe about “his
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`background, his work at Lumidigm, the work underlying the Lumidigm patent, and the
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`disclosures in that patent.” Id. at 3. Apple states that Masimo intends to call its own named
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`inventor, Mr. Joe Kiani, as a fact witness to testify regarding “the development of the subject
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`matter disclosed in the ‘501, ‘502, ‘648 patents.’” Id. at 5 (citing Compl. Pre-Hearing Stmt at 5
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`(EDIS Doc. ID 770755)). Apple further argues that Masimo will have the opportunity to object
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`to or move to strike any testimony at the hearing. Id. at 5-6. Apple contends that it is not
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`circumventing any agreement with Masimo regarding the use of deposition testimony because
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`Apple never waived its right to call Dr. Rowe as a live witness. Id. at 6-7. Apple states that it
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`“intends to present Dr. Rowe’s testimony live, at the hearing, rather than by deposition.” Id. at 7.
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`Upon review of the parties’ arguments, the undersigned finds that Mr. Rowe shall not be
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`precluded from testifying at the hearing. Inventor testimony regarding the inventor’s own factual
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`knowledge of a prior art patent can be admissible. See, e.g., CertusView Techs., LLC v. S&N
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`Locating Servs., LLC, No. 2:13cv346, 2016 WL 6915303, at *1 (E.D. Va. Mar. 7, 2016)
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`(permitting inventor of prior art to “testify as a lay witness and present evidence that is
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`‘rationally based on [his] perception’ regarding his inventions and patents”) (citing F.R.E. 701);
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`Knowles Elec., LLC v. Microtronic U.S., Inc., No. 99C4681, 2000 WL 310305, at *2 (N.D. Ill.
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`PUBLIC VERSION
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`2000) (permitting testimony by inventors of prior art patents regarding “their contributions to the
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`prior art” and “the design and mechanics of his particular contribution to the prior art”).
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`However, Mr. Rowe’s testimony must be limited to factual testimony, based on his personal
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`knowledge, and may not include expert opinion. See Verizon Services Corp. v. Cox Fibernet
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`Virginia, Inc., 602 F.3d 1325, 1340 (Fed. Cir. 2010) (“[t]he district court did not abuse its
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`discretion in limiting inventor testimony to factual testimony that did not require expert
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`opinion”); Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1375 (Fed. Cir. 2008) (no abuse of
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`discretion where district court permitted testimony from prior art author but limited its scope to
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`exclude expert opinion). Thus, any questions regarding the disclosures of the Lumidigm
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`reference must be limited to Mr. Rowe’s personal and factual knowledge regarding the reference,
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`and may not seek opinion testimony regarding how one of ordinary skill in the art would
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`interpret any particular disclosures. Mr. Rowe also cannot provide comparisons of the patents-
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`at-issue to the prior art. See CertusView, 2016 WL 6915303, at *1 (prior art inventor cannot
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`provide opinion testimony regarding the claims at issue).
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`Masimo’s concern about prejudice does not justify barring Apple’s ability to call Mr.
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`Rowe as a witness and, as Apple notes, Masimo will have the opportunity to object to improper
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`questions or testimony at the hearing. Moreover, Masimo had an opportunity to question Mr.
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`Rowe during his deposition. See Mot. Ex. 2 at 115-153. Masimo also has not shown that Apple
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`waived its ability to call Mr. Rowe live at the hearing by virtue of an agreement between the
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`parties regarding his deposition transcript.
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`In accordance with the above, Apple’s motion in limine no. 3 (1276-035) is hereby
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`DENIED.
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`PUBLIC VERSION
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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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