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. 44: DENYING COMPLAINANTS’ MOTION IN LIMINE NO. 4 TO
`EXCLUDE APPLE WATCH SERIES 0 AS PRIOR ART TO THE
`’745 PATENT
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`(June 3, 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. 4 (the “Motion,” Docket No. 1276-040) to
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`preclude any evidence or arguments that the claims of the ’745 patent are invalid as anticipated
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`or rendered obvious by the Apple Watch Series 0.1 On May 24, 2022, Respondent Apple Inc.
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`(“Apple”) filed a response in opposition to the motion (“Opp.”).
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`Masimo seeks to preclude Apple from asserting the Apple Watch Series 0 as prior art to
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`the ’745 patent, because Apple first identified this prior art in its final invalidity contentions
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`served on February 11, 2022. See Motion Exhibit 2. Masimo further identifies several
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`documents related to the Apple Watch Series 0 that were produced late in discovery and a
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`physical Apple Watch Series 0 that was not produced until the last day of fact discovery. Motion
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`at 3-5. Masimo submits that it was prejudiced by Apple’s late identification of this prior art
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`because there was insufficient time to take discovery and Apple did not identify fact witnesses
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`with knowledge of the Apple Watch Series 0 in its Notice of Prior Art, EDIS Doc. ID 763304
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`1 On May 31, 2022, Masimo filed a Supplement (EDIS Doc. ID 771856, “Supp.”), attaching exhibits that
`were cited in the Motion.
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`(Feb. 15, 2022). Id. at 5-7. Masimo further submits that Apple’s invalidity expert, Majid
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`Sarrafzadeh, did not rely on a physical Apple Watch Series 0 and argues that he should be
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`precluded from doing so at the hearing. Id. at 8.
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`In opposition, Apple submits that its invalidity contentions identifying the Apple Watch
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`Series 0 were timely served in accordance with the Procedural Schedule. Opp. at 4-5. Apple
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`explains that it did not identify the Apple Watch Series 0 earlier in the investigation because the
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`invalidity contentions rely on an argument that was raised in Markman briefing with respect to
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`the term “second shape.” Id. at 1-2. Apple submits that there has been no prejudice to Masimo
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`because Masimo was able to depose Apple engineers involved in the Apple Watch Series 0
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`design. Id. at 5-6, 8-9. Apple argues that precluding evidence regarding the Apple Watch Series
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`0 would be prejudicial to Apple, because Apple relied on Masimo’s decision not to file a motion
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`to strike Apple’s invalidity contention before agreeing to limit the number of prior art references
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`it was asserting. Id. at 6-7. Apple submits that almost all of the exhibits regarding the Apple
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`Watch Series 0 were produced before the close of fact discovery and that additional exhibits
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`relied upon by Dr. Sarrafzadeh are publicly available documents. Id. at 7-9. Apple represents
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`that Dr. Sarrafzadeh’s opinions regarding the Apple Watch Series 0 are not based on any
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`physical exhibit but instead rely on documentation and photographs. Id. at 9-10.
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`In consideration of the parties’ arguments, the undersigned finds that Apple should not be
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`precluded from presenting evidence of the Apple Watch Series 0 as prior art to the ’745 patent.
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`Apple’s invalidity contentions were timely disclosed on the deadline for final contentions in
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`accordance with the Procedural Schedule. There is no evidence that Apple delayed this
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`contention to prevent Masimo from obtaining discovery regarding the Apple Watch Series 0—
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`Apple states that its identification of the Apple Watch Series 0 as prior art was based on the
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`position taken by Masimo in Markman briefing with respect to the term “second shape.” See
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`Opp. at 1-2.2 Moreover, the record shows that Masimo was able to pursue discovery regarding
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`the Apple Watch Series 0 during the depositions of Apple witnesses Vivek Venugopal, Ueyn
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`Block, and Brian Land after Apple’s final invalidity contentions were served. See, e.g., Opp.
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`Exhibit B (Venugopal Dep. Tr.) at 236:15-239:19; Opp. Exhibit C (Land Dep. Tr.) at 39:15-
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`40:19; Opp. Exhibit D (Block Dep. Tr.) at 31:1-32:7. All of the exhibits that Apple intends to
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`rely on with respect to the Apple Watch Series 0 were produced during fact discovery, except for
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`RX-0023, which is a public website cited by URL in one of Apple’s expert reports. See Opp. at
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`8.3 Apple has confirmed that Dr. Sarrafzadeh is not relying on an examination of the physical
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`Apple Watch Series 0 for his opinions. See id. at 9. Accordingly, there is nothing identified in
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`Masimo’s motion that warrants exclusion.
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`For the reasons discussed above, Masimo’s motion in limine no. 4 (1276-040) 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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`2 Masimo argues that its claim construction position on “second shape” was disclosed earlier in discovery,
`Motion at 8-9, but the dispute identified by Apple with respect to the meaning of this term is not apparent
`from any of Masimo’s earlier disclosures. See Opp. Exhibit A (emails between counsel in February 2022
`regarding claim construction).
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`3 Apple submits that RX-043 was cited by URL in Apple’s interrogatory responses with respect to
`prosecution laches, not for invalidity. Opp. at 8 n.2. Similarly, RX-431 and RX-432 were cited by URL
`in Apple’s non-infringement expert report. Id. Apple has confirmed that it will not rely on documents
`that were not on any exhibit list, and it has withdrawn RX-1235. Id. at 8 n.4.
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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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