Case No. IPR2020-01033
`US Patent No. RE47,249
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`Paper No. 34
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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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`_____________________
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`SOTERA WIRELESS, INC.
`Petitioner
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`v.
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`MASIMO CORPORATION
`Patent Owner
`
`Case IPR2020-01033
`US Patent No. RE47,249
`_____________________
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`__________________________________________________________________
`
`PETITIONER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 41.155(c) AND 42.64
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`US Patent No. RE47,249
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`Paper No. 34
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SOTERA WIRELESS, INC.
`Petitioner
`
`v.
`
`MASIMO CORPORATION
`Patent Owner
`
`Case IPR2020-01033
`US Patent No. RE47,249
`_____________________
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`__________________________________________________________________
`
`PETITIONER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §§ 41.155(c) AND 42.64
`
`
`
`
`
`Case No. IPR2020-01033
`Patent No. RE47,249
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`TABLE OF CONTENTS
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`MOTION AND INTRODUCTION ........................................................................... 1
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`ARGUMENT ............................................................................................................. 1
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`Page
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`A.
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`Certain Portions of Exhibit 2017 Should Be Excluded Under
`F.R.E. 402 Because They are Irrelevant ........................................................1
`A Portion of Exhibit 2022 Should Be Excluded Under F.R.E. 403
`Because It is Confusing .....................................................................................3
`Certain Portions of Exhibit 2022 Should Be Excluded Under
`F.R.E. 402 Because They are Irrelevant ........................................................5
`CONCLUSION .......................................................................................................... 6
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`B.
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`C.
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`Case No. IPR2020-01033
`Patent No. RE47,249
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`SNF Holdings, Co. v. BASF Corp.,
`IPR2015-00600, Paper 49 (P.T.A.B. Aug. 2, 2016) .............................................. 6
`Rules
`F.R.E. 402 ..............................................................................................................1, 6
`F.R.E. 403 ..............................................................................................................4, 5
`Regulations
`37 C.F.R. § 41.155(c) ................................................................................................. 1
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`Rules of Practice for Trials Before the Patent Trial and Appeal Board,
`77 Fed. Reg. 48612 (Aug. 14, 2012) ...................................................................... 6
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`ii
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`Case No. IPR2020-01033
`Patent No. RE47,249
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`MOTION AND INTRODUCTION
`Pursuant to 37 C.F.R. §§ 41.155(c) and 42.64(c), Petitioner Sotera Wireless,
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`Inc. (“Sotera”) moves to exclude certain portions of the following:
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`EX2017
`Deposition transcript of George Yanulis, Vol. 1
`EX2022
`Deposition transcript of Bryan Bergeron
`Set forth below is the identification of where in the record the above-listed exhibits
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`were relied upon by Patent Owner Masimo Corporation (“Masimo”), where in the
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`record Sotera objected to each exhibit, and Sotera’s explanation of each objection.
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`ARGUMENT
`A. Certain Portions of Exhibit 2017 Should Be Excluded Under F.R.E. 402
`Because They are Irrelevant
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`The following portions of Dr. Yanulis’ deposition transcript (Vol. 1) should
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`be excluded because they are inadmissible under F.R.E. 402.
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`EX2017 Excerpt
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`Masimo reliance on excerpt
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`100:8-15
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`123:18-124:5
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`145:16-146:7
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`Paper 23 at 3, 6, 13, and 66
`Paper 30 at 6-7 and 9
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`Paper 23 at 7 and 21
`Paper 30 at 7-9
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`Paper 23 at 8
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`Masimo relied upon the deposition transcript of Sotera’s expert witness, Dr.
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`George Yanulis, in portions of its Patent Owner’s Response (Paper 23) and its Sur-
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`Patent No. RE47,249
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`Reply (Paper 30) at the cited portions in the chart above. Sotera timely objected to
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`this testimony during the deposition as having improper form. EX2017 at 100:14,
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`123:19, 145:20, and 146:4.
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`When asking the objectionable questions, Patent Owner used the word
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`“defined” to modify the claim language “period of time.” However, the claims do
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`not require a defined period of time. Patent Owner thus asked a question having no
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`basis in the claim language. Because “defined” in the context of Patent Owner’s
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`questions is not relevant to the current proceedings, the testimony should be
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`stricken.
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`Patent Owner argued that the phrase “parameter specific alarm delay or
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`suspension period of time” should be construed to require that the claimed period
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`of time must be “predetermined,” or occasionally “fixed.” See, e.g., Paper 5 at 1, 3,
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`7, 10, 11, 12, and 24. Until the time of Dr. Yanulis’ deposition, Patent Owner had
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`repeatedly argued that the RE249 patent discloses and claims “predetermined”
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`amounts of time. Id. Nowhere in the Patent Owner’s Preliminary Response,
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`however, did Patent Owner take the position that the claims required a “defined”
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`amount of time.
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`Only after the Board rejected Patent Owner’s proposed claim construction of
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`“predetermined” did Masimo adopt the term “defined” in connection with the
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`claimed alarm delay or suspension periods of time. Paper 11 at 11-13. Instead,
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`Patent No. RE47,249
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`Masimo’s counsel repeatedly used the term “defined” when questioning Dr.
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`Yanulis about these time periods. As described in Petitioner’s Reply (Paper 26),
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`the word “defined” does not mean “predetermined” and counsel for Patent Owner
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`never explained how he was using the term. Because Patent Owner’s counsel used
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`a term that is not relevant to the dispute between the parties, the testimony should
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`be excluded.
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`Moreover, using the word “defined” to modify the claim language is an
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`improper question because it finds no basis in the claim language. Hence, the
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`question, as posed to Dr. Yanulis, was inherently confusing because Dr. Yanulis
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`could have had any frame of reference for what a “defined” period of time would
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`be in the context of the RE249 Patent or Patent Owner’s counsel’s questions,
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`particularly given that the RE249 Patent never uses this language to describe a
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`period of time or elucidates it in reference to a period of time. These questions are
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`unreasonable as well as irrelevant.
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`B. A Portion of Exhibit 2022 Should Be Excluded Under F.R.E. 403
`Because It is Confusing
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`The following portion of Dr. Bergeron’s deposition transcript should be
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`excluded because it is inadmissible under F.R.E. 403.
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`EX2022 Excerpt
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`Masimo reliance on excerpt
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`65:20-66:6
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`Paper 30 at 6
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`Patent No. RE47,249
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`Masimo relied upon the deposition transcript of Sotera’s expert witness, Dr.
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`Bryan Bergeron in portions of its Patent Owner’s Sur-Reply (Paper 30) at the cited
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`portions in the chart above. Sotera timely objected to this testimony during the
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`deposition as having improper form. EX2022 at 66:4.
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`The question is objectionable because it is compound, and as such, it is
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`unclear which question Dr. Bergeron was answering. For ease of review, the
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`question and answer are reproduced below:
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`The “question” to which Dr. Bergeron answered “I’m going to agree with
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`that,” was actually 2 questions. First counsel asked whether “activation of the
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`alarm differs from simply meeting the alarm activation threshold” (EX2022 at
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`65:20-21) and then asked whether “the claim language tells us the alarm is not
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`Patent No. RE47,249
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`activated unless the alarm activation threshold is still satisfied subsequent to
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`delaying for the period of time.” (Id. at 65:22-66:3). It is not clear from the
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`compound questions and subsequent answer which of the two questions Dr.
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`Bergeron was agreeing with, if he was agreeing with one question and not the
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`other, or if he was agreeing to both. Under F.R.E. 403, evidence that is confusing
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`should be excluded.
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`C. Certain Portions of Exhibit 2022 Should Be Excluded Under F.R.E. 402
`Because They are Irrelevant
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`The following portions of Dr. Bergeron’s deposition transcript should be
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`excluded because it is inadmissible under F.R.E. 402.
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`EX 2022 Excerpt
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`Masimo reliance on excerpt
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`162:5-164:7
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`Paper 30 at 8
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`Masimo relied upon the deposition transcript of Sotera’s expert witness, Dr.
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`Bryan Bergeron in portions of its Patent Owner’s Sur-Reply (Paper 30) at the cited
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`portions in the chart above. Sotera timely objected to this testimony during the
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`deposition as having improper form. EX2022 at 163:13-14.
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`This line of questioning was directed to Dr. Bergeron on the topic of
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`whether Dr. Yanulis should have filed an errata sheet explaining whether he was
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`confused about certain questions. Such testimony should be excluded as irrelevant
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`under F.R.E. 402. Any determination of the propriety and scope of an errata sheet
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`should be left to the Board and not to a subject matter expert. Further, such an
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`errata sheet would be deemed improper by the Board as it would likely be deemed
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`a material change to the testimony. As the Board noted in SNF Holdings, Co. v
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`BASF Corp., “errata sheets that seek to change the substantive testimony of a
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`witness are disfavored.” IPR2015-00600, Paper 49 at 21 (P.T.A.B. Aug. 2, 2016)
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`(citing See Rules of Practice for Trials Before the Patent Trial and Appeal Board,
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`77 Fed. Reg. 48612, 48642 (Aug. 14, 2012)). As such, any testimony from Dr.
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`Bergeron concerning whether Dr. Yanulis should or should not have filed an errata
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`is entirely irrelevant.
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`CONCLUSION
`For the reasons stated herein, Petitioner Sotera Wireless, Inc. respectfully
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`requests that the above-referenced portions of the above-referenced Exhibits be
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`excluded.
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`Dated: August 11, 2021
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`Respectfully submitted,
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`By: /Rudolph A. Telscher, Jr./
`Rudolph A. Telscher, Jr., Reg. No. 36,032
`Daisy Manning, Reg. No. 66,369
`Nathan P. Sportel, Reg. No. 67,980
`Jennifer E. Hoekel, Reg. No. 48,330
`HUSCH BLACKWELL LLP
`190 Carondelet Plaza, Suite 600
`St. Louis, MO 63105
`(314) 480-1500 Telephone
`(314) 480-1505 Facsimile
`PTAB-RTelscher@huschblackwell.com
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`Case No. IPR2020-01033
`Patent No. RE47,249
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`PTAB-DManning@huschblackwell.com
`Nathan.Sportel@huschblackwell.com
`PTAB-JHoekel@huschblackwell.com
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`Attorneys for Petitioner
`Sotera Wireless, Inc.
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`Case No. IPR2020-01033
`Patent No. RE47,249
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 11th day of August 2021, the foregoing was
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`served via electronic mail to the attorneys of record for the RE249 patent at the
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`following address:
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`Stephen W. Larson (Reg. No. 69,133), 2swl@knobbe.com
`Jacob Peterson, (Reg. No. 65,096), 2jup@knobbe.com
`Irfan A. Lateef (Reg. No. 51,922), 2ial@knobbe.com
`Brian C. Claassen (Reg. No.63,051), 2bcc@knobbe.com
`Jarom D. Kelser (Reg. No. 57,046), 2jzk@knobbe.com
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice) jeremiah.helm@knobbe.com
`SoteraIPR249@knobbe.com
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
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`By:
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`/Rudolph A. Telscher, Jr./
`Rudolph A. Telscher, Jr.
`Reg. No. 36,032
`Lead Counsel for Petitioner
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`HB: 4823-5983-8454.1
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