Filed: October 8, 2021
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1521-628@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01521
`U.S. Patent 10,292,628
`
`
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`
`
`
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1521-628@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01521
`U.S. Patent 10,292,628
`
`
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`
`
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Masimo Corporation objects
`
`as follows to the admissibility of evidence served with Petitioner’s reply. Patent
`
`Owner reserves the right to: (1) timely file a motion to exclude these objectionable
`
`exhibits or portions thereof; (2) challenge the credibility and/or weight that should
`
`be afforded to these exhibits, whether or not Patent Owner files a motion to
`
`exclude the exhibits; (3) challenge the sufficiency of the evidence to meet
`
`Petitioner’s burden of proof on any issue, including, without limitation, whether
`
`Petitioner met its burden to prove the prior art status of the alleged prior art on
`
`which it relies, whether or not Patent Owner has objected to, or files a motion to
`
`exclude, the evidence; and (4) cross examine any Petitioner declarant within the
`
`scope of his or her direct testimony that relates to these exhibits, without regard to
`
`whether Patent Owner has objected to the testimony or related exhibits or whether
`
`the testimony or related exhibits are ultimately found to be inadmissible.
`
`
`Exhibit Number and
`Description
`Exhibit 1011 U.S. Pat. No.
`6,669,632 Nanba
`
`Objections
`
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`
`-1-
`
`
`
`Exhibit 1045 Analysis of the
`Dispersion of Optical Plastic
`Materials
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Incomplete, Irrelevant, Misleading (FRE 106,
`Exhibit 1044 Refractive Indices
`401, 403):
`of Human Skin Tissues at Eight
`Wavelengths
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Masimo’s objections to Ex. 1047 are set forth
`below. To the extent Dr. Kenny’s declaration
`incorporates objectionable material in the cited
`paragraphs below in additional paragraphs or
`sections, Masimo’s objections apply with equal
`force to those additional paragraphs or sections.
`In addition, Masimo objects because declarant’s
`testimony improperly relies on new evidence
`and arguments not presented in connection with
`Petitioner’s petition and does not respond to
`arguments raised in Patent Owner’s responsive
`
`Exhibit 1046 Noninvasive Pulse
`Oximetry
`Utilizing
`Skin
`Reflectance
`Photoplethysmography
`
`Second
`1047
`Exhibit
`Declaration of Dr. Thomas W.
`Kenny
`
`-2-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`papers (37 C.F.R. § 42.23) (see e.g., ¶¶3-44).
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`¶¶3-4 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for
`which they are cited and mischaracterize the
`teachings of Exs. 1003, 1008, 1041, 1042, and
`the Patent Owner Response.
`¶6 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1046, 2012, 2020.
`and
`¶¶9-10
`are misleading,
`incomplete,
`irrelevant because they lack support for the
`contentions for which
`they are cited and
`mischaracterize the teachings of Exs. 1043,
`1049, 1050, 2012.
`¶18 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1044, 1045, 2012.
`¶21 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1044, 1045.
`incomplete, and
`¶¶23-27 are misleading,
`irrelevant because they lack support for the
`contentions for which
`they are cited and
`mischaracterize the teachings of Exs. 1001,
`1008, 1041, 1042, and
`the Patent Owner
`Response.
`incomplete, and
`¶¶30-32 are misleading,
`irrelevant because they lack support for the
`contentions for which
`they are cited and
`mischaracterize the teachings of Exs. 1003,
`1040, 1041, 1043, 1049, 1052, 2020.
`¶36 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`
`-3-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`which it is cited and mischaracterizes the
`teachings of Ex. 1041.
`¶37 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1003, 1048.
`¶38 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1010, 1011.
`incomplete, and
`¶¶40-41 are misleading,
`irrelevant because they lack support for the
`contentions for which
`they are cited and
`mischaracterize the teachings of Exs. 1003,
`1008, 1041, and the Patent Owner Response.
`¶43 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 2012.
`¶46 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1006, 1008.
`¶48 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1008.
`¶52 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1014
`¶56 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Exs. 1001, 1050.
`¶58 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`
`-4-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`teachings of Ex. 1001
`¶59 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and mischaracterizes the
`teachings of Ex. 1050.
`Improper Testimony by Expert Witness
`(FRE 702):
`¶¶5, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17, 20, 21,
`22, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38,
`39, 40, 42, 44, 45, 47, 49, 50, 51, 52, 54, 55, 57,
`60, 61, 62 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`its previously
`Masimo
`incorporates herein
`served objections to this declaration (Ex. 1003
`in IPR2020-01539).
` In addition, Masimo
`provides the following further objections to Ex.
`1048.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`
`Exhibit 1048 Declaration of Dr.
`Thomas W. Kenny
`from
`IPR2020-01539
`
`-5-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Admissibility (FRE 1002, 1003):
`Exhibit 1049 Eugene Hecht
`Optics 4th Ed. 2002
`This exhibit is an inadmissible copy because the
`exhibit as
`filed contains
`illegible and/or
`inaccurate reproductions of text and/or figures.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`Admissibility (FRE 1002, 1003):
`This exhibit is an inadmissible copy because the
`exhibit as
`filed contains
`illegible and/or
`inaccurate reproductions of text and/or figures.
`Incomplete, Irrelevant, Misleading (FRE 106,
`401, 403):
`As used by Petitioner, this document does not
`stand for the proposition for which it is cited and
`the portion of this document cited by Petitioner
`provides an incomplete characterization that,
`when taken in isolation, is misleading in the
`manner in which it is used, and confuses issues
`in the case.
`
`Exhibit 1052 Eugene Hecht
`Optics 2nd Ed. 1990
`
`
`
`Dated: October 8, 2021
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`
`-6-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`CERTIFICATE OF SERVICE
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of PATENT OWNER’S
`
`OBJECTIONS TO EVIDENCE is being served electronically on October 8,
`
`2021, to the e-mail addresses shown below:
`
`W. Karl Renner, Reg. No. 41,265
`Roberto J. Devoto, Reg. No. 55,108
`Hyun Jin In, Reg. No. 70,014
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0008IP1@fr.com
`Email: PTABInbound@fr.com, axf-ptab@fr.com; devoto@fr.com;
`in@fr.com
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Attorney for Patent Owner
`Masimo Corporation
`
`54333549
`
`Dated: October 8, 2021
`
`
`
`-7-
`
`
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