Filed June 17, 2021
`
`By:
`
`On behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Jarom D. Kesler (Reg. No. 57,046)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2021-0208-266@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-00208
`Patent 10,258,266
`
`
`
`
`
`MASIMO OBJECTIONS TO ADMISSIBILITY OF APPLE EVIDENCE
`SUBMITTED BEFORE TRIAL INSTITUTION
`
`
`
`

`

`IPR2021-00208 – Patent 10,258,266
`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 the initial Petition. 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 1003 -
`Declaration of Dr. Kenny
`
`Objections
`
`Masimo’s objections to Ex. 1003 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.
`Incomplete, Irrelevant, Misleading (FRE 106, 401,
`403):
`¶¶21-22 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`
`-1-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`they are cited and they mischaracterize the teachings of
`Ex. 1001.
`
`¶41 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1001.
`
`¶42 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1019.
`
`¶50 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1001.
`
`¶52 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1001, 1006.
`
`¶53 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006.
`
`¶¶54-57 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1006.
`
`¶¶58-59 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1008.
`
`¶60 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`
`-2-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`and mischaracterizes the teachings of Exs. 1001, 1008.
`
`¶¶61-62 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1008.
`
`¶¶63-64 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1008, 1014.
`
`¶¶65-67 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1015, 1024, 1025.
`
`¶68 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006.
`
`¶70 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1008.
`
`¶71 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.
`
`¶72 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,
`1010.
`
`¶73 is misleading, incomplete, and irrelevant because it
`
`-3-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1006, 1008.
`
`¶76 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.
`
`¶77 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1008.
`
`¶78 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1008.
`
`¶80 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1015.
`
`¶81 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1008.
`
`¶82 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006.
`
`¶84 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006.
`
`¶¶85-93 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`
`-4-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`Exs. 1006, 1008, 1009, 1023.
`
`¶¶94-95 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1015.
`
`¶¶96-97 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1016.
`
`¶98 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,
`1018.
`
`¶99 is misleading, incomplete, and irrelevant because it
`lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006, 1008.
`
`¶100 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006.
`
`¶101 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1001.
`
`¶¶102-103 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1008.
`
`¶105 is misleading, incomplete, and irrelevant because
`
`-5-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1006, 1008.
`
`¶¶108-109 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1006.
`
`¶¶110-112 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1015.
`
`¶113 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.
`
`¶¶114-115 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1008.
`
`¶116 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006.
`
`¶118 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.
`
`¶119 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.
`
`¶124 is misleading, incomplete, and irrelevant because
`
`-6-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1006, 1008.
`
`¶125 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.
`
`¶126 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1006, 1014.
`
`¶¶127-128 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1014.
`
`¶131 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1015, 1025.
`
`¶132 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1015.
`
`¶133 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1015.
`
`¶¶134-143 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1008, 1015, 1023.
`
`¶144 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`
`-7-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`and mischaracterizes the teachings of Ex. 1015.
`
`¶¶145-148 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1015.
`
`¶150 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1008, 1015.
`
`¶152 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1015.
`
`¶153 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1001, 1008,
`1015.
`
`¶¶154-155 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1008.
`
`¶157 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Exs. 1008, 1015.
`
`¶¶160-162 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1015, 1025.
`
`¶¶163-164 are misleading, incomplete, and irrelevant
`
`-8-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Ex. 1015.
`
`¶¶166-167 are misleading, incomplete, and irrelevant
`because they lack support for the contentions for which
`they are cited and they mischaracterize the teachings of
`Exs. 1006, 1008, 1015.
`
`¶168 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1015.
`
`¶171 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006, 1008,
`1015.
`
`¶175 is misleading, incomplete, and irrelevant because
`it lacks support for the contentions for which it is cited
`and mischaracterizes the teachings of Ex. 1006, 1008,
`1015.
`
`Improper Testimony by Expert Witness (FRE 702):
`¶¶21-22 are not based on sufficient facts and data, and
`do not reliably apply facts and data using scientific
`principles.
`
`¶¶41-42 are not based on sufficient facts and data, and
`do not reliably apply facts and data using scientific
`principles.
`
`¶50 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`-9-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`
`¶¶71-81 are not based on sufficient facts and data, and
`do not reliably apply facts and data using scientific
`principles.
`
`¶¶86-93 are not based on sufficient facts and data, and
`do not reliably apply facts and data using scientific
`principles.
`
`¶95 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`¶¶98-99 are not based on sufficient facts and data, and
`do not reliably apply facts and data using scientific
`principles.
`
`¶¶101-103 are not based on sufficient facts and data,
`and do not reliably apply facts and data using scientific
`principles.
`
`¶105 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`¶112 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`¶113 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`¶124 is not based on sufficient facts and data, and does
`
`-10-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`
`Objections
`
`not reliably apply facts and data using scientific
`principles.
`
`¶¶125-129 are not based on sufficient facts and data,
`and do not reliably apply facts and data using scientific
`principles.
`
`¶¶135-143 are not based on sufficient facts and data,
`and do not reliably apply facts and data using scientific
`principles.
`
`¶¶146-148 are not based on sufficient facts and data,
`and do not reliably apply facts and data using scientific
`principles.
`
`¶150 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`¶¶153-155 are not based on sufficient facts and data,
`and do not reliably apply facts and data using scientific
`principles.
`
`¶157 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`¶¶161-162 are not based on sufficient facts and data,
`and do not reliably apply facts and data using scientific
`principles.
`
`¶175 is not based on sufficient facts and data, and does
`not reliably apply facts and data using scientific
`principles.
`
`-11-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`Exhibit 1008 - Certified
`English Translation of
`Inokawa and Translators
`Declaration
`Exhibit 1016 - “A
`Wearable Reflectance
`Pulse Oximeter for
`Remote Physiological
`Monitoring”
`(“Mendelson-2006”)
`
`Exhibit 1018 - “Acrylic:
`Strong, stiff, clear plastic
`available in a variety of
`brilliant colors”
`
`Exhibit 1019 - US Pat.
`No. 7,031,728 Beyer
`
`Objections
`
`Hearsay, Authenticity (FRE 802, 901):
`The exhibit includes out-of-court statements that are
`offered for the truth of the matter asserted and are
`asserted by a declarant who lacks personal knowledge.
`Incomplete,
`Irrelevant, Misleading, Hearsay,
`Authenticity (FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as
`used by Petitioner, provide an irrelevant, incomplete,
`and misleading characterization of the knowledge in the
`art as of the asserted date of the invention because
`Petitioner has not established it is prior art, and
`therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on
`relevance because Petitioner fails to establish it is prior
`art. Masimo also objects on the basis of authenticity
`Incomplete,
`Irrelevant, Misleading, Hearsay,
`Authenticity (FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as
`used by Petitioner, provide an irrelevant, incomplete,
`and misleading characterization of the knowledge in the
`art as of the asserted date of the invention because
`Petitioner has not established it is prior art, and
`therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on
`relevance because Petitioner fails to establish it is prior
`art. Masimo also objects on the basis of authenticity
`Incomplete, Irrelevant, Misleading (FRE 106, 401,
`403):
`This document, as used by Petitioner, provides an
`incomplete and misleading characterization of the
`knowledge in the art as of the asserted date of the
`invention and therefore is irrelevant and confuses the
`issues in the case. In addition, this exhibit is not cited
`in or part of any ground.
`
`-12-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`Exhibit 1020 - US Pat.
`No. 7,092,735 Osann, Jr.
`
`Exhibit 1021 - US Pat.
`No. 6,415,166 Van Hoy
`
`Exhibit 1022 -
`QuickSpecs; HP iPAQ
`Pocket PC h4150 Series
`
`Exhibit 1026 -
`Declaration of Jacob
`Munford
`
`Objections
`
`Incomplete, Irrelevant, Misleading (FRE 106, 401,
`403):
`This document, as used by Petitioner, provides an
`incomplete and misleading characterization of the
`knowledge in the art as of the asserted date of the
`invention and therefore is irrelevant and confuses the
`issues in the case. In addition, this exhibit is not cited
`in or part of any ground.
`Incomplete, Irrelevant, Misleading (FRE 106, 401,
`403):
`This document, as used by Petitioner, provides an
`incomplete and misleading characterization of the
`knowledge in the art as of the asserted date of the
`invention and therefore is irrelevant and confuses the
`issues in the case. In addition, this exhibit is not cited
`in or part of any ground.
`Incomplete,
`Irrelevant, Misleading, Hearsay,
`Authenticity (FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as
`used by Petitioner, provide an irrelevant, incomplete,
`and misleading characterization of the knowledge in the
`art as of the asserted date of the invention because
`Petitioner has not established it is prior art, and
`therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on
`relevance because Petitioner fails to establish it is prior
`art. Masimo also objects on the basis of authenticity.
`Hearsay, Authenticity (FRE 802, 901):
`The exhibit includes out-of-court statements that are
`offered for the truth of the matter asserted and are
`asserted by a declarant who lacks personal knowledge.
`
`-13-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple Inc. v. Masimo Corporation
`
`Exhibit Number and
`Description
`Exhibit 1029 -
`Wikipedia: The Free
`Encyclopedia,
`“Universal asynchronous
`receiver-transmitter”
`
`
`
`Dated: June 17, 2021
`
`Objections
`
`Irrelevant, Misleading, Hearsay,
`Incomplete,
`Authenticity (FRE 106, 401, 403, 802, 901):
`The portions of this document cited by Petitioner, as
`used by Petitioner, provide an irrelevant, incomplete,
`and misleading characterization of the knowledge in the
`art as of the asserted date of the invention because
`Petitioner has not established it is prior art, and
`therefore confuses the issues in the case. Masimo
`objects to this document as hearsay, and further on
`relevance because Petitioner fails to establish it is prior
`art. Masimo also objects on the basis of authenticity
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: /Jacob L. Peterson/
`Joseph R. Re (Reg. No. 31,291)
`Jarom D. Kesler (Reg. No. 57,046)
`Stephen W. Larson (Reg. No. 69,133)
`Jacob L. Peterson (Reg. No. 65,096)
`Customer No. 64,735
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`
`
`
`-14-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`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 MASIMO OBJECTIONS TO
`
`ADMISSIBILITY OF APPLE EVIDENCE SUBMITTED BEFORE TRIAL
`
`INSTITUTION is being served electronically on June 17, 2021, to the e-mail
`
`addresses shown below:
`
`W. Karl Renner
`Roberto J. Devoto
`Hyun Jin In
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR50095-0007IP1@fr.com
`PTABInbound@fr.com
`devoto@fr.com
`in@fr.com
`
`By: /Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`Dated: June 17, 2021
`
`
`
`35134326
`
`-15-
`
`