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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2021-00208
`Patent 10,258,266
`____________
`
`
`
`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
`PURSUANT TO 37 C.F.R. § 42.123
`
`
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`

`

`
`
`Case No. IPR2021-00208
`Attorney Docket: 50095-0007IP1
`
`APPLE-1001
`APPLE-1002
`
`APPLE-1003
`APPLE-1004
`APPLE-1005
`
`APPLE-1006
`APPLE-1007
`APPLE-1008
`
`EXHIBITS
`U.S. Patent No. 10,258,266 to Poeze, et al. (“the ’266 patent”)
`Excerpts from the Prosecution History of the ’266 patent (“the
`Prosecution History”)
`Declaration of Dr. Thomas W. Kenny
`Curriculum Vitae of Dr. Thomas W. Kenny
`Masimo Corporation, et al. v. Apple Inc., Complaint, Civil
`Action No. 8:20-cv-00048 (C.D. Cal.)
` U.S. Pub. No. 2002/0188210 (“Aizawa”)
`
`JP 2006-296564 (“Inokawa”)
` Certified English Translation of Inokawa and Translator’s
`Declaration
` U.S. Pat. No. 7,088,040 (“Ducharme”)
`APPLE-1009
` U.S. Pat. No. 8,177,720 (“Nanba”)
`APPLE-1010
`APPLE-1011 to 1013
`
`RESERVED
`APPLE-1014
` U.S. Pub. No. 2001/0056243 (“Ohsaki”)
`APPLE-1015
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation,
`vol. 22, No. 4, 1988; pp. 167-173 (“Mendelson-1988”)
` RESERVED
` RESERVED
`
`“Acrylic: Strong, stiff, clear plastic available in a variety of
`brilliant colors,” available at
`https://www.curbellplastics.com/Research-
`Solutions/Materials/Acrylic
`APPLE-1019 to 1022
`
`RESERVED
`
`APPLE-1016
`APPLE-1017
`APPLE-1018
`
`
`
`1
`
`

`

`
`APPLE-1023
`APPLE-1024
`
`Case No. IPR2021-00208
`Attorney Docket: 50095-0007IP1
`
` U.S. Pat. App. Pub. No. 2007/0145255 (“Nishikawa”)
`
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance
`Pulse Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th
`IEEE EMBS Annual International Conference, 2003; pp. 3016-
`3019 (“Mendelson-2003”)
` U.S. Pat. No. 6,801,799 (“Mendelson-’799”)
`APPLE-1025
` Declaration of Jacob Munford
`APPLE-1026
`APPLE-1027 to 1036
`RESERVED
`APPLE-1037
`Masimo Corporation, et al. v. Apple Inc., Second Amended
`Complaint, Civil Action No. 8:20-cv-00048 (C.D. Cal.)
`(Redacted)
` U.S. Patent No. 8,577,431 to Lamego et al. (“CIP Patent”)
`Order Re Motion to Stay in Masimo Corporation et al. v. Apple
`Inc., Case 8:20-cv-00048-JVS-JDE, October 13, 2020
`Declaration of Jacob Munford
`Declaration of Gordon MacPherson: Mendelson-2003
`
`APPLE-1038
`APPLE-1039
`
`APPLE 1040
`APPLE 1041
`
`
`
`2
`
`

`

`Case No. IPR2021-00208
`Attorney Docket: 50095-0007IP1
`
`Pursuant to the Board’s Order of July 13, 2021, granting Petitioner’s Motion
`
`
`
`to Submit Supplemental Information (Paper 11), Petitioner submits herewith
`
`Exhibit 1040 (“Declaration of Jacob Munford”) and Exhibit 1041 (“Declaration of
`
`Gordon MacPherson: Mendelson-2003”) and their respective appendices. These
`
`exhibits are true and exact copies of the exhibits attached to Petitioner’s motion.
`
`
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`
`
`Dated: July 19, 2021
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`Respectfully submitted,
`
`
`
`
`
`/Hyun Jin In/
`
`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
`T: 202-783-5553
`
`1
`
`

`

`
`
`Case No. IPR2021-00208
`Attorney Docket: 50095-0007IP1
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq., the undersigned certifies that on
`
`July 19, 2021, a complete and entire copy of this “Petitioner’s Submission of
`
`Supplemental Information” and its attached exhibits were provided by electronic
`
`mail to the Patent Owner by serving the correspondence e-mail address of record
`
`as follows:
`
`Joseph R. Re
`Stephen W. Larson
`Jarom D. Kesler
`Jacob L. Peterson
`Knobbe, Martens, Olson, & Bear, LLP
`2040 Main St., 14th Floor
`Irvine, CA 92614
`
`Email: AppleIPR2021-0208-266@knobbe.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
`
`
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`2
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`

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