Filed December 10, 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
`Fax: (949) 760-9502
`Tel.: (949) 760-0404
`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
`SERVED WITH APPLE REPLY
`
`
`
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple v. Masimo
`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 1044
`Refractive Indices of
`Human Skin Tissues at
`Eight Wavelengths
`
`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-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple v. Masimo
`Exhibit Number and
`Description
`Exhibit 1045 Analysis
`of the Dispersion of
`Optical Plastic
`Materials
`
`Exhibit 1046
`Noninvasive Pulse
`Oximetry Utilizing
`Skin Reflectance
`Photoplethysmography
`
`Exhibit 1047 Second
`Declaration of Dr.
`Thomas W. Kenny
`
`Exhibit 1048
`Declaration of Dr.
`Thomas W. Kenny
`from IPR2020-01539
`
`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.
`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 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 papers
`(37 C.F.R. § 42.23) (see e.g., ¶¶7-34).
`Incomplete, Irrelevant, Misleading (FRE 106, 401, 403):
`The testimony is misleading, incomplete, and irrelevant
`because it lacks support for contentions and
`mischaracterizes the teachings of Exs. 1001, 1003, 1006,
`1008, 1012, 1014, 1023, 1025, 1034, 1036, 1041, 1044,
`1045, 1046, 1049, 1050, 1051, 1052, 2004, 2006, 2007,
`2009, 2020, and the Patent Owner Response.
`Improper Testimony by Expert Witness (FRE 702):
`The testimony is not based on sufficient facts and data, and
`does not reliably apply facts and data using scientific
`principles.
`its previously served
`incorporates herein
`Masimo
`objections to this declaration (Ex. 1003 in IPR2020-
`01539). In addition, Masimo provides the following
`further objections to Ex. 1048.
`
`-2-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple v. Masimo
`Exhibit Number and
`Description
`
`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.
`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.
`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 1049 Eugene
`Hecht Optics 4th Ed.
`2002
`
`Exhibit 1052 Eugene
`Hecht Optics 2nd Ed.
`1990
`
`
`
`-3-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple v. Masimo
`
`Dated: December 10, 2021
`
`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
`
`
`
`-4-
`
`

`

`IPR2021-00208 – Patent 10,258,266
`Apple v. Masimo
`
`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 SERVED WITH APPLE REPLY
`
`is being served electronically on December 10, 2021, to the email addresses below:
`
`Dated: December 10, 2021
`
`
`
`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
`
`54691708
`
`
`
`