Case 3:18-cv-02245-JD Document 271 Filed 03/03/23 Page 1 of 76
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`
`
`BITA RAHEBI (CA SBN 209351)
`brahebi@mofo.com
`ALEX S. YAP (CA SBN 241400)
`ayap@mofo.com
`NICHOLAS R. FUNG (CA SBN 312400)
`nfung@mofo.com
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard
`Los Angeles, California 90017-3543
`Telephone: (213) 892-5200
`Facsimile: (213) 892-5454
`
`RICHARD S.J. HUNG (CA SBN 197425)
`rhung@mofo.com
`SHAELYN K. DAWSON (CA SBN 288278)
`shaelyndawson@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Telephone: (415) 268-7000
`Facsimile: (415) 268-7522
`Attorneys for Defendant
`APPLE INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`FIRSTFACE CO., LTD.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`
`Case No. 3:18-cv-02245-JD
`JOINT COMBINED
`ADMINISTRATIVE MOTION TO
`SEAL PURSUANT TO
`PARAGRAPH 31 OF STANDING
`ORDER FOR CIVIL CASES
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`JOINT COMBINED ADMIN. MOT. TO SEAL PURSUANT TO PARA. 31 OF STANDING ORDER
`CASE NO. 3:18-CV-02245-JD
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`Pursuant to Civil Local Rules 7-11 and 79-5, the Court’s December 28, 2022 Order
`regarding Pending Motions to Seal (D.I. 234), and Paragraph 31 of the Standing Order for Civil
`Cases Before Judge Donato, Plaintiff Firstface Co., Ltd.’s (“Firstface”) and Defendant Apple
`Inc.’s (“Apple”) (collectively, the “Parties”) submit this Joint Combined Administrative Motion
`to Seal (“Combined Motion”).
`This Combined Motion supersedes and combines the following motions filed by the
`Parties:
`
` Parties’ Joint Omnibus Motion to File Under Seal, filed on January 13, 2023
`(D.I. 246);
` Apple’s Administrative Motion to File Under Seal Apple’s Opposition to
`Firstface’s Motion for Partial Summary Judgment, filed on January 31, 2023
`(D.I. 252); and
` Firstface’s Administrative Motion to File Under Seal Pursuant to Civil L.R. 79-
`5(F), filed on January 31, 2023 (D.I. 256).1
`Collectively, the above-referenced motions covered sealing requests made in connection
`with the following 11 motions (collectively, “the Motions”):
`1. Firstface’s Motion to Strike Apple’s Second Amended Invalidity
`Contentions;
`2. Firstface’s Motion to Strike Portions of Apple’s Post-Discovery Disclosure
`of New Knowledge of Mr. Chris Thomas;
`3. Apple’s Motion for Summary Judgment;
`4. Apple’s Daubert Motion to Exclude Testimony of Nigel A. Jones
`(“Apple’s Motion to Exclude Jones”);
`5. Apple’s Daubert Motion to Exclude Testimony of Kevin C. Almeroth
`
`
`1 As to D.I. 256, Apple only seeks to file under seal the material contained herewith. In addition,
`while Firstface filed an Administrative Motion to File Under Seal Pursuant to Civil L.R. 79-5(F)
`on February 24, 2023 (D.I. 265), Apple does not seek to file under seal the material that is the
`subject of that motion.
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`JOINT COMBINED ADMIN. MOT. TO SEAL PURSUANT TO PARA. 31 OF STANDING ORDER
`CASE NO. 3:18-CV-02245-JD
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`(“Apple’s Motion to Exclude Almeroth”);
`6. Apple’s Daubert Motion to Exclude Testimony of Jim Bergman (“Apple’s
`Motion to Exclude Bergman”);
`7. Firstface’s Motion for Partial Summary Judgment;
`8. Apple’s Opposition to Firstface’s Motion for Partial Summary Judgment;
`9. Firstface’s Opposition to Apple’s Daubert Motion to Exclude Testimony
`of Jim Bergman (“Firstface’s Bergman Opposition”);2
`10. Firstface’s Opposition to Apple’s Daubert Motion to Exclude Testimony
`of Nigel A. Jones (“Firstface’s Jones Opposition”); and
`11. Firstface’s Opposition to Apple’s Motion for Summary Judgment
`(“Firstface’s Summary Judgment Opposition”).
`Specifically, the Parties request the Court order the materials identified in Tables 1 to 6 of
`this Combined Motion be sealed for the reasons described below and in the Declaration of
`Nicholas Fung in Support of the Parties’ Joint Combined Administrative Motion to Seal Pursuant
`to Paragraph 31 of Standing Order for Civil Cases (“Fung Decl.”). Petr Kostka, a Software
`Engineering Manager at Apple, Catherine Spevak, Finance Manager at Apple, Chris Thomas, a
`software engineer at Apple, and Heather Mewes, Head of Licensing at Apple, previously
`submitted declarations in support of sealing Apple’s proprietary information. Those declarations
`have been filed herewith. Apple submits that each of these documents identified in Tables 1 to 6
`contains Apple’s highly confidential and proprietary information. More specifically, Apple
`submits that these documents contain non-public information relating to Apple’s source code,
`technical strategy, technical design, license agreement payment terms, and financial data that
`
`
`2 In the parties’ Joint Omnibus Motion to File Under Seal, filed on January 13, 2023 (D.I. 246),
`the parties indicated that non-party Global IP Law Group LLP (“Global IP”) requested that
`certain information on page 2 of Apple’s Daubert Motion to Exclude Testimony of Jim Bergman
`(the sealed version of which is filed at D.I. 214-3) and in paragraph 317 of Exhibit 2 to Apple’s
`Daubert Motion to Exclude Testimony of Jim Bergman (the sealed version of which is filed at
`D.I. 214-4) be sealed. Global IP did not submit any supporting statement under Local Rule 79-5.
`Since that time, Firstface has confirmed that Global IP no longer seeks to have that information
`sealed, and it is thus not part of this Combined Motion.
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`JOINT COMBINED ADMIN. MOT. TO SEAL PURSUANT TO PARA. 31 OF STANDING ORDER
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`would cause competitive harm if disclosed. The Parties seek to file under seal narrowly tailored
`portions of the Motions, as discussed below.
`For some of the confidential information that is the subject of the Combined Motion,
`Motorola is the “Designating Party,” as the information was produced and designated confidential
`by Motorola in response to a third-party subpoena served in this case. Motorola requests that the
`Court administratively seal those portions of Firstface’s Motion to Strike Apple’s Second
`Amended Invalidity Contentions (D.I. 124) that contain information Motorola designated as
`confidential. Motorola’s sealing request, identified in Table 7 of this motion, is supported by the
`declaration of Scott Anderson (“Motorola Decl.”), originally filed on January 13, 2023 (D.I.
`246-47) and filed herewith.
`The Parties understood the Court’s December 28, 2022 Order to require the parties to
`include in the joint motion charts identifying the parties’ sealing requests, which has impacted the
`page count of this motion.
`
`I.
`
`LEGAL STANDARD
`Pursuant to the Court’s December 28, 2022 Order, the “compelling reasons” standard
`applies.3 Courts find that trade secrets and “sources of business information that might harm a
`litigant’s competitive standing” meet the “compelling reasons” standard. See Ctr. for Auto Safety
`v. Chrysler Group, LLC, 809 F.3d 1092, 1097-98 (9th Cir. 2016) (quoting Nixon v. Warner
`Communications, 435 U.S. 589, 598-99 (1978)); In re Elec. Arts, Inc., 298 F. App’x 568, 569 (9th
`Cir. 2008) (“the common-law right of inspection has bowed before the power of a court to insure
`that its records are not used . . . as sources of business information that might harm a litigant's
`competitive standing.”) (quoting Nixon v. Warner Communications, at 598).
`
`
`3 The parties note that two of the motions subject to this sealing request are Firstface’s discovery
`motions—Firstface’s Motion to Strike Portions of Apple’s Second Amended Invalidity
`Contentions (D.I. 124) and Firstface’s Motion to Strike Apple’s Post-Discovery Disclosure of
`New Knowledge of Mr. Chris Thomas (D.I. 198). Although the “good cause” standard applies
`for requests to seal materials associated with a non-dispositive motion, see Kamakana v. City &
`County of Honolulu, 447 F.3d 1172, 1180 (9th Cir. 2006), Apple submits that its requests to seal
`its proprietary information in these two discovery motions also meet the higher “compelling
`reasons” standard.
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`JOINT COMBINED ADMIN. MOT. TO SEAL PURSUANT TO PARA. 31 OF STANDING ORDER
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`A.
`
`Technical Information and Source Code Satisfy the Compelling Reasons
`Standard
`Courts in this district have found that trade secrets related to technical information,
`including descriptions of technical operation and software-related functionality and source code,
`meet the compelling reasons standard. See generally Network Appliance, Inc. v. Sun
`Microsystems Inc., No. C-07-06053 EDL, 2010 WL 841274 (N.D. Cal. Mar. 10, 2010) (granting
`motion to seal portions of documents that contain confidential technical information and source
`code); see also FTC v. DIRECTV, Inc., No. 15-cv-01129-HSG, 2017 WL 840379, at *2 (N.D.
`Cal. Mar. 3, 2017) (“Confidential source code clearly meets the definition of a trade secret and
`therefore meets the compelling reasons standard”) (quoting Apple, Inc. v. Samsung Elecs. Co.,
`No. 11-CV-01846-LHK, 2012 WL 6115623, at *2 (N.D. Cal. Dec. 10, 2012)) (citations omitted);
`Theranos, Inc. v. Fuisz Pharma LLC, No. 5:11-cv-05236-PSG, 2013 WL 5770317, at *2 (N.D.
`Cal. Oct. 24, 2013) (granting motion to seal technical information that remains confidential);
`Snapkeys, Ltd. v. Google LLC, No. 19-CV-02658-LHK, 2021 WL 1951250, at *2-3 (N.D. Cal.
`May 14, 2021) (compelling reasons exist to seal “proprietary literature describing the structure,
`configuration, and operation of […] technology”) (quoting U.S. Ethernet Innovations, LLC v.
`Acer, Inc., 2014 WL 6664621, at *1 (N.D. Cal. Nov. 24, 2014)); Finjan, Inc. v. Proofpoint, Inc.,
`No. 13-cv-05808-HSG, 2016 WL 7429304, at *2 (N.D. Cal. Feb. 9, 2016) (sealing portions of
`exhibits containing information about the technical operation of products); MasterObjects, Inc. v.
`Amazon.com, Inc., No. C 20-08103 WHA, 2022 WL 4074653, at *3 (N.D. Cal. Sept. 5, 2022)
`(granting party’s request to seal “information from a deposition of its engineer related to ‘the
`structure of its source code’ and ‘descriptive file names of specific source code files’”).
`
`B.
`
`Confidential Financial, Revenue, Profit, and Sales Data Satisfy the
`Compelling Reasons Standard
`Courts in this district have found that financial information and revenue data related to a
`specific product are sealable under the compelling reasons standard. Lathrop v. Uber Techs.,
`Inc., No. 14-cv-05678, 2016 WL 9185002, at *2 (N.D. Cal. June 17, 2016) (“[U]nder Ninth
`Circuit law, detailed product-specific financial information…[is] appropriately sealable . . . .”);
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`JOINT COMBINED ADMIN. MOT. TO SEAL PURSUANT TO PARA. 31 OF STANDING ORDER
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`Kumandan v. Google LLC, No. 19-cv-04286, 2022 WL 17971644, at *1-2 (N.D. Cal. Oct. 17,
`2022) (granting motion to seal financial information concerning profits and losses); Johnson v.
`Serenity Transp., Inc., No. 15-cv-02004, 2017 WL 1365112, at *25 (N.D. Cal. Apr. 14, 2017)
`(granting motion to seal confidential revenue sources and amounts information); Gearsource
`Holdings, LLC v. Google LLC, No. 18-cv-03812, 2020 WL 3833258, at *15 (N.D. Cal. July 8,
`2020) (revenue, sales, and profit margins associated with specific products and services
`considered sealable information); Johnstech Int'l Corp. v. JF Microtechnology SDN BHD, No.
`14-CV-02864, 2016 WL 4091388, at *2 (N.D. Cal. Aug. 2, 2016) (sealing non-public financial
`information that contained detailed sales and profit information that could be used to a company’s
`disadvantage); Johnstech Int'l Corp. v. JF Microtechnology SDN BHD, No. 14-cv-02864-JD,
`2017 U.S. Dist. LEXIS 13478, at *6 (N.D. Cal. Jan. 31, 2017) (finding compelling reasons to seal
`information regarding sales of products spanning multiple years); see also LELO, Inc. v. Standard
`Innovation (US) Corp., No. 13-CV-01393, 2014 WL 2879851, at *6 (N.D. Cal. June 24, 2014)
`(granting motion to seal confidential sales information, and information pertaining to sales of
`products).
`C.
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`Confidential Licensing Agreement Payment Terms
`
`Courts in this district have found that compelling reasons exist to seal licensing agreement
`terms. In re Elec. Arts, Inc., 298 F. App’x 568, 569 (9th Cir. 2008) (“pricing terms…and
`payment terms found in [l]icensing [a]greement[s]” “plainly falls within the definition of ‘trade
`secrets’”); Lenovo (United States) Inc. v. Ipcom GmbH & Co., KG, No. 19-cv-01389-EJD, 2022
`WL 2313948, at *2 (N.D. Cal. June 28, 2022) (disclosure of pricing and payment terms of a
`litigant’s licensing negotiations might harm competitive standing); Plexxikon, Inc. v. Novartis
`Pharm. Corp., No. 17-cv-04405-HSG, 2022 WL 1131725, at *2 (N.D. Cal. Mar. 31, 2022)
`(compelling reasons to seal licensing terms where it could give non-party competitors an unfair
`advantage); Ovonic Battery Co. v. Sanyo Elec. Co., No. 14-cv-01637-JD, 2014 WL 2758756, at
`*3 (N.D. Cal. June 16, 2014) (compelling reasons exists where public release of licensing
`information could place litigant in a “diminished bargaining position in future negotiations”); see
`also In re Qualcomm Litig., No. 3:17-cv-0108-GPC-MDD, 2017 WL 5176922, at *2 (S.D. Cal.
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`Nov. 8, 2017) (compelling reasons exist to seal non-public licensing agreement terms, including
`payment terms).
`
`II.
`
`COMPELLING REASONS EXIST TO SEAL APPLE’S SOURCE CODE
`As set forth in Table 1 below, Apple requests that the excerpts identified in the table be
`sealed because they contain or describe Apple’s proprietary and confidential source code for
`Apple’s products. Apple submits that its request to seal Apple’s highly confidential source code
`is narrowly tailored. Apple submits that it has carefully reviewed these sealing materials and
`narrowly tailored its request as much as possible.
`Mr. Chris Thomas, a software engineer at Apple, previously submitted three declarations
`in support of sealing Apple’s proprietary source code information (collectively, the “Thomas
`Declarations”), each of which are filed herewith:
`1. Declaration in support of sealing (“Thomas Decl. I”) (D.I. 246-3) the following:
`a. Exhibit 5 to Firstface’s Motion to Strike Apple’s Post-Discovery Disclosure of
`New Knowledge of Mr. Chris Thomas (D.I. 198-5);
`b. Exhibit 42 to Firstface’s Motion for Partial Summary Judgment (D.I. 242-1);4
`c. Exhibit Nos. 4 and 5 to Apple’s Motion for Summary Judgment (respectively,
`D.I. 221-5 and 221-6);
`d. Apple’s Motion to Exclude Jones (D.I. 217);
`e. Exhibit Nos. 1 and 3 to Apple’s Motion to Exclude Jones (respectively, D.I.
`217-2 and 217-4); and
`f. Exhibit 2 to Apple’s Motion to Exclude Almeroth (D.I. 219-3);
`2. Declaration in support of sealing (“Thomas Decl. II”) (D.I. 252-2) the following:
`a. Exhibit A to Apple’s Opposition to Firstface’s Motion for Partial Summary
`Judgment (D.I. 257-2); and
`3. Declaration in support of sealing (“Thomas Decl. III”) (D.I. 260-3) the following:
`
`
`4 Apple also requests that the Court redact the identical exhibit (D.I. 222-11) filed with Firstface’s
`Motion for Partial Summary Judgment of Validity (D.I. 222), which the Court terminated in its
`December 30, 2022 Order (D.I. 235) for exceeding the page count.
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`a. Exhibit 6 to Firstface’s Summary Judgment Opposition (D.I. 255-8 and 259-3);
`and
`b. Firstface’s Jones Opposition (D.I. 253).
`Exhibit 5 to Firstface’s Motion to Strike Apple’s Post-Discovery Disclosure of New
`Knowledge of Mr. Chris Thomas and in Exhibit 42 to Firstface’s Motion for Partial
`Summary Judgment: As set forth in Table 1 below, the highlighted portions in these exhibits
`contain descriptions of the operation of Apple’s proprietary source code for the iPhone 3GS and
`iPhone 4 devices, including the names of specific functions, line numbers where certain
`functionality is implemented, and how the source code functions interact with each other,
`including where certain functions are called from other functions within the source code.
`(Thomas Decl. I, ¶¶ 3-7; Fung Decl., ¶ 6.)
`Exhibit Nos. 4 and 5 to Apple’s Motion for Summary Judgment; Apple’s Motion to
`Exclude Jones, and Exhibit Nos. 1 and 3 to that motion; and Exhibit 2 to Apple’s Motion to
`Exclude Almeroth: The highlighted portions in these documents contain descriptions of Apple’s
`proprietary source code for certain features in Apple’s products, including Touch ID, Siri, the
`lock screen, turning on the display, and preferences. (Thomas Decl. I, ¶¶ 3, 10-13, 16-21; Fung
`Decl., ¶ 6.)
`Exhibit A to Apple’s Opposition to Firstface’s Motion for Partial Summary
`Judgment: The highlighted portions contain descriptions of Apple’s source code for certain
`Home button functionality in its iPhone 3GS and iPhone 4 devices, including displaying and
`releasing the lock screen and initiating Apple’s Voice Control feature. (Thomas Decl. II, ¶¶ 3-5,
`7; Fung Decl. ¶ 6.)
`Exhibit 6 to Firstface’s Summary Judgment Opposition and Firstface’s Jones
`Opposition: The highlighted portions contain descriptions of how different source code
`functions interact with each other. Specifically, the highlighted portions describe file and folder
`names for source code and describe Apple’s source code for certain Home button functionality in
`its iPhone 3GS device, including initiating Apple’s Voice Control feature. (Thomas Decl. III, ¶¶
`3-7; Fung Decl. ¶ 6.)
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`Apple does not disclose its source code publicly. (Thomas Decl. I, ¶¶ 8, 14, 22; Thomas
`Decl. II, ¶ 6; Thomas Decl. III, ¶ 8.) Apple treats its source code, including descriptions of such
`source code, as proprietary and highly confidential. (Thomas Decl. I, ¶¶ 8, 14, 22; Thomas Decl.
`II, ¶ 6; Thomas Decl. III, ¶ 8.) Apple submits that this information should be sealed because
`public disclosure of Apple’s highly confidential information relating to Apple’s source code for
`its products, such as the iPhone 3GS, iPhone 4, as well as features of Apple’s products, such as
`Touch ID, Siri, turning on the display, the lock screen, user preferences, and Home button
`functionality would cause competitive harm to Apple. For example, Apple submits that
`disclosure of its source code information including specific functions, line numbers where certain
`functionality is implemented, changes in Apple’s source code files over time, and how the source
`code functions interact with each other, would provide Apple competitors with insight into
`Apple’s software designs and source code and allow such competitors to copy Apple’s software
`and source code designs to improve their own products. (Thomas Decl. I, ¶¶ 9, 15, 23; Thomas
`Decl. II, ¶ 7; Thomas Decl. III, ¶¶ 9-10.) See Network Appliance, Inc., 2010 WL 841274, at *4-5
`(sealing source code); FTC, 2017 WL 840379, at *2 (“Confidential source code clearly meets the
`definition of a trade secret and therefore meets the compelling reasons standard”) (citation
`omitted); MasterObjects, 2022 WL 4074653, at *3 (sealing deposition testimony “related to ‘the
`structure of its source code’ and ‘descriptive file names of specific source code files’”).
`
`III. COMPELLING REASONS EXIST TO SEAL APPLE’S PROPRIETARY
`INFORMATION RELATING TO THE DESIGN AND DEVELOPMENT OF
`TOUCH ID
`As set forth in Tables 2 to 4 below, Apple requests that excerpts of Firstface’s Motion to
`Strike Apple’s Second Amended Invalidity Contentions, Firstface’s Motion for Summary
`Judgment, Apple’s Motion for Summary Judgment, and Apple’s Opposition to Firstface’s Motion
`for Summary Judgment be sealed because they contain Apple’s proprietary and confidential
`technical information relating to Apple’s Touch ID, including the design and development of
`Touch ID. Touch ID is Apple’s fingerprint identity sensor technology that can be used to verify
`the identity of a user on an Apple device. Apple submits that its request is narrowly tailored to
`seal technical information relating to the design and development of Apple’s Touch ID, which
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`Apple maintains as confidential and is protectable under trade secret law. Apple submits that it
`has carefully reviewed these sealing materials and narrowly tailored its request as much possible.
`Mr. Petr Kostka, a Software Engineering Manager at Apple, previously submitted two
`declarations in support of sealing Apple’s proprietary information regarding Touch ID Design
`and Development (collectively, the “Kostka Declarations”), each of which are filed herewith:
`1. Declaration in support of sealing (“Kostka Decl. I”) (D.I. 246-2) the following:
`a. Exhibit Nos. 4, 5, and 9 to 14 to Firstface’s Motion to Strike Apple’s Second
`Amended Invalidity Contentions (respectively, D.I. 124-4; 124-5; 124-9;
`124-10; 124-11; 124-12; 124-13; and 124-14);
`b. Exhibit Nos. 54 and 55 to Firstface’s Motion for Partial Summary Judgment
`(D.I. 243-3 and 243-4);5 and
`c. Exhibit 4 to Apple’s Motion for Summary Judgment (D.I. 221-5); and
`2. Declaration in support of sealing (“Kostka Decl. II”) (D.I. 252-3) the following:
`a. Exhibit Nos. 2, 3, and 5 to the Hotelling Declaration in Support of Apple’s
`Opposition (D.I. 257-23; 257-24; and 257-26); and
`b. Exhibit Nos. 3, 4 and 6-10 to the Setlak Declaration in Support of Apple’s
`Opposition (D.I. 257-30; 257-31; 257-33; 257-34; 257-35; 257-36; and
`257-37).
`Firstface’s Exhibit Nos. 4, 5, and 9 to 14 to Firstface’s Motion to Strike Apple’s
`Second Amended Invalidity Contentions and Exhibit Nos. 54 and 55 to Firstface’s Motion
`for Partial Summary Judgment: As set forth in Tables 2 and 3 below, the highlighted text and
`figures contain excerpts and screenshots of Apple and AuthenTec documents that Apple has
`designated as “Highly Confidential – Attorneys’ Eyes Only” and that contain detailed technical
`information relating to the design and development of Apple’s Touch ID. (Kostka Decl. I, ¶¶ 7-
`16, 18-22, 26-27, 29-31, 33; Fung Decl., ¶ 8.) Specifically, the highlighted text and figures in
`
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`5 Apple also requests that the Court redact the identical exhibits (D.I. 222-23 and 222-24) filed
`with Firstface’s Motion for Partial Summary Judgment of Validity (D.I. 222) which the Court
`terminated in its December 30, 2022 Order (D.I. 235) for exceeding the page count.
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`these exhibits show detailed technical information relating to the development of Apple’s Touch
`ID, such as the designs considered for the Touch ID sensor, the dimensions of the fingerprint
`sensor hardware, the software and hardware architecture used to interface the proposed
`fingerprint sensor to existing Apple devices at the time, schematics relating to the proposed
`fingerprint sensor, and details regarding the technical design and operation of the proposed
`fingerprint sensor. (Kostka Decl. I, ¶¶ 16, 18-22, 27, 29-31, 33; Fung Decl., ¶ 8.)
`Exhibit 4 to Apple’s Motion for Summary Judgment: As set forth in Table 3 below,
`the highlighted texts are excerpts from a technical design specification for Apple’s commercial
`Touch ID sensor that describes the operation of the sensor, including the methods used to detect a
`fingerprint and the technical implementation of those methods. (Kostka Decl. I, ¶¶ 7, 34, 35;
`Fung Decl., ¶ 8.)
`Exhibit 2 to the Hotelling Declaration in Support of Apple’s Opposition to Firstface’s
`Motion for Partial Summary Judgment: As set forth in Table 4 below, the highlighted text and
`figure show the design and operation of the proposed Touch ID fingerprint sensor. (Kostka Decl.
`II, ¶¶ 7, 9-10; Fung Decl. ¶ 8.)
`Exhibit 3 to the Hotelling Declaration in Support of Apple’s Opposition to Firstface’s
`Motion for Partial Summary Judgment: As set forth in Table 4 below, the highlighted text and
`figures contain materials showing the software architecture, including the different software
`layers, used to demonstrate the proposed fingerprint sensor, and the hardware used to integrate
`the proposed fingerprint sensor. (Kostka Decl. II, ¶¶ 7, 11, 12, 14-16; Fung Decl. ¶ 8.)
`Exhibit 5 to the Hotelling Declaration and Exhibit 9 to the Setlak Declaration in
`Support of Apple’s Opposition to Firstface’s Motion for Partial Summary Judgment: As
`set forth in Table 4 below, the highlighted text and figures show the design, including schematics
`and testing criteria, and materials used in hardware components for the proposed Touch ID
`fingerprint sensor. (Kostka Decl II, ¶ 7, 17, 18, 21, 22; Fung Decl. ¶ 8.)
`Exhibit Nos. 3, 4, and 6 to the Setlak Declaration in Support of Apple’s Opposition to
`Firstface’s Motion for Partial Summary Judgment: As set forth in Table 4 below, the
`highlighted text and figures show the design and physical dimensions of the fingerprint sensor for
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`the proposed Touch ID fingerprint sensor. (Kostka Decl II, ¶ 7, 23-28, 30; Fung Decl. ¶ 8.)
`Exhibit 7 to the Setlak Declaration in Support of Apple’s Opposition to Firstface’s
`Motion for Partial Summary Judgment: As set forth in Table 4 below, the highlighted text and
`figures show the schematic design of an AuthenTec circuit used for AuthenTec’s fingerprint
`sensors. (Kostka Decl. II, ¶¶ 7, 31, 32, 34; Fung Decl. ¶ 8.)
`Exhibit 8 to the Setlak Declaration in Support of Apple’s Opposition to Firstface’s
`Motion for Partial Summary Judgment: As set forth in Table 4 below, the highlighted text and
`figures show the design, modifications, physical dimensions, performance, and operation of the
`fingerprint sensor and hardware components for the proposed Touch ID fingerprint sensor.
`(Kostka Decl. II, ¶¶ 7, 35, 36, 38; Fung Decl. ¶ 8.)
`Exhibit 10 to the Setlak Declaration in Support of Apple’s Opposition to Firstface’s
`Motion for Partial Summary Judgment: As set forth in Table 4 below, the highlighted text and
`figures contain highly confidential technical information relating to the development of Apple’s
`Touch ID, including performance results and methods to improve the performance of the
`proposed Touch ID fingerprint sensor. (Kostka Decl. II, ¶¶ 7, 39, 40, 42; Fung Decl. ¶ 8.)
`Apple treats such technical information regarding the design and development of Apple’s
`Touch ID as proprietary and highly confidential. (Kostka Decl. I, ¶¶ 17, 28, 32, 36; Kostka Decl.
`II, ¶¶ 10, 13, 19, 29, 33, 37, 41.) Apple submits that disclosure of this information would cause
`competitive harm to Apple by providing Apple’s competitors with insight into the proprietary
`technical design and operation of Apple’s Touch ID. (Kostka Decl. I, ¶¶ 18, 29, 33, 37; Kostka
`Decl. II, ¶¶ 10, 14-16, 20-22, 30, 34, 38, 42.) For example, disclosure of the proprietary designs
`considered by Apple, the hardware and software designs of the proposed Touch ID fingerprint
`sensor, and technical information such as the dimensions of the sensor, the design and
`performance considerations, and the materials used for the senor, would allow Apple’s
`competitors to use this information to build or accelerate the development of their own fingerprint
`sensor technology. (Kostka Decl. I, ¶¶ 19, 29, 33, 37; Kostka Decl. II, ¶¶ 10, 14-16, 20-22, 30,
`34, 38, 42.) See, e.g., Via Techs., Inc. v. Asus Comput. Int'l, No. 14-cv-03586-BLF, 2017 U.S.
`Dist. LEXIS 103770, *6-9, 13 (N.D. Cal. July 5, 2017) (sealing technical documents that include
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`schematics and design specifications); see also Orthopaedic Hosp. v. Encore Med., L.P., No. 19-
`CV-970 JLS (AHG), 2021 WL 1966121, at *2 (S.D. Cal. Apr. 12, 2021) (schematic diagrams and
`specifications warrant sealing).
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`IV. COMPELLING REASONS EXIST TO SEAL INFORMATION DISCLOSING
`APPLE’S NON-PUBLIC LICENSE AGREEMENT TERMS
`As set forth in Table 5 below, Apple requests that excerpts of Exhibit 1 to Firstface’s
`Bergman Opposition (D.I. 254-2) be filed under seal because they contain Apple’s proprietary
`and confidential information regarding prior license agreement terms. Apple submits that its
`request to seal Apple’s non-public license agreement information is narrowly tailored. Apple
`submits that it has carefully reviewed these sealing materials and narrowly tailored its request as
`much as possible.
`Ms. Heather Mewes, Head of Licensing at Apple, previously submitted a declaration in
`support of sealing portions of Exhibit 1 to Firstface’s Bergman Opposition (“Mewes Decl.”) (D.I.
`260-1), which is filed herewith.
`As set forth below in Table 5, the green highlighted portions of Exhibit 1 to Firstface’s
`Bergman Opposition contain highly confidential business information relating to Apple’s and
`AuthenTec’s non-public license agreements with third parties, including license and payment
`terms, and is marked “Attorneys Eyes’ Only.” (Mewes Decl., ¶ 3, 5; Fung Decl., ¶ 10.) Apple
`does not disclose this information publicly. (Mewes Decl., ¶ 6.) Apple goes to great lengths to
`keep this information confidential. For example, only specific members of Apple’s legal team
`have access to these documents, and an employee must be an approved authorized user and use a
`secure connection to access. (Id., ¶ 6.) Further, Apple requires all its corporate employees to sign
`an Intellectual Property Agreement prior to starting at Apple. (Id., ¶ 7.) Disclosure of this
`information would cause competitive harm to Apple, giving third parties in future licensing
`negotiations insight into Apple’s strategy, preferred license structure, and payment terms. (Id.,
`¶ 8.) See, e.g., Lenovo (United States) Inc. v. Ipcom GmbH & Co., KG, No. 19-cv-01389-EJD,
`2022 WL 2313948, at *2 (N.D. Cal. June 28, 2022) (disclosure of pricing and payment terms of a
`litigant’s licensing negotiations might harm competitive standing); Ovonic Battery Co. v. Sanyo
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