`
`
`
`Filed: February 24, 2023
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Daniel C. Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR745-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`
`
`
`
`
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`

`

`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § §42.51(b)(2) and the Board’s authorization via
`
`teleconference on February 17, 2023, Patent Owner Masimo Corp. (“Masimo”)
`
`moves the Board for additional discovery from Petitioner Apple Inc. Masimo
`
`requests the Board order Apple to produce unredacted copies of specific
`
`documents and testimony from a related U.S. International Trade Commission
`
`(“ITC”) investigation between the parties relating to patentability of the ’745
`
`Patent claims. Masimo submits its proposed discovery requests as Appendix A to
`
`this motion. Masimo also submits a copy of the Board’s email confirming
`
`authorization to file this motion as Appendix B.
`
`I.
`INTRODUCTION
`In 2021, Masimo filed a complaint with the ITC alleging that Apple’s Series
`
`6 and Series 7 Apple Watches infringed five of Masimo’s patents relating to
`
`noninvasive physiological monitoring: U.S. Patent Nos. 10,912,501, 10,912,502,
`
`10,945,648, 10,687,745, and 7,761,127. In re Certain Light-Based Physiological
`
`Measurement Devices and Components Thereof, ITC Inv. No. 337-TA-1276 (the
`
`“ITC Investigation”); see also EX1031. Notably, the Apple Watch Series 6 added
`
`a new infringing feature: oxygen saturation measurements. The ITC held a hearing
`
`between June 6-10, 2022 and the parties completed their post-hearing briefing on
`
`July 11, 2022.
`
`-1-
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`

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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`During the ITC Investigation Apple argued that the asserted claims of
`
`Masimo’s ’745 Patent would have been obvious over, inter alia, Iwamiya,
`
`Sarantos, and Venkatraman. Apple raises the same art and same arguments in
`
`these IPRs. At the ITC, Masimo rebutted Apple’s arguments with Apple’s own
`
`documents and testimony from Apple’s own witnesses that demonstrated (1) there
`
`was no reasonable expectation of success in modifying the prior art to measure
`
`oxygen saturation at the wrist and (2) that objective indicia of nonobviousness
`
`supported patentability. See Masimo’s Initial Post-Hearing Brief (Public Version)
`
`(EX2011) at 165-175, 219-220, 230, 233-234; Masimo’s Reply Post-Hearing Brief
`
`(Public Version) (EX2051) at 85-90, 94-96, 125, 128-129, and 132-133. The
`
`public ITC briefing shows that Masimo relied on Apple’s own documents and own
`
`engineers’ testimony as establishing no reasonable expectation of success. Id. The
`
`documents and testimony also provided evidence of industry skepticism, failure of
`
`others, copying, and commercial success. Id.
`
`On January 10, 2023, the ITC issued a Final Initial Determination (“ID”)
`
`holding that Apple had not demonstrated that any claim of the ’745 Patent would
`
`have been obvious. EX1033 at 209-241. The ITC cited and discussed testimony
`
`from Apple’s engineers, who were skeptical that pulse oximetry could be
`
`implemented at the wrist. EX1033 at 228-231, 235-236; see also id. at 219-220
`
`(relying on Apple engineer testimony to find no reasonable expectation of success
`
`-2-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`in modifying first-generation Apple Watch to measure oxygen saturation at the
`
`wrist). Applying this testimony, the ITC found that Apple failed to demonstrate
`
`that a POSITA would have had a reasonable expectation of success in combining
`
`Iwamiya with Sarantos to measure oxygen saturation at the wrist. Id.
`
`After the ITC hearing and the parties’ post-hearing briefing, but before the
`
`ITC’s Initial Determination, Apple chose to re-litigate invalidity in a different
`
`forum by petitioning for inter partes review. Even though the petitions raised, at
`
`times, identical patentability arguments, Apple’s petitions did not mention any of
`
`the evidence from its own engineers supporting patentability. Instead, Apple
`
`apparently sought an unfair tactical advantage by using the ITC’s protective order
`
`to prevent Masimo from defending the validity of the ’745 Patent with the same
`
`evidence that the ITC ultimately found supported patentability.
`
`Apple thus wields the ITC protective order as both a sword and shield,
`
`allowing Apple to re-attack the validity of the ’745 Patent in a different forum
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`while avoiding the evidence that the public record shows was probative to the ’745
`
`Patent’s validity at the ITC. By opposing discovery, Apple asks the Board to
`
`render a decision on the ’745 Patent’s validity based on an incomplete record. The
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`Board’s Institution Decision correctly realized that Masimo presented objective
`
`indicia of nonobviousness in the Patent Owner Preliminary Response, but that “the
`
`preliminary record before us does not appear complete on the matter.” Institution
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`-3-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Decision at 15 n.10. The Board then invited the parties to “further address
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`objective indicia of nonobviousness during trial.” Id. Masimo seeks to complete
`
`the record with relevant evidence. Apple opposes providing the Board with a
`
`complete record, including the evidence that the ITC found probative and
`
`supporting patentability.
`
`As set forth below, Masimo’s narrow discovery requests meet all of the
`
`Garmin factors and discovery is in the interests of justice. Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013)
`
`(precedential) (“Garmin”). More fundamentally, granting Masimo’s discovery
`
`request is in the interests of justice because it ensures that the Board decides
`
`validity based on a more complete record, including evidence relied on by another
`
`government agency when upholding the validity of the ’745 Patent. Apple seeks a
`
`strategic advantage by hiding evidence from this agency and to avoid the correct
`
`result. Apparently, Apple hopes an incomplete record will lead the Board to a
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`different result than the ITC. An inconsistent result based on an incomplete record
`
`is not in the interests of justice. Accordingly, Masimo respectfully requests that
`
`the Board grant Masimo the discovery set forth in the accompanying requests,
`
`attached as Appendix A.
`
`-4-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`II. THE GARMIN FACTORS WEIGH IN FAVOR OF DISCOVERY
`A. The Requested Discovery Exists and Would Be Useful
`“The party requesting discovery should already be in possession of
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`evidence” or reasoning “tending to show beyond speculation that in fact something
`
`useful will be uncovered.” Garmin at 6. “Useful” in this context “does not mean
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`merely ‘relevant’ and/or ‘admissible,’” but rather, “favorable in substantive value
`
`to a contention of the party moving for discovery.” Id. at 7.
`
`1. Masimo Seeks Documents Relied on at the ITC to Rebut
`Apple’s Obviousness Arguments
`The public ITC filings demonstrate beyond speculation that the requested
`
`discovery would produce useful evidence. In fact, the public filings reveal that the
`
`requested evidence was presented in ITC post-hearing briefing to rebut Apple’s
`
`arguments including reasonable expectation of success and to demonstrate
`
`objective indicia of nonobviousness of the ’745 Patent claims. See EX2011 at 165-
`
`175, 219-220, 230, 233-234; EX2051 at 85-90, 94-96, 125, 128-129, 132-133.
`
`The ITC considered that evidence and found the asserted ’745 Patent claims
`
`valid based on that evidence. For example, the ITC held ’745 Patent claims 9, 18,
`
`and 27 were not obvious over Apple’s proposed combination of Iwamiya and
`
`Sarantos (with or without Venkatraman) based on testimony from Apple’s
`
`engineers who were skeptical about measuring oxygen saturation at the wrist. See
`
`EX1033 at 218-220, 228-231.
`
`-5-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`The same evidence considered at the ITC is necessary here to once again
`
`rebut Apple’s obviousness theories about the same combination of references. For
`
`example, Apple’s petition argued that “[a] POSITA would have reasonably
`
`expected success in adapting Iwamiya’s sensor [to measure oxygen saturation]
`
`because wrist-worn pulse oximetry sensors, such as that described in Sarantos,
`
`were well-known in the art.” See IPR2022-01291 Pet. at 20 (addressing claim 9).
`
`The public ITC decision rejected Apple’s argument based on evidence Apple is
`
`fighting to withhold, and that Masimo seeks in discovery:
`
`Apple also has not clearly and convincingly shown that one of
`ordinary skill in the art would have had a reasonable expectation of
`success in modifying Iwamiya to measure oxygen saturation—the
`record contains testimony from multiple Apple engineers expressing
`skepticism regarding the implementation of pulse oximetry in a
`wrist-worn device. See Tr. (Mannheimer) at 1012:12-16; CX-0299C
`(Waydo Dep. Tr.) at 166:4-167:5; CX-0295C (Shui Dep. Tr.) at
`108:15-21.
`
`EX1033 at 231 (Mannheimer, Waydo, and Shui are Apple engineers) (emphasis
`
`added). The ITC also noted “testimony from numerous Apple engineers
`
`describing the significant difficulty of performing pulse oximetry at the wrist.”
`
`Id. at 115 (emphasis added). The ITC relied on the testimony of an Apple engineer
`
`with over twenty years of experience in pulse oximetry “admitting that in 2014, he
`
`believed that pulse oximetry at the wrist would be a challenge, that he ‘did not
`
`-6-
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`

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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`know if it could be done,’ that ‘the wrist is just enormously different from the
`
`physiological perspective,’ and that the signal at the wrist is ‘enormously weak.’”
`
`Id. at 115-116 (citing Mannheimer testimony). The testimony of Apple’s own
`
`engineers who specialized in pulse oximetry flatly contradicts Apple’s story in its
`
`IPR petitions that wrist-based pulse oximetry was well-known. IPR2022-01291
`
`Pet. at 20; IPR2022-01291 EX1003 ¶ 48.
`
`
`
`Such evidence would also rebut Apple’s reasonable expectation of success
`
`arguments in IPR2022-01465. For example, Apple argues in the 1465 Petition that
`
`dependent Claim 2 would have been obvious based on Iwamiya and Sarantos.
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`IPR2022-01465 Pet. at 18-19. But the ITC relied on the same evidence discussed
`
`above and found no reasonable expectation of success for an analogous limitation.
`
`See EX1033 at 239-240 (analyzing the analogous limitation in claim 27).
`
`Masimo’s discovery requests specifically target documents and testimony
`
`Masimo already relied on in the ITC Investigation to uphold the validity of the
`
`’745 Patent. The table below identifies at least one way in which the requested
`
`evidence was used in Masimo’s public ITC briefs to support validity of the ’745
`
`Patent. These documents have been identified from the public versions of
`
`Masimo’s Corrected Initial Post-Hearing Brief, Masimo’s Reply Post-Hearing
`
`Brief, and the Initial Determination.1 See EX2011 at 165-175, 219-220, 230, 233-
`
`1 Masimo’s Corrected Initial Post-Hearing Brief (Public Version) corrected
`
`-7-
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`

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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`234; EX2051 at 85-90, 94-96, 125, 128-129, 132-133; EX1033 at 115-116, 149-
`
`156, 218-220, 228-231. In providing this table, Masimo is in no way suggesting
`
`that these are the only ways in which the evidence may be useful in these IPRs.
`
`Masimo is not required to set forth its litigation positions in motion for discovery
`
`which will be later briefed in Masimo’s Patent Owner Response. See Caterpillar
`
`v. Wirtgen Am., Inc., IPR2017-02188, Paper 18 at 4 (PTAB Aug. 22, 2018).
`
`Skepticism,
`
`CX-0007C, CX-0175C, CX-0177C, CX-0185C, CX-0283C, CX-
`
`Failure, or No
`
`0289C, CX-0295C, CX-0299C, CX-1539C, CX-1615C, CX-
`
`Reasonable
`
`1711C, CX-1789C, CX-1790C, CX-1793C, CX-1800C, RX-
`
`Expectation
`
`0396C, Vivek Venugopal Hearing Testimony, Brian Land
`
`of Success
`
`Hearing Testimony, Paul Mannheimer Hearing Testimony,
`
`Stephen Waydo Hearing Testimony, Apple Initial Post-Hearing
`
`Brief
`
`Copying
`
`CX-0006C, CX-0092C, CX-0094C, CX-0096C, CX-0097C, CX-
`
`0125C, CX-0126C, CX-0127C, CX-0285C
`
`Commercial CX-0132C, CX-0133C, CX-0134C, CX-1643C, CX-1646C, CX-
`
`
`apparent typos in the citations to CX-1643C, CX-1646C, and CX-1647C that were
`
`originally cited as CX-1463C, CX-1466C, and CX-1467C. See EX2011 at 174.
`
`-8-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Success
`1647C, CX-1771C, Daniel McGavock Hearing Testimony2
`
`Masimo also requests production of the unredacted copies of the parties’
`
`ITC briefing and the ID for several reasons. First, the Board should have the
`
`benefit of the same information available to the ITC to ensure a complete record in
`
`these proceedings regarding the validity of the ’745 Patent. Second, those ITC
`
`filings are necessary to ensure that all responsive documents have been produced,
`
`particularly where the public documents may have redacted citations to evidence.
`
`See Appendix A (Request for Production No. 4). Third, Masimo’s commercial
`
`success arguments are based on the commercial success of the accused Apple
`
`Watches, which Masimo argued infringe the ’745 Patent. Thus, Masimo’s
`
`infringement analyses in the ITC filings would provide useful evidence regarding a
`
`nexus for commercial success. Finally, Masimo needs the documents in order to
`
`present the arguments without Apple baselessly accusing Masimo of violating the
`
`ITC protective order.
`
`During the February 17, 2023 teleconference, the Board also requested
`
`clarification on a second category of requested documents that can only be
`
`
`2 Daniel McGavock is Masimo’s expert witness in the ITC Investigation who
`
`testified regarding commercial success based on his analysis of Apple’s financial
`
`information. See EX2011 at 173.
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`-9-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`identified with the unredacted ITC filings. Such documents fall within the scope
`
`of Request for Production No. 4, which asks Apple to produce any exhibits or
`
`testimony that may have been cited in specific page ranges in the ITC papers, but
`
`where the citation may have been inadvertently redacted in the public filing. Such
`
`evidence would be useful to demonstrating no reasonable expectation of success or
`
`objective indica of nonobviousness because they were cited and discussed in
`
`sections of Masimo’s briefing and the Initial Determination specifically addressing
`
`reasonable expectation of success or objective indicia. See, e.g., EX1033 at 116.
`
`Ideally, the number of additional documents or testimony sought by RFP No. 4
`
`should be zero if no citations were inadvertently redacted in the public versions.
`
`The evidence sought formed the basis for Masimo’s validity arguments at
`
`the ITC. The ITC analyzed and relied on the evidence in determining patentability.
`
`And, ultimately, the ITC held claims from the ’745 Patent valid based on the
`
`evidence. Accordingly, Masimo has demonstrated beyond any speculation that
`
`useful evidence exists and would be produced in response to its discovery requests.
`
`2.
`Apple Cannot Withhold
`Patentability from the Patent Office
`Apple argued during the February 17, 2023 teleconference that the requested
`
`Information Material
`
`to
`
`discovery should not be granted (and that Masimo should not even be permitted to
`
`brief this motion) because the ITC Initial Determination did not find in Masimo’s
`
`favor on objective indicia and thus, the evidence would not be “useful” under
`
`-10-
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`

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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Garmin factor 1. But Apple ignores that the ITC found no reasonable expectation
`
`of success based on the same evidence showing industry skepticism for measuring
`
`oxygen saturation at the wrist. See EX1033 at 218-220, 228-231, 235-236, 239-
`
`240. Apple also ignores that the ITC is currently reviewing the Initial
`
`Determination’s objective indicia findings after Masimo explained the judge
`
`applied a legally erroneous nexus analysis.
`
`By filing these IPRs, Apple asked the Board to render its independent
`
`decision on the validity of the ’745 Patent. Apple argued these IPRs are needed
`
`because the ITC’s findings are not preclusive on other litigations. See IPR2022-
`
`01291 Pet. at 44-45; IPR2022-01291 Notice Ranking Pets. at 3-4. After seeking a
`
`new forum to litigate validity, Apple cannot argue now in good faith that the Board
`
`should prejudge and preclude evidence based on the ITC’s Initial Determination.
`
`Moreover, Masimo need not show that a previous trier of fact found in
`
`Masimo’s favor in order to demonstrate that evidence would be “useful.” Garmin
`
`at 7. As discussed above, the public ITC filings demonstrate that Masimo already
`
`used the requested evidence to support the validity of the ’745 Patent in the ITC
`
`Investigation. See EX2011 at 165-175, 219-220, 230, 233-234; EX2051 at 85-90,
`
`94-96, 125, 128-129, and 132-133. That is sufficient to show that the requested
`
`evidence would be “favorable in substantive value to a contention of the party
`
`moving for discovery.” Garmin at 7.
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`-11-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Moreover, as a party to this IPR, Apple owes a duty of candor and good faith
`
`to the Patent Office. 37 C.F.R. 42.11(a). Apple chose the Board as its preferred
`
`forum after hearing Masimo’s evidence supporting patentability, yet has no
`
`justifiable explanation why only the ITC, but not the Board, may consider the full
`
`record on patentability. “[P]roviding material information to other Government
`
`agencies … while simultaneously withholding the same information from the
`
`USPTO undermines both the intent and spirit of the duty of disclosure and violates
`
`those duties.” 87 Fed. Reg. 45764, 45766. Granting Masimo discovery would
`
`ensure that the Board determines validity based on a record that includes the same
`
`evidence of patentability that the ITC considered and relied on when holding the
`
`’745 Patent claims valid. Apple’s duty of candor requires as much.
`
`B. Masimo Does Not Seek Apple’s Litigation Positions
`The second Garmin factor addresses instances where requests for a party’s
`
`contentions alter the Board’s scheduled disclosures.
`
` See Garmin at 6;
`
`Consolidated Trial Practice Guide (November 2019) (“CTPG”) at 26-27.
`
`Masimo’s requests do not seek such information.
`
`C. Masimo Cannot Obtain Equivalent Information by Other Means
`The third Garmin factor precludes discovery of information that a party
`
`could reasonably generate without the request. See Garmin at 6; CTPG at 27.
`
`During the February 17, 2023 teleconference, Apple opposed the discovery
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`because the documents are protected by the ITC protective order. But that is
`
`precisely why the motion for additional discovery should be granted. Masimo
`
`cannot generate equivalent information by other means because Apple is
`
`concealing it behind the ITC protective order. See Caterpillar, IPR2017-02188,
`
`Paper 18 at 5-6 (granting discovery of confidential information from an ITC
`
`proceeding because petitioner admitted that the requested documents are its
`
`confidential information and therefore not otherwise available). The ITC
`
`protective order does not prevent Apple from disclosing this information.
`
`Further, Masimo exhausted all other means by which it could obtain this
`
`discovery. Masimo already moved the ITC to modify the protective order to
`
`permit cross-use of the evidence in this IPR. See EX2012. Apple successfully
`
`opposed Masimo’s ITC motion because, Apple argued, “Complainants should
`
`pursue any relevant discovery through an established mechanism in the PTAB, and
`
`that tribunal should be permitted to act as its own gatekeeper for additional
`
`discovery.” EX2013 at 10; see also Order Denying Complainants’ Motion to
`
`Modify Protective Order, Inv. No. 337-TA-1276, EDIS Doc. ID 784759
`
`(U.S.I.T.C. Nov. 17, 2022). Thus, Apple represented to the ITC that Masimo
`
`could obtain the requested evidence via the Board’s discovery mechanisms and
`
`that the Board can order discovery of materials from the ITC Investigation. See
`
`-13-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`EX2013 at 9-11. Apple cannot now argue in good faith that the Board cannot
`
`order production of this evidence because of the ITC protective order.
`
`D. Masimo’s Requests Are Easily Understandable
`The fourth Garmin factor requires that discovery requests “be easily
`
`understandable.” Garmin at 6-7. Masimo’s requests specifically identified the
`
`requested ITC filings by their name and EDIS Doc. ID, ITC hearing exhibits by
`
`their exhibit number, and hearing testimony transcripts by the name of the witness.
`
`Additionally, Masimo’s RFP No. 4, which seeks documents and testimony where
`
`the citation may have been inadvertently redacted, specifically identifies the page
`
`ranges in the ITC filings for Apple to inspect. The request is easily understandable
`
`given Apple’s access to the unredacted copies of the filings.
`
`E. Masimo’s Requests Are Not Burdensome to Answer
`The fifth Garmin factor requires that the discovery requests “must not be
`
`overly burdensome to answer” including the “financial burden, burden on human
`
`resources, and burden on meeting the time schedule for Inter Partes Review.”
`
`Garmin at 7. Masimo’s discovery requests pose little to no burden on Apple. The
`
`small set of requested evidence is specifically identified and is already in Apple’s
`
`possession at the offices of its ITC counsel, WilmerHale. No additional searching
`
`is required because Masimo seeks evidence already submitted during the ITC trial
`
`and thus readily identifiable by exhibit number. Because no searching is required,
`
`-14-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Masimo also requests that the discovery be produced within one week. See One
`
`World Techs., Inc. v. The Chamberlain Grp., Inc., IPR2017-00126, Paper 20
`
`(PTAB Dec. 15, 2017) (granting additional discovery and ordering production of
`
`documents from ITC investigation within one week of order).
`
`III. CONCLUSION
`Apple chose this forum to relitigate the validity of the ’745 Patent after its
`
`arguments failed at the ITC. It cannot now abuse the ITC protective order as a way
`
`to conceal probative evidence of validity, relied on by the ITC when rejecting
`
`Apple’s analogous obviousness arguments. It is in the interests of justice that the
`
`Board render any final written decision in these IPRs based on a complete record.
`
`The Board should grant Masimo’s motion for additional discovery and order Apple
`
`to produce the requested documents, subject to a protective order agreed upon by
`
`the parties.
`
`Dated: February 24, 2023
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`
`
`Attorney for Patent Owner
`Masimo Corporation
`
`-15-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`
`
`Appendix A
`
`Patent Owner Masimo Corp. (“Masimo”) requests that Petitioner Apple Inc.
`
`(“Apple”) produce the following documents within one week of the order granting
`
`the motion for additional discovery.
`
`Definitions
`
`1.
`
` “ITC Investigation” refers to the ITC investigation captioned, In the
`
`Matter of Certain Light-Based Physiological Measurement Devices and
`
`Components Thereof, ITC Inv. No. 337-TA-1276.
`
`2.
`
`“MasimoIPHB” refers to Masimo’s Corrected Initial Post-Hearing
`
`Brief in the ITC Proceeding, filed under seal in the ITC at EDIS Doc. ID 775422,
`
`and filed publicly in the ITC at EDIS Doc. ID 778396.
`
`3.
`
` “MasimoRPHB” refers to Masimo’s Reply Post-Hearing Brief in the
`
`ITC Proceeding, filed under seal in the ITC at EDIS Doc. ID 775058, and filed
`
`publicly in the ITC at EDIS Doc. ID 776163.
`
`4.
`
`“ID” refers to the January 10, 2023 Final Initial Determination on
`
`Violation of Section 337 in the ITC Proceeding, filed under seal at the ITC at EDIS
`
`Doc. ID 787653, and filed publicly in the ITC at EDIS Doc. ID 789795 and as
`
`EX1033 in this IPR.
`
`
`
`
`
`-1-
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`

`

`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`
`
`Requests for Production
`
`Request for Production No. 1: Unredacted copies of the ID, MasimoIPHB,
`
`MasimoRPHB, and Apple’s Second Corrected Post-Hearing Brief (filed at EDIS
`
`Doc. ID 779376).
`
`Request for Production No. 2: Unredacted copies of the following exhibits from
`
`the ITC Investigation: CX-0006C, CX-0007C, CX-0092C, CX-0094C, CX-0096C,
`
`CX-0097C, CX-0125C, CX-0126C, CX-0127C, CX-0132C, CX-0133C, CX-
`
`0134C, CX-0175C, CX-0177C, CX-0185C, CX-0283C, CX-0285C, CX-0289C,
`
`CX-0295C, CX-0299C, CX-1539C, CX-1615C, CX-1643C, CX-1646C, CX-
`
`1647C, CX-1711C, CX-1771C, CX-1789C, CX-1790C, CX-1793C, CX-1800C,
`
`RX-0396C.
`
`Request for Production No. 3: Transcripts of the hearing testimony from the June
`
`6-10, 2022 hearing in the ITC Investigation for the following witnesses:
`
`Stephen Waydo, Paul Mannheimer, Vivek Venugopal, Brian Land, and Daniel
`
`McGavock (specifically, Daniel McGavock’s testimony on June 10, 2022).
`
`Request for Production No. 4: To the extent not produced in response to Request
`
`for Production Nos. 2-3, any exhibits or testimony cited in the following page
`
`ranges of the ID, MasimoIPHB, and MasimoRPHB, where the citation to the
`
`-2-
`
`

`

`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`exhibit/testimony has been redacted in the public versions of the ID, MasimoIPHB,
`
`or MasimoRPHB:
`
`MasimoIPHB at 165-175, 233-234
`
`MasimoRPHB at 85-90, 94-96, 125, 129, and 132-133
`
`ID at 116, 149-156
`
`This request does not encompass the testimony of expert witnesses (e.g.,
`
`Sarrafzadeh, Warren, or Madisetti testimony).
`
`
`
`
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`-3-
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`

`

`
`
`Appendix B
`Appendix B
`
`

`

`Trials
`Daniel Kiang
`IPR50095-0045IP1; AppleIPR745-1; AppleIPR745-3; AppleIPR745-4; IPR50095-0045IP3@fr.com; IPR50095-
`0045IP4@fr.com; Trials
`RE: IPR2022-01291, -01465 (and potentially -01466) - Request for Authorization to File Motion for Additional
`Discovery
`Friday, February 17, 2023 11:15:28 AM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel,
`
`As discussed this afternoon in a teleconference between the Panel and the Parties, the Panel
`authorizes Patent Owner to file a motion for additional discovery in IPR2022-01291 and IPR2022-
`01465, not to exceed 15 pages, on or before February 24, 2023. Petitioner is authorized to file an
`opposition to the motion, not to exceed 15 pages, on or before March 3, 2023. A reply to the
`opposition is not authorized at this time.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Sent: Monday, February 13, 2023 5:49 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR50095-0045IP1 <IPR50095-0045IP1@fr.com>; AppleIPR745-1 <AppleIPR745-
`1@knobbe.com>; AppleIPR745-3 <AppleIPR745-3@knobbe.com>; AppleIPR745-4 <AppleIPR745-
`4@knobbe.com>; IPR50095-0045IP3@fr.com; IPR50095-0045IP4@fr.com
`Subject: IPR2022-01291, -01465 (and potentially -01466) - Request for Authorization to File Motion
`for Additional Discovery
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`Pursuant to Paper 9 in IPR2022-01291, Patent Owner respectfully renews its request for
`authorization to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2) in IPR2022-01291
`and IPR2022-01465 (and potentially IPR2022-01466, if instituted). Patent Owner seeks information
`relevant to objective indicia of nonobviousness and reasonable expectation of success that was
`previously produced and relied on in a related ITC proceeding between the parties. The requested
`information is covered by an ITC protective order and is not publicly available.
`
`Patent Owner has conferred with Petitioner regarding this request. Petitioner has indicated
`opposition of the motion, pending receipt of clarifying details for items identified as targets for
`
`

`

`discovery, most notably an indication of the basis for Masimo’s belief that the item will be “useful”
`with respect to Garmin factor 1, and specifically what contention each requested item is believed to
`be favorable to proving (e.g., alleged copying, commercial success, nexus, etc.). Petitioner contends
`that a call with the Board is premature. Patent Owner disagrees with Petitioner’s contention.
`Patent Owner has already provided Petitioner with a specific list of evidence sought and has already
`directed Petitioner to specific pages within the public ITC briefing and ITC Initial Determination citing
`the requested evidence to demonstrate nonobviousness of the ’745 Patent claims.
`
`The parties are available for a conference call between Tuesday and Friday this week, between
`12pm-5pm Eastern. Petitioner’s counsel is copied on this email.
`
`Best regards,
`Daniel
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and
`privileged information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not
`the intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
`
`

`

`IPR2022-01291
`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
`
`MOTION FOR ADDITIONAL DISCOVERY is being served electronically on
`
`February 24, 2023, to the e-mail addresses shown below:
`
`W. Karl Renner
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: IPR50095-0045IP1@fr.com
`
`Dated: February 24, 2023
`
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax:877-769-7945Email:
`PTABInbound@fr.com
`
`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`-4-
`
`