`
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
`
`Filed: May 26, 2023
`
`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 MOTION TO SEAL
`
`
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`INTRODUCTION
`Patent Owner Masimo Corporation (“Masimo”) submits this Motion to Seal
`
`I.
`
`pursuant to the Protective Order (EX1035). Masimo’s Patent Owner Response and
`
`its expert’s declaration (EX2070) rely, in part, on evidence that Apple produced in
`
`response to Masimo’s Motion for Additional Discovery. That evidence consists of
`
`Apple’s documents and its engineers’ testimony during the June 6-10, 2022 hearing
`
`in the ITC investigation, Certain Light-Based Physiological Measurement Devices
`
`and Components Thereof, Inv. No. 337-TA-1276 (ITC) (“ITC Investigation”). All
`
`of the information that Masimo moves to seal was designated by Apple in the ITC
`
`Investigation as containing its Confidential Business Information. Specifically,
`
`Masimo moves to seal confidential versions of its Patent Owner Response and
`
`Exhibits 2070, 2076-2086, 2089, 2090, and 2093. Masimo has filed public versions,
`
`with confidential portions redacted, of its Patent Owner Response and the
`
`Declaration of R. James Duckworth.
`
`Counsel for the parties have conferred via email. Apple does not oppose the
`
`motion as to sealing any Apple confidential information in any documents that Apple
`
`produced in response to the Masimo’s Motion for Additional Discovery or other
`
`papers or exhibits that quote from the produced documents, but reserves the right to
`
`oppose any other aspects of the motion at a later time after an opportunity to review
`
`the substance of this motion. Thus, Masimo believes that the motion is unopposed.
`
`-1-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`II. MOTION TO SEAL LEGAL STANDARD
`“There is a strong public policy for making all information filed in a
`
`quasijudicial administrative proceeding open to the public.” Garmin Int’l v. Cuozzo
`
`Speed Techs., LLC, IPR2012–00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper
`
`34). The record for an inter partes review shall be made available to the public,
`
`except as otherwise ordered on a motion to seal. 35 U.S.C. § 326(a)(1); 37 C.F.R. §
`
`42.14. The documents and information that are the subject of the motion to seal
`
`shall be treated as sealed until the motion is decided. Id.
`
`In determining whether to grant a Motion to Seal, the Board must find “good
`
`cause” and “strike a balance between the public’s interest in maintaining a complete
`
`and understandable file history and the parties’ interest in protecting truly sensitive
`
`information.” 37 C.F.R. § 42.54(a); Consolidated Trial Practice Guide (November
`
`2019) at 19 see also Argentum Pharms. LLC v. Alcon Res., Ltd., IPR2017-01053,
`
`Paper 27 at 3-4 (PTAB Jan. 19, 2018) (Informative) (describing the “good cause”
`
`standard). As described in the Consolidated Trial Practice Guide, the Board
`
`identifies confidential information in a manner “consistent with Federal Rule of
`
`Civil Procedure 26(c)(1)(G), which provides for protective orders for trade secret or
`
`other confidential research, development, or commercial information.”
`
`The moving party bears the burden of showing that the relief requested should
`
`be granted. 37 C.F.R. § 42.20(c). That includes showing that the information is
`
`-2-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`truly confidential, and that such confidentiality outweighs the strong public interest
`
`in having an open record. See Argentum, Paper 27 at 3–4. A party moving to seal
`
`has the burden of showing that:
`
`(1) the information sought to be sealed is truly confidential, (2) a
`concrete harm would result upon public disclosure, (3) there exists a
`genuine need to rely on the specific information sought to be sealed,
`and (4) on balance, an interest in maintaining confidentiality outweighs
`the strong public interest in having an open record.
`Id. These factors support granting Masimo’s motion to seal.
`
`III. ALL OF THE DOCUMENTS REQUESTED TO BE SEALED
`CONTAIN APPLE’S CONFIDENTIAL BUSINESS INFORMATION
`Masimo’s Patent Owner Response contains quotes and images from
`
`documents and testimony designated as Apple’s Confidential Business Information.
`
`Masimo has concurrently filed a public version of its Patent Owner Response with
`
`Apple’s Confidential Business Information redacted. Information that previously
`
`became public through public filings in the ITC Investigation have not been
`
`redacted.
`
`Exhibit 2070 is the Declaration of R. James Duckworth, Ph.D., in support of
`
`Masimo’s Patent Owner Responses. Exhibit 2070 contains quotes and images from
`
`documents and testimony designated as Apple’s Confidential Business Information.
`
`Masimo has concurrently filed a public version of Exhibit 2070 with Apple’s
`
`Confidential Business Information redacted. Information that previously became
`
`-3-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`public through public filings in the ITC Investigation have not been redacted.
`
`Exhibits 2076, 2077, 2078, and 2079 are transcripts of the ITC Investigation
`
`hearing testimonies of Apple’s engineers, Brian Land, Dr. Paul Mannheimer, Dr.
`
`Stephen Waydo, and Dr. Vivek Venugopal, respectively. The transcripts contain
`
`portions of their testimonies that were designated as Apple’s Confidential Business
`
`Information. The public portions of their testimony can be found in Exhibit 2008.
`
`Exhibits 2080, 2081, and 2082 are designated portions of transcripts of the
`
`depositions of Apple’s engineers, Dr. Paul Mannheimer, Dr. Stephen Waydo, and
`
`Dr. Tao Shui, respectively, taken during the ITC Investigation. Apple designated
`
`these transcripts as containing its Confidential Business Information.
`
`Exhibit 2083 is an internal Apple email between Apple’s engineers and an
`
`attached internal Apple presentation. Apple designated this exhibit as containing its
`
`Confidential Business Information.
`
`Exhibit 2084 is an internal Apple organizational chart. Apple designated this
`
`exhibit as containing its Confidential Business Information.
`
`Exhibits 2085, 2086, and 2089 are internal Apple presentations concerning its
`
`research and development. Apple designated these exhibits as containing its
`
`Confidential Business Information.
`
`Exhibit 2090 is an internal Apple email between Apple employees. Apple
`
`designated this exhibit as containing its Confidential Business Information.
`
`-4-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Exhibit 2093 is an unredacted copy of the ITC’s Final Initial Determination
`
`in the ITC Investigation. The Final Initial Determination contains both parties’
`
`Confidential Business Information. A public version of the Final Initial
`
`Determination was previously filed as Exhibit 1033.
`
`None of these exhibits or confidential information have been made public.
`
`Because Apple has designated the exhibits and information as its Confidential
`
`Business Information, good cause exists to seal the exhibits and the confidential
`
`version of Masimo’s Patent Owner Response.
`
`IV. CONCLUSION
`The Board should grant this Motion to seal Masimo’s Patent Owner Response
`
`and the requested exhibits.
`
`
`
`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
`
`CERTIFICATE OF SERVICE
`
`Dated: May 26, 2023
`
`
`
`-5-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`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 MOTION
`
`TO SEAL is being served electronically on May 26, 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: May 26, 2023
`
`
`
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`Kim Leung
`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
`
`
`
`-6-
`
`
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