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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`Masimo Corporation,
`Patent Owner.
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`Case IPR2022-01291
`Patent No. 10,687,745
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`PETITIONER’S UNOPPOSED MOTION TO SEAL
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`Case No. IPR2022-01291
`Attorney Docket No. 50095-0045IP1
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`INTRODUCTION
`Pursuant to the Protective Order (EX1035) in this proceeding and 37 C.F.R.
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`§ 42.14, Petitioner Apple Inc. (“Apple”) submits this Motion to Seal (“Motion”)
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`concurrent with the filing of Petitioner’s Reply to the Patent Owner’s Response
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`(“Reply”). Through this Motion, Apple respectfully requests that certain
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`information in the Reply and other information cited in the Reply or otherwise of
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`record in this proceeding be sealed.
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`As detailed further below, the documents and information that Apple moves
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`to seal include Apple confidential business information (“CBI”) related to, among
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`other things, development of Apple’s Watch products, including internal business
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`practices and sensitive, proprietary technical and product development information
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`concerning Apple’s Watch products. The CBI in this proceeding includes sealed
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`documents and exhibits from related ITC Investigation (Certain Light-Based
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`Physiological Measurement Devices and Components Thereof, Inv. No. 337-TA-
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`1276 (ITC) involving U.S. Patent 10,687, 745 (“the ’745 Patent”) and other
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`patents. The CBI in this proceeding further includes argument and testimony that
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`references sealed documents and exhibits from ITC Inv. No. 337-TA-1276.
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`Apple specifically moves to seal portions of the Reply and Exhibits 1036,
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`1037, 1042, and 1059 that contain Apple CBI as described in the sections below.
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`Public versions of the Reply and Exhibits 1036, 1037, 1042, and 1059 with
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`1
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`Case No. IPR2022-01291
`Attorney Docket No. 50095-0045IP1
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`confidential portions redacted are being filed with the Reply and this Motion. The
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`parties have conferred by email and Masimo has explained its position on the
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`Motion as follows:
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`“Masimo will not oppose the motion to seal Apple CBI
`that Apple produced from the ITC proceeding in response
`to Masimo’s motion for additional discovery in these IPR
`or in EX1036 or EX1037. However, to the extent Apple
`seeks to introduce Apple CBI that was not produced in
`response to Masimo’s motion for additional discovery in
`these IPRs or in EX1036 or EX1037, Masimo reserves all
`rights to oppose. Masimo also reserves the right to object
`to Apple’s Reply arguments or to any exhibits that Apple
`may submit with its Reply.”
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`Because Apple has not introduced any new Apple CBI that was not
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`produced responsive to the Board’s order granting-in-part Masimo’s motion for
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`additional discovery or that is not in Exhibits 1036 or 1037, Apple understands that
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`this Motion is unopposed.
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` THE DOCUMENTS REQUESTED TO BE SEALED CONTAIN
`CONFIDENTIAL BUSINESS INFORMATION
`In an inter partes review (“IPR”), the Board will grant a motion to seal upon
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`a showing of “good cause” for the relief requested. 37 C.F.R. § 42.20(c). The Board
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`has explained that “a movant to seal must demonstrate adequately that (1) the
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`information sought to be sealed is truly confidential, (2) a concrete harm would result
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`upon public disclosure, (3) there exists a genuine need to rely in the trial on the
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`specific information sought to be sealed, and (4), on balance, an interest in
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`maintaining confidentiality outweighs the strong public interest in having an open
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`record.” Argentum Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2017-01053,
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`Paper 27 at 4 (PTAB Jan. 19, 2018) (informative).
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`Apple respectfully submits that each of the Argentum conditions is satisfied
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`and that good cause exists for the relief requested in this Motion.
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`Identification of Documents and Information that Apple
`Moves to Seal
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`Apple moves to seal the following information:
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`First, Apple moves to seal identified portions of the Supplemental Declaration
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`of Dr. Brian Anthony (APPLE-1042). These portions of Dr. Anthony’s
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`Supplemental Declaration reference testimony from witnesses offered in closed
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`session in ITC Inv. No. 337-TA-1276. These portions of Dr. Anthony’s
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`Supplemental Declaration further reference various confidential exhibits from ITC
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`Inv. No. 337-TA-1276 that have been entered in this proceeding. The identified
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`information from these portions of Dr. Anthony’s Supplemental Declaration
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`includes quotes, images, and discussion of CBI related to Apple’s Watch products,
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`including sensitive, proprietary research and development (R&D) information, trade
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`secrets, proprietary processes and apparatuses, and confidential business operations
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`information.
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`Second, Apple moves to seal identified portions of the deposition transcript
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`of R. James Duckworth, Ph.D., conducted August 9, 2023 (APPLE-1059). These
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`portions of Dr. Duckworth’s deposition transcript include questions and testimony
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`that refer to various confidential exhibits that have been entered in the subject IPR
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`from ITC Inv. No. 337-TA-1276. The questioning and testimony in the identified
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`portions of the transcript include discussion of CBI related to Apple’s Watch
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`products, including sensitive, proprietary research and development (R&D)
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`information, trade secrets, proprietary processes and apparatuses, and confidential
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`business operations information.
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`Third, Apple moves to seal pages 5-23 of the transcript of Dr. Ueyn Block’s
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`testimony from a hearing in ITC Inv. No. 337-TA-1276 (APPLE-1036). These
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`pages of the hearing transcript were conducted in closed session at the ITC and
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`include questioning and testimony related to Apple’s Watch products, including
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`sensitive, proprietary research and development (R&D) information, trade secrets,
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`proprietary processes and apparatuses, and confidential business operations
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`information.
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`Fourth, Apple moves to seal pages 3-21 of the transcript of Dr. Saahil Mehra’s
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`testimony from a hearing in ITC Inv. No. 337-TA-1276 (APPLE-1037). These
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`pages of the hearing transcript were conducted in closed session at the ITC and
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`include questioning and testimony related to Apple’s Watch products, including
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`sensitive, proprietary research and development (R&D) information, trade secrets,
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`proprietary processes and apparatuses, and confidential business operations
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`information.
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`Fifth, Apple moves to seal identified portions of Petitioner’s Reply to Patent
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`Owner’s Response in this proceeding. These portions of the Reply reference and
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`discuss Apple CBI from ITC Inv. No. 337-TA-1276, and include discussion of CBI
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`related to Apple’s Watch products, including sensitive, proprietary research and
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`development (R&D) information, trade secrets, proprietary processes and
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`apparatuses, and confidential business operations information.
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` The Information Sought to be Sealed is Truly Confidential
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`The Reply and Exhibits 1036, 1037, 1042, and 1059 each contain truly
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`confidential information that falls within the scope of Confidential Information
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`agreed to by the parties and approved by the Board in the Protective Order in this
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`proceeding. See APPLE-1035. The confidential information includes information
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`from closed session hearings at the ITC, information that has already been sealed
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`at the ITC, and analysis and discussion of such information. The information
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`includes sensitive, proprietary research and development (R&D) information, trade
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`secrets, proprietary processes and apparatuses, and confidential business operations
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`information belonging to Apple.
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`Case No. IPR2022-01291
`Attorney Docket No. 50095-0045IP1
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` Apple Would Suffer Concrete Harm Upon Public Disclosure
`of the Information Sought to be Sealed
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`The CBI contained in the Reply and Exhibits 1036, 1037, 1042, and 1059
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`includes sensitive, proprietary research and development (R&D) information
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`related to Apple’s Watch products, trade secrets, proprietary processes and
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`apparatuses, and confidential business operations. The information includes
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`testimony from engineers, and internal documents related to the design and
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`development of aspects of the Watch. The testimony and internal documents
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`contain sensitive and proprietary information regarding technical development of
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`the Watch and proprietary processes and information relating to the same. Among
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`other things, Apple would suffer concrete financial harm through exposure of
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`proprietary, trade secret information to competitors who could leverage Apple’s
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`substantial investment in research and development of the Watch to their own
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`advantage. The parties have agreed that disclosure of such CBI would “likely have
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`the effect of … causing substantial harm to the competitive position of the person,
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`firm, partnership, corporation, or other organization from which the information
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`was obtained.” EX1035 at 1
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` Apple’s Interest in Maintaining Confidentiality Outweighs
`the Strong Public Interest in Having an Open Record
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`On balance, Apple’s interest in maintaining confidentiality outweighs the
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`strong public interest in having an open record. See Argentum at 3-4. As noted
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`above, the CBI that Apple moves to seal is truly confidential and Apple would
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`suffer concrete harm if the information were made available to the public.
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`Moreover, Apple is not seeking to seal the exhibits in their entirety but
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`moves to seal those aspects of the exhibits and the reply that are truly confidential
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`and would likely cause harm to Apple if publicly disclosed. Apple is concurrently
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`filing redacted versions of the Reply and Exhibits. The public will have full access
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`to the nature of the information and the conclusions reached using the information
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`as portions of Apple’s Reply remains unsealed. Such access should adequately
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`fulfill the public’s need to maintain a complete file history, while still protecting
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`Apple’s confidential and proprietary information.
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`Finally, Apple also notes that the CBI that requested to be sealed primarily
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`involves information that Apple was compelled to produce to Masimo pursuant to
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`the Board’s order granting Masimo’s motion for additional discovery, along with a
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`pair of exhibits (i.e., APPLE-1036, APPLE-1037) that Apple entered as
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`supplemental information in response to Masimo’s discovery motion. Apple’s CBI
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`should not risk being exposed to the public on account of Masimo’s discovery.
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` CONCLUSION
`For these reasons, Apple respectfully requests that the Board seal and protect
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`the Reply and confidential Exhibits 1036, 1037, 1042, and 1059. Apple further
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`Case No. IPR2022-01291
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`respectfully requests that the Board seal and protect the confidential information in
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`these exhibits until such time as it receives and rules on this Motion.
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`Dated: August 21, 2023
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`(Control No. IPR2022-01291)
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`/Nicholas W. Stephens/
` W. Karl Renner, Reg. No. 41,265
` Nicholas Stephens, Reg. No. 74,320
` Andrew B. Patrick, Reg. No. 63,471
` Kim Leung, Reg. No. 64,399
` Patrick J. Bisenius, Reg. No. 63,893
` Patrick J. King, Reg. No. 60,816
` Fish & Richardson P.C.
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`60 South Sixth Street
` Minneapolis, MN 55402
` T: 202-783-5070
` F: 877-769-7945
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`Attorneys for Petitioner
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`Case No. IPR2022-01291
`Attorney Docket No. 50095-0045IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on August 21, 2023, a complete and entire copy of this Petitioner’s
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`Unopposed Motion to Seal was provided via email to the Patent Owner by serving
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`the email correspondence addresses of record as follows:
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`Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel C. Kiang (Reg. No. 79,631)
`Jeremiah S. Helm (Pro Hac Vice)
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
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`E-mail: AppleIPR745-1@knobbe.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`pacheco@fr.com
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