`
`Filed: January 17, 2023
`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Irfan A. Lateef (Reg. No. 51,922)
`Ted M. Cannon (Reg. No. 55,036)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`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:
`AppleIPR127-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01299
`U.S. Patent 7,761,127
`
`
`
`
`
`
`PATENT OWNER REPLY IN SUPPORT OF RENEWED MOTION TO
`SEAL AND FOR ENTRY OF A PROTECTIVE ORDER
`
`
`
`
`
`
`
`I.
`APPLE DOES NOT OPPOSE THE MOTION TO SEAL
`Apple does not oppose Masimo’s Motion to Seal or argue that any exhibit
`
`proposed to be sealed is not confidential. See Paper 16, 11, n.3. Therefore, the
`
`Board should grant the Motion to Seal.
`
`II. GOOD CAUSE EXISTS FOR THE CBI DESIGNATION
`Apple does not substantively object to the Confidential Business Information
`
`(“CBI”) designation of Masimo’s proposed protective order. Id., 10-11. Apple has
`
`not rebutted Masimo’s showing of harm to Masimo due to disclosure to Apple of
`
`Masimo’s CBI about its rainbow® sensors. See Paper 14, 7-8. Such disclosure
`
`would facilitate an attempt to compete against Masimo. Thus, the Board should
`
`enter a protective order including at least Masimo’s CBI designation.
`
`III. GOOD CAUSE EXISTS FOR THE PROSECUTION BAR
`Apple relies on CTPG guidance that “prosecution bars are rarely appropriate”
`
`at the Board. Paper 16, 3 (quoting CTPG, 116). But Apple misinterprets the CTPG.
`
`The CTPG provides two examples of protective order provisions that are
`
`rarely needed: (1) “provisions protecting computer source code” and (2) prosecution
`
`bars protecting “confidential technical information about existing or future
`
`commercial products.” CTPG, 116. The Board rarely needs to analyze such source
`
`code or confidential technical information because it typically compares patent
`
`claims with public prior art. However, the CTPG leaves open the possibility that the
`
`Board may need to analyze such source code or confidential technical information
`
`1
`
`
`
`
`
`in rare cases. This is one such rare case, where the Board needs to consider Masimo
`
`CBI about its rainbow® sensors as objective indicia of non-obviousness.
`
`In evaluating a proposed prosecution bar, the CTPG contemplates weighing
`
`the risk of confidential information being revealed against the “disadvantage caused
`
`by a prosecution bar to patent owners wishing to” amend or reissue claims. CTPG,
`
`116 (emphasis added). Here, the proposed prosecution bar would not disadvantage
`
`the patent owner because Masimo does not intend to amend or reissue its claims.
`
`Apple asserts that the CTPG equally disfavors prosecution bars that may affect
`
`petitioner’s claim amendments in other matters. CTPG, 116; Paper 16, 6-7. But the
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`CTPG’s plain language refers to “patent owners,” not petitioners. Regardless, Apple
`
`has not shown that any of its attorneys who would view CBI need to be involved in
`
`patent claim drafting or amending in this field.
`
`Apple mischaracterizes Masimo’s concerns justifying a protective order as
`
`“routine,” “common,” or “generalized.” Paper 16, 4-5. But Masimo did not solely
`
`allege that the parties are competitors involved in co-pending litigation with patents
`
`asserted in both directions. Masimo established specific facts: (1) Apple sued
`
`Masimo for patent infringement on patents Apple prosecuted and obtained while
`
`concurrently litigating against Masimo in the ITC and district court and (2) Apple
`
`expert Anthony has consulted with and developed products for Masimo competitors.
`
`Paper 14, 11-12. These undisputed facts raise concrete and far-from-speculative
`
`-2-
`
`
`
`
`
`risks that, absent the proposed bar, Apple or Anthony could inadvertently use
`
`Masimo’s CBI to prosecute patents targeting Masimo’s products or to develop
`
`competing products. And Apple has not rebutted that Masimo’s CBI is highly
`
`sensitive, such that such use would significantly harm Masimo. Thus, Masimo does
`
`not rely on the “generic” assertions or “broad generalizations” referenced in FMC
`
`and Green Cross, contrary to Apple’s assertions. Paper 16, 4-5.
`
`By contrast, Apple has not shown any specific and concrete harm the proposed
`
`prosecution bar would cause to Apple. Anthony already agreed to the development
`
`bar in the ITC. So, Anthony would presumably agree again, allowing Apple to use
`
`its chosen expert. Apple has not argued otherwise. And Apple has not alleged that
`
`any of its IPR attorneys have prosecuted or will prosecute relevant patents. Instead,
`
`Apple merely speculates that the bar could affect Apple’s choice of counsel or
`
`impose unspecified “prejudices and practical challenges” in the future. Paper 16, 6,
`
`n.2. Such unsubstantiated speculation cannot outweigh Masimo’s specific and
`
`unrebutted showing of harm. Thus, the Green Cross and CTPG balance of interests
`
`supports a prosecution bar. Paper 14, 10-13.
`
`Apple never substantively addresses that it insisted “a patent prosecution and
`
`product development bar is a necessary and reasonable amendment to the [ITC]
`
`Protective Order” to protect Apple’s CBI. EX2091, 3. Instead, without support,
`
`Apple argues that differences between the ITC and PTAB support entry of a
`
`-3-
`
`
`
`
`
`prosecution bar in the ITC but not here. Paper 16, 5. The identical issue of
`
`preventing inadvertent use of CBI exists in both forums in this circumstance.
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`Moreover, the ITC uses the same “good cause” standard for entry of protective
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`orders. See EX2084, 2 (ALJ finding good cause). The primary difference that makes
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`prosecution bars rare in IPRs is that the Board’s limited role of assessing
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`patentability requires CBI review in rare cases only. But this is one such case.
`
`Here, where Apple likely sees no need to submit its own CBI, Apple seeks to
`
`obtain a strategic advantage by refusing to afford Masimo’s CBI the same level of
`
`protection as in the ITC. Apple argues that a desire to provide CBI “the same level
`
`of protection” as in the ITC is not “sufficient cause for a prosecution bar.” Paper 16,
`
`5. But in Caterpillar, the Board entered a prosecution bar at least in part to provide
`
`CBI the same level of protection as in the ITC. Caterpillar Inc. v. Wirtgen Am., Inc.,
`
`IPR2017-02188, Paper 18 at 3, 7, Paper 19 at 2 (PTAB Aug. 22, 2018).
`
`Apple also argues that Masimo’s CBI deserves less protection than the CBI in
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`Caterpillar because Masimo was not compelled to produce its CBI. Paper 16, 8.
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`But neither Caterpillar nor any other case suggests that the way CBI is introduced
`
`is relevant to the balance of harms contemplated by the CTPG. Apple’s use of
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`Masimo’s CBI for prosecution or product development would severely harm
`
`Masimo regardless of whether Masimo is compelled to produce the CBI. And while
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`Masimo could choose to not submit CBI, it would be unfair to require Masimo to
`
`-4-
`
`
`
`
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`make that choice, and forfeit its reliance on objective indicia, to protect its CBI.
`
`Apple next argues the Board should reject a prosecution bar because it will
`
`need to publish Masimo CBI critical to patentability anyway. Paper 16, 9. Apple’s
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`argument is mere speculation. The Board will not need to publicly disclose sensitive
`
`details about the rainbow® sensors to provide a reasonably complete public record.
`
`Apple also warns against creating a bright line rule that a prosecution bar is
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`appropriate whenever a patent owner submits CBI and agrees not to amend. Paper
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`16, 7. Masimo proposes no such rule. The Board has discretion to reject any
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`prosecution bar for failure to show good cause.
`
`
`
`Apple argues it had insufficient time to negotiate a joint protective order and,
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`thus, the Board should enter the Default Protective Order. Paper 16, 10. However,
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`the parties met and conferred on November 14, 2022. Masimo asked if Apple would
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`consider a prosecution bar of any scope. Apple said no. Thus, Apple’s suggestion
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`that additional negotiation may have resulted in a joint protective order is baseless.
`
`IV. CONCLUSION
`The Board should grant the Motion to Seal and enter Masimo’s proposed
`
`protective order for the reasons set forth herein and in the motion.
`
`Dated: January 17, 2023
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`
`
`
`-5-
`
`
`
`
`
`
`
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`-6-
`
`
`
`
`
`
`
`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 REPLY IN
`
`SUPPORT OF RENEWED MOTION TO SEAL AND FOR ENTRY OF A
`
`PROTECTIVE ORDER is being served electronically on January 17, 2023, to the
`
`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
`
`
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`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: IPR50095-0046IP1@fr.com
`
`Dated: January 17, 2023
`
`56941170
`
`
`
`-7-
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`
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