Trials@uspto.gov
`571.272.7822
`
` Paper: 27
`
` Date: February 17, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01299 (US 7,761,127 B2)
`
`
`
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Provisionally Granting Patent Owner’s Renewed Motion to Seal and
`For Entry of a Modified Protective Order
` 37 C.F.R. §§ 42.5, 42.14, 42.54
`
`
`
`
`
`571.272.7822
`
` Paper: 27
`
` Date: February 17, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01299 (US 7,761,127 B2)
`
`
`
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Provisionally Granting Patent Owner’s Renewed Motion to Seal and
`For Entry of a Modified Protective Order
` 37 C.F.R. §§ 42.5, 42.14, 42.54
`
`
`
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`
`
`I. INTRODUCTION
`As authorized in Paper 13 and related communication (Exhibit 3001),
`Patent Owner (“Masimo”) filed a Renewed Motion to Seal and For Entry of
`a [Modified] Protective Order (Paper 14, “Motion” or “Mot.”). Petitioner
`(“Apple”) opposed the motion (Paper 16, “Opposition” or (Opp.”); Patent
`Owner submitted a Reply in support of its Motion (Paper 20).
`
`II. Documents Subject to Motion to Seal
`Patent Owner moves to seal the unredacted versions of its Preliminary
`Response (Paper 9) and Exhibits 2002, 2051, and 2082. Mot. 1. Petitioner
`further moves to seal the entirety of Exhibits 2003, 2004, 2006, 2007, 2009,
`2010, 2012–2016, 2018–2021, 2027, 2028, 2031, 2032, 2033, 2057, 2058,
`and 2081. Id. As set forth in the Motion, the material sought to be sealed
`largely relates to Patent Owner’s contentions of objective evidence of non-
`obviousness including its arguments of nexus between its commercial
`products and the challenged claims. See id. at 2–6. Petitioner does not
`oppose Patent Owner request to seal these documents, but does oppose our
`adoption of Patent Owner’s proposed modified protective order. See
`generally, Opp.
`Considering the argument and evidence of record, Patent Owner has
`shown good cause to seal the identified documents. We address, below, the
`terms under which the documents may be sealed.
`
`Proposed Modified Protective Order (“PPO”)
`III.
`Under 37 C.F.R. § 42.54(a), “[a] party may file a motion to seal where
`the motion to seal contains a proposed protective order, such as the default
`protective order set forth in the Office Patent Trial Practice Guide.” Under
`
`2
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG” or “Guidance”)1,
`no protective order shall apply to a proceeding until the Board enters one.
`CTPG, 91. “The Board encourages the parties to adopt the Board’s default
`protective order.” Id. However,
`[i]f the parties choose to propose a protective order deviating
`from the default protective order, they must submit the
`proposed protective order jointly along with a marked-up
`comparison of the proposed and default protective orders
`showing the differences between the two and explain why good
`cause exists to deviate from the default protective order.
`Id. at 91.
`Patent Owner requests entry of a PPO that modifies three aspects of
`the Board’s Default Protective Order, specifically, altering the Default
`Protective Order’s “Protective Order Material” section; the addition of a
`development bar; and the addition of a prosecution bar. See Mot. 1–2; Exs.
`2086, 2087 (clean and redlined versions of proposed protective order).
`Patent Owner contends that the each of these modifications are similar to
`those of the protective order entered in the copending ITC Investigation
`(Certain Light-Based Physiological Measurement Devices and Components
`Thereof, Inv. No. 337-TA-1276 (ITC)), and that it merely “seeks a protective
`order here with the same level of protection that the parties already agreed to
`in the ITC Investigation.” Mot. 2, 7–8. We address the three provisions in
`turn.
`
`CBI Designation
`A.
`As detailed on pages 6–9 of the Motion, Patent Owner’s PPO
`generally replaces the Default Protective Order’s “Protective Order
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
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`IPR2022-01299 (US 7,761,127 B2)
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`Material” designation with a “Confidential Business Information” or “CBI”
`designation encompassing “confidential design, engineering, and financial
`information,” and further limiting the persons authorized to access that
`information. See Mot. 7. Patent Owner contends that Petitioner did not
`object to the CBI provisions of its PPO, and we find that Apple’s Opposition
`brief contains no particularized objections to any CBI provision. See id. at 8;
`see generally, Opp.
`Considering the argument and evidence of record, Patent Owner
`shows good cause supporting the CBI provisions of its PPO. See Mot. 6–8.
`
`Development Bar
`B.
`Section 4 of the PPO, titled, “Prosecution and Development Bar,”
`relates to CBI involving “Relevant Technology,” i.e., “technology related to
`non-invasive monitoring of pulse oximetry, total hemoglobin, oxygen
`content, carboxyhemoglobin, and/or methemoglobin.” See Ex. 2086, ¶ 4.A.
`Paragraph 4.C of that section limits an expert’s use of this information “in
`creating, developing, or modifying, for commercial use . . . any Relevant
`Technology from the time of first receipt of such confidential material
`through one year after the date the expert formally withdraws from the
`Protective Order.” Id. ¶ 4.C.
`In its Motion, Patent Owner argues that “absent entry of the
`development bar, there is significant risk that [its] CBI would inadvertently
`inform [Patent Owner’s] expert Anthony in developing commercial products
`for Masimo competitors . . . . because Anthony works with its competitors,
`including Apple and Philips” in related commercial fields. Mot. 11–12.
`Considering the argument and evidence of record, and under the
`particular circumstances presented here, including the absence of any
`
`4
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`IPR2022-01299 (US 7,761,127 B2)
`
`argument or opposition from Petitioner directed specifically to the
`development bar, 2 Patent Owner shows good cause supporting the
`development bar as described in paragraph 4.C of the PPO. See Mot. 6–8.
`
`Prosecution Bar
`C.
`Paragraph 4.B of the PPO would subject individuals who receive CBI
`to a two-year prosecution bar. Ex. 2086 ¶ 2.B. As noted by Patent Owner,
`paragraph 4.B does not bar IPR and post-grant activities, “[e]xcept for
`amending claims.” Mot. 9. Patent Owner argues that the use of a prosecution
`bar is a “well-accepted” means for “prevent[ing] the inadvertent use of a
`party’s most confidential and detailed information to inform a competitor’s
`patent prosecution strategy,” and that the bar proposed here is, “similar to
`the one the parties agreed to in the ITC investigation.” Mot 8–9 (citing In re
`Deutsche Bank Tr. Co. Ams., 605 F.3d 1373, 1378 (Fed. Cir. 2010)).
`The Board’s Guidance, however, counsels against the wholesale
`adoption of protective orders from other fora, particularly with respect to
`provisions restricting practice before the Office. In particular, the CTPG
`states that we may enter a proposed protective order where “certain
`provisions commonly found in district court protective orders that are
`unnecessary or inappropriate in proceedings before the Board are removed.”
`CTPG, 116. Addressing exemplary “unnecessary” provisions, our Guidance
`explains that “provisions protecting computer source code may be
`unnecessary because proceedings before the Board rarely, if ever, require
`
`
`2 Although Petitioner requests that we enter the Default Protective Order or
`“at a minimum strike” the Prosecution and Development Bar section of the
`PPO (Opp. 3, n.1), Petitioner’s arguments do not otherwise implicate
`Section 4 as a whole or the development bar of paragraph 4.C, but are
`specific to the prosecution bar of paragraph 4.B. See generally Opp.
`
`5
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`analysis of computer source code.” Id. With respect to potentially
`“inappropriate” provisions, our Guidance provides that
`prosecution bars are rarely appropriate in proceedings before
`the Board because the disadvantage caused by a prosecution bar
`to patent owners wishing to make use of amendment or reissue
`processes in most cases outweighs the risk that confidential
`technical information about existing or future commercial
`products will be revealed during a proceeding.
`
`Id.
`
`In support of its position, Patent Owner argues that the Guidance’s
`caution regarding prosecution bars “does not apply here” because it is
`directed solely to protecting Patent Owners. Mot. 14. According to Patent
`Owner, “the proposed prosecution bar does not prohibit PTAB activities
`except claim amendment, which would only apply to Masimo . . . [and,]
`patent owner, Masimo, does not seek to amend or reissue its claims.” Id. We
`decline to read the intent of our Guidance so narrowly.
`As noted in Green Cross, the CTPG’s guidance that “[c]ounsel for a
`party who receives confidential information in a proceeding will not be
`restricted by the Board from representing that party in any other proceeding
`or matter before the Office,” “reflects our general practice of not including
`prosecution bars in protective orders.” Green Cross Corp. v. Shire Human
`Genetic Therapies, Inc., IPR2016-00258, Paper 37 at 5 (PTAB Aug. 9,
`2016) (quoting CTPG, 115). Any potential “disadvantage . . . to patent
`owners” referenced in our Guidance is, therefore, merely exemplary of why
`prosecution bars are disfavored in proceedings before the Board. See CTPG,
`116.
`
`“In determining whether to impose a prosecution bar, a court must
`balance the risk to the proponent’s interests “against the potential harm to
`
`6
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`the opposing party from restrictions imposed on that party’s right to have the
`benefit of counsel of its choice.” Green Cross, Paper 37 at 3 (citing
`Deutsche Bank at 1380). Considering the potential harms of the proposed
`prosecution bar more broadly than advocated by Patent Owner, we agree
`with Petitioner that a “foreseeable consequence of the prosecution bar is to
`handcuff Apple and its counsel in other proceedings before the Office where
`Apple is the patent owner or applicant—especially proceedings that may
`bear on Masimo’s extended litigation campaign against Apple.” Opp. 6; see
`also id. at fn.2 (raising “practical challenges that would result from any
`attempt to bifurcate counsel and experts among amendment and non-
`amendment portions of an IPR or other post-grant proceeding”).
`Patent Owner relies on the Board’s Order in Caterpillar as
`establishing “the propriety of entering a protective order with a prosecution
`bar ‘commensurate in scope with the protective order entered in the related
`ITC investigation.’” Mot. 13 (citing Caterpillar Inc. v. Wirtgen Am., Inc.,
`IPR2017-02188, Paper 18 at 3, 7, Paper 19 at 2 (PTAB Aug. 22, 2018). But
`Caterpillar provides no reasoned explanation for permitting a prosecution
`bar provision. Rather, the one-page order merely repeats the parties’
`assertion “that the proposed Modified Protective Order “is ‘similar in
`substantive protection to the ITC protective order,”” and states that its
`purpose “is to provide protection for documents to be produced in this
`proceeding under our Order authorizing additional discovery.” Caterpillar,
`Paper 19 at 2. Considering the Order’s lack of analysis, we do not find
`persuasive Patent Owner’s reliance on Caterpillar.
`Other Board proceedings, in contrast, document the Board’s denial of
`entry of protective orders having prosecution bars absent a showing that
`“inclusion of such terms . . . which appear to conflict directly with the
`
`7
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`Board’s guidelines, is warranted.” See, e.g., Edwards Lifesciences Corp. v.
`Boston Scientific, Inc., IPR2017-00060, Paper 24 at 4–5 (PTAB July 20,
`2017). The Edwards panel noted that the parties’ interest “in harmonizing
`requirements . . . does not alleviate the need for the Parties to make the
`necessary showing in this proceeding in support of each and every
`modification of the Board’s default protective order.” Id. at 5. Our
`requirement that a movant make the necessary showing of good cause is
`particularly relevant in the context of a prosecution bar, as it directly
`implicates core responsibilities of the Office and members of the Patent Bar
`authorized to practice before it. In this respect we agree with Petitioner that
`“Masimo’s generalized desire to obtain “the same level of protection” at the
`PTAB as the ITC also does not demonstrate sufficient cause for a
`prosecution bar.” See Opp. 5.
`The Panel in Green Cross, determined that proposed prosecution bar
`provisions were “contrary to Board policy and practice,” and not sufficiently
`balanced by the alleged harms. Green Cross, Paper 37 at 4. The Panel was
`not persuaded by argument that “Green Cross may inadvertently or
`strategically misus[e] Shire’s confidential information to inform the
`prosecution of pending and future patent applications.” Id. at 4. In particular,
`the Panel noted that “Shire does not . . . identify with specificity the nature
`of the information that may potentially be misused or the harm that might
`ensue.” Id. In FMC the Board similarly denied entry of a proposed
`protective order because the movant’s “assertions [were] generic in nature
`and d[id] not identify any rare circumstance or good cause for permitting the
`inclusion of a prosecution bar.” FMC Tech, Inc. v. OneSubSea IP UK Ltd.,
`IPR2019-00935, Paper 17 at 6 (PTAB Feb. 5, 2020).
`
`8
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`As in Green Cross and FMC, Patent Owner provides only generic
`assertions for why good cause supports entry of a prosecution bar. See e.g.,
`Mot. 10–11 (“with pending lawsuits and concurrent prosecution, absent
`entry of the proposed prosecution bar, there is a risk that Masimo’s CBI
`would inadvertently inform Apple’s prosecution strategy,” or “enable[e]
`Apple and other competitors to seek patents meant to interfere with
`Masimo’s sales of rainbow® sensors”); Reply 2–3 (Petitioner “could
`inadvertently use Masimo’s CBI to prosecute patents targeting Masimo’s
`products”). As such, we agree with Petitioner that “[r]ather than
`demonstrating any ‘rare’ circumstance that might justify a prosecution bar,
`Masimo’s Renewed Motion only confirms the routine nature of its request.”
`Opp. 4. On this record, the balance of interests does not favor entry of the
`proposed prosecution bar.
`Considering the argument and evidence of record, Patent Owner has
`not shown good cause supporting the prosecution bar as described in
`paragraph 4.B of the PPO.
`
`
`ORDER
`In consideration of the above it is,
`ORDERED that Patent Owner’s renewed motion for entry of a
`modified protective order is provisionally granted, subject to the elimination
`of the prosecution bar provision of paragraph 4.B;
`
`FURTHER ORDERED that, within three business days of this Order,
`Patent Owner shall file a modified protective order revised in accordance
`with the above; and
`
`9
`
`
`
`IPR2022-01299 (US 7,761,127 B2)
`
`FURTHER ORDERED that Patent Owner’s renewed motion to seal
`the unredacted version of Paper 9, Exhibits 2002, 2051, and 2082, and the
`entirety of Exhibits 2003, 2004, 2006, 2007, 2009, 2010, 2012–2016, 2018–
`2021, 2027, 2028, 2031, 2032, 2033, 2057, 2058, and 2081, is provisionally
`granted, subject to entry of a modified protective order.
`
`
`
`For PETITIONER:
`
`Walter Renner
`Nicholas Stephens
`Andrew Patrick
`Dan Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`dsmith@fr.com
`
`
`For PATENT OWNER:
`
`Irfan A. Lateef
`Ted M. Cannon
`Jarom D. Kesler
`Jacob Peterson
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2ial@knobbe.com
`2tmc@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`10
`
`
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