`
`Filed: May 19, 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
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`
`
`
`
`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 MOTION TO SEAL
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`Patent Owner Masimo Corporation (“Masimo”) submits this Motion to Seal.
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`Counsel for the parties have conferred via email. Apple reserves the right to oppose
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`upon review of the confidential information.
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`INTRODUCTION
`Masimo’s Patent Owner Response relies, in part, on objective evidence of
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`I.
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`non-obviousness. Specifically, Masimo presents evidence of commercial success
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`and praise for the ’127 patented product, Masimo’s rainbow® sensors. Declarations
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`and other exhibits supporting the POR include Masimo’s proprietary and highly
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`sensitive information detailing the development, design, structure, functionality, and
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`sales of that product. Thus, Masimo moves to seal confidential versions of the
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`declarations of Mohamed Diab (Exhibit 2102), William P. King, Ph.D. (Exhibit
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`2151), and Micah Young (Exhibit 2181). Masimo has filed public versions, with
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`confidential portions redacted, of those declarations. Masimo also moves to seal
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`Exhibits 2103, 2104, 2106, 2107, 2109-2121, 2127, 2128, 2131-2134, 2157, 2158,
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`and 2182.
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`A protective order has been entered in this IPR. EX2194. Accordingly,
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`Masimo does not move for entry of a protective order with this motion. The
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`protective order entered in this IPR includes protection for Confidential Business
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`Information (“CBI”) modeled after provisions of the protective order in the ITC
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`investigation Certain Light-Based Physiological Measurement Devices and
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`1
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`
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`Components Thereof, Inv. No. 337-TA-1276 (ITC) (“ITC Investigation”). EX2083,
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`EX2084. In the ITC Investigation, Masimo designated as CBI most of the objective
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`evidence that it now submits with the POR. Masimo also submits with the POR
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`additional objective evidence it did not rely on in the ITC Investigation.
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`II.
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`DOCUMENTS REQUESTED TO BE SEALED
`Exhibit 2102 is the declaration of named inventor Mohamed Diab. The
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`declaration tracks testimony that Diab gave in deposition and at the hearing in the
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`ITC investigation. The redacted portions of this declaration contain information
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`pertaining to Masimo’s research, development, and production work related to the
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`subject matter of the ’127 patent and patented products.
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`Exhibit 2103 is a collection of plots from computer simulations that Diab
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`performed while researching and developing the invention of the ’127 patent and
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`rainbow® products.
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`Exhibits 2104 is a Masimo internal PowerPoint Presentations about research
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`and development of the ’127 invention and rainbow® products.
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`Exhibits 2106, 2107, 2109, 2110, 2111, 2112, 2113, 2114, 2115, 2120, 2127,
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`2132, and 2133 are engineering drawings and technical specifications detailing the
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`design, structure, components, materials used, dimensions, and functionality of
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`rainbow® sensors. These documents have internal corporate confidentiality
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`designations.
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`-2-
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`Exhibit 2116 is an internal Masimo CAD drawing showing an expanded view
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`of, and additional detail related to, the substrate of some rainbow® products.
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`Exhibit 2117 is an internal Masimo presentation containing information about
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`adhesives used in rainbow® sensors.
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`Exhibit 2118 is a technical data sheet for adhesive used in rainbow® sensors.
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`Exhibits 2119 and 2121 are internally produced, non-public photographs of
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`internal parts and structure of rainbow® sensors that are not publicly viewable.
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`Exhibit 2128 is a collection of testing data plots showing results of internal
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`Masimo sensor characterization tests to verify that the rainbow® products work.
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`Exhibit 2131 is Diab’s confidential research folder containing an internal
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`Masimo technical report authored by the named inventors and having an internal
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`corporate confidentiality designation. This exhibit contains information about
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`Masimo’s research and development of the ’127 invention and rainbow® products.
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`Exhibit 2134 is an excerpt of Masimo source code including information
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`about a proprietary algorithm executed by rainbow® products.
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`Exhibit 2151 is a declaration of Masimo’s technical expert, William P. King,
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`Ph.D.. The redacted portions of King’s declaration include information from the
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`confidential testimony of Diab and Exhibit 2103. Exhibits 2157 and 2158 are King’s
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`claim charts detailing analysis comparing the rainbow® products to the claims of
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`the ’127 patent. The charts heavily rely on confidential exhibits.
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`-3-
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`Exhibit 2181 is a declaration of Micah Young, Masimo’s CFO. Paragraph 9
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`summarizes confidential financial data in Exhibit 2182. Exhibit 2182 is a
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`spreadsheet showing confidential financial data from an internal Masimo database.
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`None of these exhibits or confidential information have been made public.
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`III. MOTION TO SEAL LEGAL STANDARD
`“There is a strong public policy for making all information filed in a
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`quasijudicial administrative proceeding open to the public.” Garmin Int’l v. Cuozzo
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`Speed Techs., LLC, IPR2012–00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper
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`34). The record for an inter partes review shall be made available to the public,
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`except as otherwise ordered on a motion to seal. 35 U.S.C. § 326(a)(1); 37 C.F.R. §
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`42.14. The documents and information that are the subject of the motion to seal
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`shall be treated as sealed until the motion is decided. Id.
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`In determining whether to grant a Motion to Seal, the Board must find “good
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`cause” and “strike a balance between the public’s interest in maintaining a complete
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`and understandable file history and the parties’ interest in protecting truly sensitive
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`information.” 37 C.F.R. § 42.54(a); Consolidated Trial Practice Guide (November
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`2019) at 19 see also Argentum Pharms. LLC v. Alcon Res., Ltd., IPR2017-01053,
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`Paper 27 at 3-4 (PTAB Jan. 19, 2018) (Informative) (describing the “good cause”
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`standard). As described in the Consolidated Trial Practice Guide, the Board
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`identifies confidential information in a manner “consistent with Federal Rule of
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`-4-
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`
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`Civil Procedure 26(c)(1)(G), which provides for protective orders for trade secret or
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`other confidential research, development, or commercial information.”
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`The moving party bears the burden of showing that the relief requested should
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`be granted. 37 C.F.R. § 42.20(c). That includes showing that the information is
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`truly confidential, and that such confidentiality outweighs the strong public interest
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`in having an open record. See Argentum, Paper 27 at 3–4. A party moving to seal
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`has the burden of showing that:
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`(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.
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`IV. GOOD CAUSE EXISTS TO SEAL
`The four Argentum factors for showing that good cause exists to seal
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`confidential information are satisfied here. First, the information sought to be sealed
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`is “truly confidential.” Masimo has not publicly disclosed the information it requests
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`to be sealed. Moreover, the information that was disclosed in the ITC investigation
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`was disclosed as CBI under the ITC protective order.
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`Second, “concrete harm” to Masimo would result if the documents were
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`accessible to Apple or the public. The confidential information includes engineering
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`drawings and technical specifications that reveal significant confidential information
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`-5-
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`about the development, design, structure, and functionality of Masimo’s rainbow®
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`sensors. The rainbow® sensors give Masimo a significant competitive advantage in
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`the market because they are the first and only medical sensors able to noninvasively
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`measure carboxyhemoglobin and other parameters. EX2102 ¶15. Therefore, the
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`public disclosure or use (whether intentional or inadvertent) of Masimo’s
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`confidential information about the development, design, structure, and functionality
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`of the rainbow® sensors would provide Apple and the public at large direct insight
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`into Masimo’s closely held technological advancements and strategies. Disclosure
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`or use of that information outside this proceeding would substantially harm Masimo
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`and its ability to compete in the market. It would enable Apple and other competitors
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`to interfere with Masimo’s commercialization of its rainbow® sensors or to develop
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`competing products to erode Masimo’s market share. To prevent such disclosure
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`and the resultant harm to commercial interests, the CBI documents submitted by
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`Masimo are precisely the type of information to be protected pursuant to 37 C.F.R.
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`§ 42.54(a)(7).
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`Third, Masimo has a “genuine need” to rely on the documents. Masimo
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`asserts that commercial success and industry praise of its rainbow® sensors are
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`objective evidence of non-obviousness of the ’127 patent claims. The documents
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`show that the rainbow® sensors embody the claims and there is a nexus between the
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`objective evidence regarding the rainbow® sensors and the claims. Masimo has a
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`-6-
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`strong interest in submitting this evidence to protect its intellectual property in this
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`IPR. However, Masimo also has a strong interest in maintaining the confidentiality
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`of information related to the development, design, structure, and functionality of the
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`rainbow® sensors. Masimo should not be required to sacrifice either interest.
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`Fourth, the prejudicial effect that disclosure would have on Masimo far
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`outweighs the public’s interest in accessing this information for the purposes of
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`understanding the file history and the Board’s patentability decisions. Masimo has
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`publicly filed sufficient information for the public to understand the nature of the
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`objective evidence and why it supports patentability, including how Masimo’s
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`rainbow® sensors embody the ’127 patent and have enjoyed commercial success
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`and praise. Moreover, Masimo does not seek to seal its POR and has submitted
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`redacted versions of its supporting declarations, appropriately balancing the public’s
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`interest in an open record with Masimo’s interest in protecting its CBI. The CBI
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`that Masimo requests to seal includes detailed information about the rainbow®
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`sensors that need not be publicly accessible for the public to understand the record
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`in this IPR.
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`CONCLUSION
`The Board should grant this Motion to seal the requested exhibits.
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`V.
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`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`-7-
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`
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`Dated: May 19, 2023
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`
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`
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
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`-8-
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`CERTIFICATE OF SERVICE
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`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
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`of counsel for Petitioner, a true and correct copy of PATENT OWNER MOTION
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`TO SEAL is being served electronically on May 19, 2023, to the e-mail addresses
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`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
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`
`
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`shown below:
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`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
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`Dated: May 19, 2023
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`
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`56652011
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`-9-
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