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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.,
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`Petitioner,
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`v.
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`MASIMO CORPORATION,
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`Patent Owner
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S RENEWED
`MOTION TO SEAL AND FOR ENTRY OF A PROTECTIVE ORDER
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`Case IPR2022-01299
`U.S. Patent 7,761,127
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`TABLE OF CONTENTS
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`MASIMO FAILS TO JUSTIFY THE NEED FOR A PROSECUTION BAR
`THAT IS CONTRARY TO BOARD POLICY AND PREJUDICIAL TO
`APPLE ............................................................................................................. 3
`THE BOARD’S DEFAULT PROTECTIVE ORDER IS ADEQUATE AND
`SHOULD BE ENTERED IN LIEU OF MASIMO’S PROPOSED
`PROTECTIVE ORDER ................................................................................ 10
` CONCLUSION .............................................................................................. 11
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`i
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`APPLE-1001
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`APPLE-1002
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`APPLE-1003
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`APPLE-1004
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`APPLE-1005
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`APPLE-1006
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`APPLE-1007
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`APPLE-1008
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`APPLE-1009
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`APPLE-1010
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`APPLE-1011
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`APPLE-1012
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`LIST OF EXHIBITS
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`U.S. Patent No. 7,761,127 to Al-Ali (“the ’127 Patent”)
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`Excerpts from the Prosecution History of the ’127 Patent
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`Expert Declaration of Brian Anthony, Ph.D.
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`Certified English Translation of Japanese Patent Publication
`No. JP 2004-337605 A (“Yamada”)
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`U.S. Patent No. 3,514,538 (“Chadwick”)
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`U.S. Patent No. 4,591,659 (“Leibowitz”)
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`U.S. Patent No. 5,259,381 (“Cheung”)
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`U.S. Patent No. 5,334,916 (“Noguchi”)
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`[RESERVED]
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`[RESERVED]
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`Japanese Patent Publication No. JP 2004-337605 A
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`Respondent Apple Inc.’s Post-Hearing Brief, In the Matter of
`Certain Light-Based Physiological Measurement Devices and
`Components Thereof, International Trade Commission
`Investigation No. 337-TA-1276 (June 27, 2022) (Public
`Version)
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`APPLE-1013
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`APPLE-1014
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`APPLE-1015
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`Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`J.A. Scarlett, THE MULTILAYER PRINTED CIRCUIT BOARD
`HANDBOOK (1985) (selected excerpts)
`[RESERVED]
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`ii
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`APPLE-1016
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`Counsel’s Email Exchange re “Motions to Seal and Protective
`Order” dated November 2, 2022 and November 3, 2022
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`iii
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`Through its Renewed Motion to Seal and for Entry of a Protective Order
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`(Paper 14, “Renewed Motion”), Masimo seeks to unilaterally foist on Apple a
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`prosecution bar that runs contrary to the Board’s well-established guidelines and
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`public policy. Masimo contends that a prosecution bar is necessary for protection
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`of information that it voluntarily submitted with its Preliminary Response, and
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`argues that a prosecution bar is appropriate given that one is already in place at the
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`ITC. Not so. The Board has long recognized that prosecution bars are “rarely
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`appropriate” in PTAB proceedings, especially since the detrimental impact that a
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`prosecution bar is likely to have on parties in Office proceedings “in most cases
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`outweighs the risk that confidential technical information … will be revealed
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`during a proceeding.” Consolidated Trial Practice Guide (“CTPG”), 116. Board
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`guidelines specifically instruct parties to remove prosecution bars and similar
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`provisions that are “commonly found” in protective orders in other forums, but
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`which are nonetheless “unnecessary or inappropriate in proceedings before the
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`Board.” Id.
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`Rather than comply with the Board’s guidelines, however, Masimo flouts
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`them in an effort to subject Apple to a prosecution bar that risks prejudicing Apple
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`in co-pending or future Office proceedings that may bear on Masimo’s litigation
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`campaign and the broader dispute between the parties. The detrimental impact that
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`Masimo’s prosecution bar poses to Apple in this case raise similar concerns to
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`1
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`those that have led the Board to repeatedly deny prosecution bars in prior cases.
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`Indeed, Masimo could identify no more than one other instance in which the Board
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`ever previously adopted a prosecution bar—and under markedly different
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`circumstances from the present case. Caterpillar Inc. v. Wirtgen Am., Inc.,
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`IPR2017-02188, Paper 18 (PTAB Aug. 9, 2018). Even where parties have jointly
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`proposed a stipulated protective order with a prosecution bar (which is not the case
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`here), the Board has declined to adopt the proposal. Edwards Lifesciences Corp. v.
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`Boston Scientific, Inc., IPR2017-00060, Paper 24 at 4-5 (PTAB July 20, 2017).
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`Masimo’s opposed request should meet the same result.
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`In short, Apple opposes entry of Masimo’s proposed protective order
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`(Exhibit 2086, “PPO”) in this proceeding due to its unnecessary and unjustified
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`inclusion of a prosecution bar. For reasons explained in further detail below,
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`Apple respectfully submits that the Default Protective Order (“DPO”) will
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`adequately protect Masimo’s allegedly confidential information and that entry of
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`the DPO is appropriate in accordance with the CTPG. Should the Board elect not
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`2
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`to enter the DPO, it should at a minimum strike the prosecution bar provisions
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`from Masimo’s PPO.1
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` MASIMO FAILS TO JUSTIFY THE NEED FOR A PROSECUTION
`BAR THAT IS CONTRARY TO BOARD POLICY AND
`PREJUDICIAL TO APPLE
`The presumptive rule in PTAB proceedings is that “[c]ounsel for a party
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`who receives confidential information in a proceeding will not be restricted by the
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`Board from representing that party in any other proceeding or matter before the
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`Office.” CTPG, 115. Consistent with this presumption, the CTPG explains that
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`“prosecution bars are rarely appropriate in proceedings before the Board.” Id.,
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`116. In this vein, the Board has repeatedly rejected proposals for prosecution bars,
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`and has stressed that the burden for parties moving for a prosecution bar is steep.
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`See, e.g., FMC Tech, Inc. v. OneSubSea IP UK Ltd., IPR2019-00935, Paper 17 at 6
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`(PTAB Feb. 5, 2020) (rejecting a proposed prosecution bar where the movant
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`failed to “identify any rare circumstances or good cause” for the prosecution bar);
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`Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258,
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`Paper 37 at 5 (PTAB Aug. 9, 2016) (rejecting a prosecution bar as “contrary to
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`1 Specifically, the Board should strike Section 4 of the PPO captioned “Prosecution
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`and Development Bar.”
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`3
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`Board policy and practice”); Edwards Lifesciences, Paper 24 at 4-5 (“appear[ed]
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`to conflict directly with the Board’s guidelines”). Edwards Lifesciences, Paper 24
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`at 4-5.
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`In the present case, Masimo’s proposal for a prosecution bar contravenes the
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`Board’s well-established policies and practice disfavoring such provisions. Rather
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`than demonstrating any “rare” circumstance that might justify a prosecution bar,
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`Masimo’s Renewed Motion only confirms the routine nature of its request.
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`Masimo contends, for example, that “with pending lawsuits and concurrent
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`prosecution[] … there is a risk that Masimo’s CBI would inadvertently inform
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`Apple’s prosecution strategy.” Id., 11. Further, Masimo argues, the PPO with its
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`prosecution bar is warranted to obtain “the same level of protection that the parties
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`agreed to in the ITC investigation.” Id., 2.
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`Masimo’s arguments do not withstand scrutiny. There is nothing
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`particularly unique or “rare” about the present case that would justify Masimo’s
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`concerns. IPRs commonly involve challenges to patents involved in co-pending
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`litigations, and surely most parties would prefer to lock down their confidential
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`information as tightly as possible. But mere speculation that information
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`submitted in an IPR proceeding might later inform prosecution strategies amounts
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`to the same type of generalized concern that the Board has consistently found
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`insufficient to support prosecution bars in past cases. FMC Tech., Paper 17 at 6
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`4
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`(“Patent Owner’s assertions are generic in nature and do not identify any rare
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`circumstance or good cause for permitting inclusion of a prosecution bar. Cases
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`before the Board routinely involve subject matter of commercial value and parties
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`that are competitors.”); Green Cross, Paper 37 at 4-5 (“[R]estrictions on access to
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`confidential documents or the activities of counsel will not be imposed absent
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`some specific, identifiable showing and not on the basis of broad generalizations of
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`potential harm.”)) (quoting Warner Chilcott Labs. Ir. Ltd. v. Impax Labs., Inc.,
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`2009 U.S. Dist. LEXIS 100864, at *14 (D.N.J Oct. 29, 2009).
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`Masimo’s generalized desire to obtain “the same level of protection” at the
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`PTAB as the ITC also does not demonstrate sufficient cause for a prosecution bar.
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`The PTAB is a fundamentally different forum than the ITC, and operates under
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`different rules and policies that can render a prosecution bar appropriate at the ITC
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`but not at the PTAB. The Board’s guidelines even include specific instructions for
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`parties to remove “certain provisions commonly found in district court protective
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`orders that are unnecessary or inappropriate in proceedings before the Board.”
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`CTPG, 116. Prosecution bars are the leading example of such a provision that is
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`inappropriate before the Board. Id.
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`Even Masimo appears to recognize that this case lacks the type of “rare” or
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`“special” circumstances that the Board has referenced in prior cases as necessary to
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`justify a prosecution bar. In fact, the Renewed Motion does not even attempt to
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`5
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`fashion the present circumstances as “rare”; Masimo instead attempts to sidestep
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`the issue by noting that Masimo “does not seek to amend or reissue its claims.”
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`Renewed Motion, 14. While it is not entirely clear if Masimo is in fact stipulating
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`not to pursue amendments or reissue on claims of the ’127 patent in this
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`proceeding or others, the assurance is of no moment. Masimo completely
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`overlooks the impact of the prosecution bar on Apple’s ability to freely select
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`counsel in any present or future proceedings before the Office—including ordinary
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`prosecution, reexaminations, reissues, IPRs or other AIA trial proceedings that
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`might involve amendments. Regardless of whether Masimo itself proposes
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`amendments in this proceeding, the foreseeable consequence of the prosecution bar
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`is to handcuff Apple and its counsel in other proceedings before the Office where
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`Apple is the patent owner or applicant—especially proceedings that may bear on
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`Masimo’s extended litigation campaign against Apple.2
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`2 Masimo’s attempt to downplay consequences of the prosecution bar by arguing
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`that “[e]xcept for amending claims, IPR and post-grant activities are not barred”
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`should not be accepted. Masimo fails to acknowledge the substantial prejudices
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`and practical challenges that would result from any attempt to bifurcate counsel
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`6
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`Masimo’s arguments further invite the Board to undermine its commitment
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`to the “integrity and efficient administration of [] proceedings” (see, CTPG, 115),
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`e.g., by permitting patent owners to wield prosecution bars as a sword that could be
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`routinely entered against petitioners any time the patent owner brings forward
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`confidential information and agrees not to amend in the current proceeding. For
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`this reason, the Board’s guidance does not merely disfavor prosecution bars
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`brought by petitioners as Masimo wrongly implies. The CTPG instead provides
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`that counsel for any party who receives confidential information in a proceeding
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`will not be restricted from further representation of that party before the Office.
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`Id., 115.
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`Tellingly, Masimo cites just a single case in which the PTAB has ever
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`previously permitted a prosecution bar, and the facts of that case are markedly
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`different from those at issue here. See Renewed Motion, 13 (citing Caterpillar Inc.
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`v. Wirtgen Am., Inc., IPR2017-02188, Paper 18 (PTAB Aug. 9, 2018)).
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`Significantly, the Caterpillar decision involved a contested discovery motion.
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`Caterpillar, Paper 18 at 2. The Board in Caterpillar authorized a patent owner’s
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`and experts among amendment and non-amendment portions of an IPR or other
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`post-grant proceeding.
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`7
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`request for additional discovery of the petitioner’s confidential information. Id.
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`The Board’s discovery authorization was “contingent upon entry of an agreed
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`protective order commensurate in scope with the protective order entered” in a
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`related proceeding where the documents had previously been produced—i.e., a
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`protective order that included a prosecution bar. Id., 2-7; see also Caterpillar,
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`Paper 19. The prosecution bar in Caterpillar thus protected confidential
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`information that was obtained through compelled discovery. In the present case,
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`by contrast, Masimo was not compelled; it instead freely submitted its own
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`confidential information in the face of well-established PTAB guidelines strongly
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`disfavoring prosecution bars. Masimo should have accounted for these guidelines
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`at the time that it voluntarily submitted its confidential information; Apple should
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`not now be required to bear the cost of Masimo’s willing choices.
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`Masimo’s remaining arguments in support of the prosecution bar are no
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`more convincing. Masimo contends that the prosecution bar is narrowly tailored,
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`for example, but fails to distinguish the prosecution bar that it proposes in this case
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`from any others that have been similarly rejected by the Board. Renewed Motion,
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`8-9. In Green Cross, for example, the Board refused to adopt a prosecution bar
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`that was similarly scoped with a two-year term, limited to prosecution activities,
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`and covering only individuals who actually received confidential information (i.e.,
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`with no provision imputing the prosecution bar to the firm of the individuals that
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`8
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`received confidential information). Green Cross, Paper 37 at 3 and EX2009, ¶2;
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`Renewed Motion, 8-9.
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`Masimo’s alleged need for a development bar to impose on Apple’s expert
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`(Dr. Anthony) is also unfounded. In any event, these concerns do not justify the
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`sweep of Masimo’s proposed prosecution bar to encompass “any individual”—
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`including counsel—who receives confidential information from the other party.
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`EX2087, 4.
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`Finally, the Board has emphasized that the need for prosecution bars in an
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`IPR proceeding is “undercut by a strong public policy in favor of making
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`information filed in an [IPR] open to the public, especially because the proceeding
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`determines the patentability of claims in an issued patent and, therefore, affects the
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`rights of the public.” Green Cross, Paper 37 at 5. “This is particularly true with
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`respect [to] information relevant to resolving ‘[a] central dispute in [a]
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`proceeding.’” Id. In this context, Masimo’s proposal for a prosecution bar is
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`undercut by its own argument that it possessed a “genuine need” for the
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`confidential information to demonstrate patentability of the Challenged Claims
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`over the prior art. See Renewed Motion, 5-6. If the confidential information were
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`as critical as Masimo contends, the prosecution bar would effectively be moot
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`since such information could be expected to appear in a Board decision on
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`patentability in any event. Green Cross, Paper 37 at 6 (“The strong public policy
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`9
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`of disclosing to the public information relied on in our Final Decision would,
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`accordingly, render [patent owner’s] proposed prosecution bar moot.”).
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` THE BOARD’S DEFAULT PROTECTIVE ORDER IS ADEQUATE
`AND SHOULD BE ENTERED IN LIEU OF MASIMO’S PROPOSED
`PROTECTIVE ORDER
`Apple respectfully submits that entry of the Default Protective Order
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`(“DPO”) is appropriate in this case in lieu of Masimo’s PPO. See CTPG, 107-122.
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`The CTPG specifically “encourages the parties to adopt the Board’s default
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`protective order if they conclude that a protective order is necessary.” Id., 91. The
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`CTPG further explains that absent agreement to a stipulated protective order, “the
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`default protective order may be entered by the Board.” Id., 107.
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`Significantly, Masimo never meaningfully pursued a joint protective order
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`with Apple before its POPR deadline. Masimo instead waited to approach Apple
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`with a version of the PPO until late in the evening two days before the POPR
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`deadline. EX1016. Apple was left with little opportunity ahead of the POPR
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`deadline to review or negotiate with Masimo on any of the extensive changes that
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`Masimo proposed to the DPO, including among other things, a prosecution bar that
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`conflicted with PTAB guidelines for each of the reasons discussed above. Supra,
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`Section I. Given Masimo’s failure to pursue agreement with Apple on a stipulated
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`order, and Masimo’s refusal to re-consider inclusion of a prosecution bar, Apple
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`respectfully submits that the DPO should be entered consistent with the Board’s
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`10
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`guidelines. CTPG, 107 (“Absent such agreement, the default protective order may
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`be entered …”). At the very least, the Board should strike Section 4 of the PPO
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`pertaining to the proposed prosecution and development bar.
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` CONCLUSION
`Masimo’s proposal for a prosecution bar presents an unjustifiable burden to
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`Apple and runs directly afoul of the Board’s strong public policy interests in
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`relegating prosecution bars only to rare cases. Masimo fails to allege, let alone
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`demonstrate, that present circumstances provide the type of unique case for which
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`a prosecution bar might even reasonably be considered. It is not. Masimo’s
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`request for entry of the PPO should thus be denied.3
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`Dated:12/14/2022
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`Respectfully submitted,
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`/Nicholas W. Stephens/
`Nicholas Stephens, Reg. No. 74,320
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
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`3 Apple does not oppose other aspects of the Renewed Motion, including Masimo’s
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`motion to seal the allegedly confidential exhibits and confidential information
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`discussed in its POPR.
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`11
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on
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`December 14, 2022, a complete and entire copy of this Petitioner’s Opposition to
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`Patent Owner’s Renewed Motion to Seal and for Entry of a Protective Order and
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`its supporting exhibit were provided via email, to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
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`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)
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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: AppleIPR127-1@knobbe.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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