`
`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)
`
`
`
`Filed: March 17, 2023
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR127-2@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01300
`U.S. Patent 7,761,127
`
`
`
`
`
`
`PATENT OWNER UNOPPOSED MOTION TO EXPUNGE
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.56 and as authorized by the Board by a March 14,
`
`2023 email, Patent Owner Masimo Corporation (“Masimo”) moves to expunge the
`
`confidential version of its Patent Owner Preliminary Response (Paper 9), the
`
`confidential versions of Exhibits 2002, 2051, 2081, and Exhibits 2003, 2004, 2006,
`
`2007, 2009, 2010, 2012-2021, 2027, 2028, 2031-2033, 2057, 2058, and 2082.
`
`Counsel for the parties conferred by email regarding Masimo’s request to
`
`expunge and Apple does not oppose.
`
`I.
`
`DOCUMENTS REQUESTED TO BE EXPUNGED
`Masimo filed Renewed Motions to Seal in IPR2022-01299 (Paper 14) and this
`
`IPR2022-01300 (Paper 15) on November 22, 2023 (the “Renewed Motions”). In the
`
`Renewed Motions, Masimo requested the sealing of the documents it now requests
`
`to expunge, and established the highly sensitive and confidential nature of those
`
`documents, as described below.
`
`Exhibit 2002 is the Declaration of named inventor Mohamed Diab. The
`
`declaration tracks ITC Investigation testimony that Diab gave in deposition and at
`
`the evidentiary hearing. Paragraphs 19-27, 37-42, 47, 48, and 71-90 of Diab’s
`
`declaration contains information pertaining to Masimo’s research, development, and
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`production work related to the subject matter of the ’127 patent and patented
`
`products.
`
`Exhibit 2003 is a collection of plots from computer simulations that Diab
`
`1
`
`
`
`
`
`performed while researching and developing the invention of the ’127 patent and
`
`rainbow® products.
`
`Exhibits 2004 and 2017 are Masimo internal PowerPoint Presentations about
`
`research and development of the ’127 invention and rainbow® products.
`
`Exhibits 2006, 2007, 2009, 2010, 2012, 2013, 2014, 2015, 2020, 2027, 2032,
`
`and 2033 are engineering drawings and technical specifications detailing the design,
`
`structure, components, materials used, dimensions, and functionality of rainbow®
`
`sensors. These documents have internal corporate confidentiality designations.
`
`Exhibit 2016 is an internal Masimo CAD drawing showing an expanded view
`
`of, and additional detail related to, the substrate of some rainbow® products.
`
`Exhibit 2018 is a technical data sheet for adhesive used in rainbow® sensors.
`
`Exhibits 2019 and 2021 are internally produced, non-public photographs of
`
`internal parts and structure of rainbow® sensors that are not publicly viewable.
`
`Exhibit 2028 is a collection of testing data plots showing results of internal
`
`Masimo sensor characterization tests to verify that the rainbow® products work.
`
`Exhibit 2031 is Diab’s confidential research folder containing an internal
`
`Masimo technical report authored by the named inventors and having an internal
`
`corporate confidentiality designation. This exhibit contains information about
`
`Masimo’s research and development of the ’127 invention and rainbow® products.
`
`Exhibit 2051 is a declaration of Masimo’s technical expert, Jack Goldberg.
`
`-2-
`
`
`
`
`
`Paragraphs 28-32 of Goldberg’s declaration include information from the
`
`confidential testimony of Diab and Exhibit 2003. Exhibits 2057 and 2058 are
`
`Goldberg’s claim charts detailing analysis comparing the rainbow® products to the
`
`claims of the ’127 patent. The charts heavily rely on confidential exhibits.
`
`Exhibit 2081 is a declaration of Micah Young, Masimo’s CFO. Paragraph 9
`
`summarizes confidential financial data in Exhibit 2082. Exhibit 2082 is a
`
`spreadsheet showing confidential financial data from an internal Masimo database.
`
`The confidential version of Masimo’s Patent Owner Preliminary Response
`
`(Paper 9) references portions of the confidential information contained in the
`
`exhibits listed above.
`
`None of these exhibits or confidential information have been made public.
`
`II. MASIMO ESTABLISHED GOOD CAUSE TO SEAL AND FOR
`ENTRY OF A PROTECTIVE ORDER WITH A CONFIDENTIAL
`BUSINESS INFORMATION DESIGNATION
`In the Renewed Motions, Masimo established good cause to seal the
`
`documents under Argentum Pharms. LLC v. Alcon Res., Ltd., IPR2017-01053, Paper
`
`27 at 3–4 (PTAB Jan. 19, 2018) (informative). See IPR2022-01299 Paper 14 at 4-6;
`
`IPR2022-01300 Paper 15 at 4-6. Further, Masimo established good cause for entry
`
`of a protective order with a “confidential business information” (“CBI”) designation
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`because the documents contain highly sensitive information about the development,
`
`design, structure, and functionality of Masimo’s rainbow® sensors.
`
` See
`
`-3-
`
`
`
`
`
`IPR2022-01299 Paper 14 at 6-8; IPR2022-01300 Paper 15 at 6-8.
`
` In
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`IPR2022-01299, the Board found “Patent Owner has shown good cause to seal the
`
`identified documents” and “Patent Owner shows good cause supporting the CBI
`
`provisions.” IPR2022-01299 Paper 27 at 1, 3. Presumably because it denied
`
`institution, the Board did not decide the Renewed Motion in this IPR. See
`
`IPR2022-01300 Paper 22.
`
`III. THE DOCUMENTS REQUESTED TO BE EXPUNGED ARE NOT
`NECESSARY TO UNDERSTANDING THE BOARD’S DECISION
`NOT TO INSTITUTE THIS IPR
`By email to the Board dated February 24, 2023, Masimo requested withdrawal
`
`and expungement, in IPR2022-01299, of the same documents and exhibits it now
`
`moves to expunge in this IPR2022-01300. Ex. 3003. The Board considered “Patent
`
`Owner’s request as a motion to withdraw its prior motion to seal, and to withdraw
`
`and expunge an expanded list of cited documents.” IPR2022-01299 Paper 30 at 1.
`
`The Board granted the motion because it was unopposed “and the referenced
`
`documents are not necessary to understanding the reasons underlying our Decision
`
`to Institute.” Id.
`
`Here, likewise, this Motion is unopposed and the documents Masimo requests
`
`to be expunged are not necessary to understanding the reasons underlying the
`
`Board’s decision not to institute this IPR. See generally IPR2022-01300 Paper 22.
`
`Specifically, the Board reviewed the Petitions in this IPR and IPR2022-01299 and
`
`-4-
`
`
`
`
`
`exercised its discretion under 35 U.S.C. § 314(a) to deny institution of this IPR
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`because it found “Petitioner has not set forth adequate reasoning that justifies the
`
`institution of multiple inter partes reviews based on two petitions both directed to
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`claims 1-30 of the ’127 patent.” Id. at 10-11. The Board’s decision did not rely
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`upon, or even cite or refer to, the documents Masimo requests to be expunged. See
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`generally id. Therefore, the documents Masimo requests to expunge are not
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`necessary to allow the public to fully understand the Board’s reasons for denying
`
`institution of this IPR.
`
`IV. CONCLUSION
`The Board should grant this Motion and expunge the requested documents.
`
`Dated: March 17, 2023
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Ted M. Cannon/
`Ted M. Cannon (Reg. No. 55,036)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`
`-5-
`
`
`
`
`
`
`
`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
`
`UNOPPOSED MOTION TO EXPUNGE is being served electronically on March
`
`17, 2023, to the e-mail addresses shown below:
`
`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
`
`
`
`
`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: IPR50095-0046IP2@fr.com
`
`Dated: March 17, 2023
`
`
`57303540
`
`
`
`-6-
`
`
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