`571-272-7822
`
`
` Paper 26
`Entered: March 27, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2022-01300
`(Patent 7,761,127 B2)
`
`
`
`____________
`
`
`Before JOSIAH C. COCKS, JAMES A. TARTAL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Patent Owner’s Unopposed Motion to Expunge
`37 C.F.R. §§ 42.14, 42.56
`
`
`
`
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`
`
`I.
`INTRODUCTION
`On February 1, 2023, the Board issued a Decision that denied
`institution of inter partes review under 35 U.S.C. § 314(a) because
`Petitioner, Apple Inc., did not adequately justify multiple inter partes
`reviews based on multiple petitions against U.S. Patent No. 7,761,127 B2
`(Ex. 1001, “the ’127 Patent”). Paper 22 (“Dec.” or “Decision”).
`Pursuant to 37 C.F.R. § 42.56, Patent Owner, Masimo Corporation,
`filed an Unopposed Motion to Expunge. Paper 25 (“Mot.”). The motion
`was previously authorized via email on March 14, 2023. Mot. 1.
`Patent Owner moves to expunge their 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. Id. Patent Owner states that Petitioner
`does not oppose the Motion. Id.
`For the reasons set forth below, we grant Patent Owner’s Motion.
`
`II.
`LEGAL STANDARD
`Rule 42.56 provides that “[a]fter denial of a petition to institute a trial
`or after final judgment in a trial, a party may file a motion to expunge
`confidential information from the record.” 37 C.F.R. § 42.56. The
`following commentary accompanying Rule 42.56 explains the purpose of
`the rule:
`Confidential information that is subject to a protective order
`ordinarily will become public . . . 45 days after final judgment in
`a trial. Section 42.56 allows a party to file a motion to expunge
`from the record confidential information prior to the information
`becoming public. Section 42.56 reflects the considerations
`identified in 35 U.S.C. 316(b), as amended, and 35 U.S.C.
`326(b), which state that the Office is to take into account the
`2
`
`
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`
`
`integrity of the patent system in promulgating regulations. The
`rule balances the needs of the parties to submit confidential
`information with the public interest in maintaining a complete
`and understandable file history for public notice purposes.
`Specifically, there is an expectation that information be made
`public where the existence of the information is referred to in a
`decision to grant or deny a request to institute a review or
`identified in a final written decision.
`
`
`Rules of Practice for Trials before the Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg.
`48,612, 48,623 (Aug. 14, 2012) (“Trial Rules”); see also Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated, 21–22 (similarly
`describing balancing “the needs of the parties to submit confidential
`information with the public interest in maintaining a complete and
`understandable file history for public notice purposes”).
`
`III. ANALYSIS
`As stated above, there is an expectation that information will be made
`public when the existence of that information is referred to in a Board
`decision. See Trial Rules, 77 Fed. Reg. at 48,623. By filing its Motion,
`Patent Owner seeks to keep confidential certain exhibits and papers that
`ordinarily will be become public. See Motion 1–5.
`As noted above, we denied institution of inter partes review for this
`proceeding under 35 U.S.C. § 314(a) because Petitioner did not adequately
`justify multiple petitions challenging the ’127 Patent. Therefore, the
`referenced documents are not necessary to understand the reasons
`underlying our Decision. Furthermore, the motion is unopposed. Mot. 1.
`For these reasons, Patent Owner’s motion is granted.
`3
`
`
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`
`
`IV. CONCLUSION
`
`It is:
`ORDERED that Patent Owner’s Motion to Expunge is granted; and
`FURTHER ORDERED that the Patent Owner’s Preliminary Response
`(Paper 9); the unredacted versions of Exhibits 2002, 2051, 2081; and
`Exhibits 2003, 2004, 2006, 2007, 2009, 2010, 2012–2021, 2027, 2028,
`2031–2033, 2057, 2058, and 2082 will be expunged from the record.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2022-01300
`Patent 7,761,127 B2
`
`
`
`FOR PETITIONER:
`
`Walter Renner
`axf-ptab@fr.com
`Dan Smith
`dsmith@fr.com
`Andrew Patrick
`patrick@fr.com
`Nicholas Stephens
`nstephens@fr.com
`
`FOR PATENT OWNER:
`
`Irfan Lateef
`2ial@knobbe.com
`Ted M. Cannon
`2tmc@knobbe.com
`Jarom D. Kesler
`2jzk@knobbe.com
`Jacob L. Peterson
`2jup@knobbe.com
`
`
`
`
`
`
`5
`
`
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