`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`
`
`
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
` Masimo’s Requests for Discovery in Relation to Commercial Success and
`Copying are Unjustified and Should be Denied .............................................. 3
`A.
`Commercial Success – General Failures ............................................... 5
`B.
`Copying – General Failures ................................................................... 8
`C.
`Discovery of Unredacted ITC Briefs and Initial Determination (RFP
`#1) ........................................................................................................ 10
`D. Discovery of Unidentified Documents Behind Redaction (RFP #4) .. 12
` Masimo’s Requests for Discovery in Relation to Reasonable Expectation of
`Success Are Overly Broad and Should be Denied ........................................ 13
` Conclusion ..................................................................................................... 15
`
`
`
`
`
`
`i
`
`
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`LIST OF EXHIBITS
`
`
`APPLE-1001
`
`U.S. Pat. No. 10,687,745 to Al-Ali (“the ’745 patent”)
`
`APPLE-1002
`
`Prosecution History of the ’745 patent (Serial No. 16/835,772)
`
`APPLE-1003
`
`Declaration of Dr. Brian Anthony
`
`APPLE-1004
`
`U.S. Pat. No. 8,670,819 (“Iwamiya”)
`
`APPLE-1005
`
`U.S. Pat. No. 9,392,946 (“Sarantos”)
`
`APPLE-1006
`
`U.S. Pub. No. 2014/0275854 (“Venkatraman”)
`
`APPLE-1007
`
`U.S. Pat. No. 6,483,976 (“Shie”)
`
`APPLE-1008
`
`U.S. Pat. No. 6,801,799 (“Mendelson-799”)
`
`APPLE-1009
`
`U.S. Pub. No. 2015/0018647 (“Mandel”)
`
`APPLE-1010
`
`U.S. Pub. No. 2009/0275810 (“Ayers”)
`
`APPLE-1011
`
`Int’l Pub. No. WO 2011/051888 (“Ackermans”)
`
`APPLE-1012
`
`U.S. Pat. No. 6,158,245 (“Savant”)
`
`APPLE-1013
`
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997 (“Webster”)
`
`APPLE-1014
`
`U.S. Pub. No. 2009/0054112 (“Cybart”)
`
`APPLE-1015
`
`U.S. Pat. No. 5,893,364 (“Haar”)
`
`APPLE-1016
`
`U.S. Pat. No. 5,952,084 (“Anderson”)
`ii
`
`
`
`APPLE-1017
`
`APPLE-1018
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`U.S. Pat. No. 10,470,695 (the “’695 patent”)
`
`Apple v. Masimo, Case No. IPR2020-01722, Paper 29 (Final
`Written Decision) (PTAB May 5, 2022) (the “’695 FWD”)
`
`APPLE-1019
`
`U.S. Pub. No. 2009/0097129 (“Naito”)
`
`APPLE-1020
`
`U.S. Pub. No. 2006/0128869 (“Taima”)
`
`APPLE-1021
`
`Polymers and Plastic Resins Information, Engineering360,
`printed from
`https://www.globalspec.com/learnmore/materials_chemicals_ad
`hesives/plastics_elastomers_polymers/plastics_polymers on
`August 15, 2022
`Methods and Approaches of Futures Studies, printed from
`http://crab.rutgers.edu/~goertzel/futuristmethods.html on
`August 15, 2022
`APPLE-1023 – APPLE-1030 RESERVED
`
`APPLE-1022
`
`APPLE-1031
`
`APPLE-1032
`
`APPLE-1033
`
`APPLE-1034
`
`
`
`Masimo Corporation, et al. v. Apple Inc., Redacted Complaint,
`ITC Inv. No. 337-TA-1276
`
`
`Interim Procedure for Discretionary Denials in AIA Post-Grant
`Proceedings with Parallel District Court Litigation, issued June
`21, 2022 (“Interim Guidance”)
`Final Initial Determination on Violation of Section 337, Public
`Version, ITC Inv. No. 337-TA-1276, January 10, 2023
`Emails re Masimo’s Request for Authorization to Motion for
`Additional Discovery
`
`
`
`iii
`
`
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`
`Introduction
`Through its Motion, Masimo seeks production on issues of secondary
`
`considerations of non-obviousness and reasonable expectation of success, and it
`
`targets documents collected through discovery and under an agreed upon
`
`protective order in co-pending ITC investigation 337-TA-1276.
`
`Masimo proclaims a desire to bring the Board a complete record on topics
`
`for which discovery is sought, but its actions speak loudly otherwise, as its
`
`requested discovery—if permitted— is woefully imbalanced and is calibrated only
`
`to tell Masimo’s story (and to avoid the substantial volume of contrary evidence).
`
`Indeed, the alleged bases for Masimo’s discovery requests include public versions
`
`of Masimo’s own ITC briefs, but none of Apple’s. Motion, 2. By selecting targets
`
`for requested discovery cited in its own briefs to the exclusion of Apple’s, Masimo
`
`seeks an incomplete and imbalanced representation of the ITC record. On this
`
`basis alone, Masimo’s intent is clear and the Motion should fail.
`
`The breadth and scope of Masimo’s discovery request is also unjustifiable. If
`
`granted, it would implicate some 2,200 pages of documents and lead to “trials-
`
`within-trial” on whether Apple’s products practice the ’745 patent and whether
`
`Apple copied Masimo’s technology (contentions both rejected by the ITC). More
`
`granularly, its requests would yield production of testimony and documents
`
`covering topics ranging from domestic industry to infringement and validity, both
`
`1
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`on the ’745 patent and four others asserted by Masimo, including testimony from
`
`an ITC expert on economic domestic industry, and testimony from Apple
`
`engineers with respect to features in patents wholly unrelated to ’745. Masimo has
`
`simply failed to offer requests that are narrowly tailored to reasonable expectation
`
`of success or its secondary considerations theories.
`
`The Motion also fails to establish usefulness as required by Garmin Factor 1
`
`for several topics. For instance, the Motion offers no evidence or reasoning to
`
`support its requests related to commercial success and copying beyond citations to
`
`Masimo’s earlier allegations in its own ITC briefs (again, ignoring Apple’s
`
`responses). The ALJ’s Initial Determination (EX1033, “ID”) soundly rejected
`
`those allegations. More, the volume of the request works against any purported
`
`usefulness because it seeks to import largely an entire proceeding into this IPR.
`
`And through RFP #4, Masimo trades exclusively on material covered by the
`
`ITC protective order (ITC PO). In particular, Masimo offers no public record basis
`
`for identifying implicated documents, and no public record basis for establishing
`
`that the implicated documents serve a “useful” purpose or that those documents are
`
`without confidential information on topics other than those targeted by Masimo for
`
`discovery. Indeed, there exists no public record basis, and the ITC PO forbids
`
`either party from using confidential information learned through ITC discovery for
`
`a purpose other the ITC Investigation.
`
`2
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`Although this Motion should be denied for reasons noted, Apple reconfirms
`
`its willingness to resume meetings with Masimo to explore whether the parties can
`
`resolve through good faith negotiations production of documents identified by
`
`Masimo on limited topics, namely reasonable expectation of success and related
`
`objective indicia (skepticism and failure of others)—along with Apple’s responsive
`
`documents, where concerns over scope may be resolvable through redaction.1
`
` Masimo’s Requests for Discovery in Relation to Commercial Success
`and Copying are Unjustified and Should be Denied
`Masimo contends that its “narrow discovery requests meet all of the Garmin
`
`factors and discovery is in the interests of justice.” Motion, 4. Not so. Masimo
`
`overreaches in seeking discovery of documents allegedly related to secondary
`
`considerations of non-obviousness, and particularly commercial success and
`
`copying, which plainly fail against applicable standards.
`
`
`
`1 Recall that the parties’ meet and confer was abruptly and unilaterally concluded
`
`by Masimo, who approached the Board seeking authorization for briefing without
`
`responding to Apple’s questions so basic as to the relationship between the
`
`requested documents and the topics to which Masimo believed they would be
`
`useful. APPLE-1034. Apple opposed Masimo’s actions at that time pending
`
`receipt of clarifying details regarding its request. Id.
`
`3
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`The Motion correctly notes the elevated “interests of justice” standard
`
`necessary for obtaining additional discovery in IPRs, but pays it little heed in
`
`substance. See Motion, 4; see also 35 U.S.C. § 316(a)(5); Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6 (PTAB Mar. 5, 2013)
`
`(precedential). This standard “is significantly different from the scope of
`
`discovery generally available under the Federal Rules of Civil Procedure” and is
`
`intended to “restrict[] additional discovery to particular limited situations … .” Id.,
`
`5 (quoting in part 154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) (statement of
`
`Sen. Kyl)). Hence, the “PTO will be conservative in its grants of discovery.” Id.
`
`Accounting for the high statutory bar and legislative history, Garmin sets
`
`forth five factors that impose meaningful restrictions on a party’s ability to obtain
`
`additional discovery in an inter partes review. Garmin, 6-7. Among these, Factor
`
`1 requires that the moving party demonstrate more than a “mere possibility” or
`
`“mere allegation” of “finding something useful” in the information targeted for
`
`discovery. Id., 6. The moving party must “already be in possession of a threshold
`
`amount of evidence or reasoning tending to show beyond speculation that
`
`something useful will be uncovered.” Id., 7.2 “‘Useful’ in that context does not
`
`
`
`2 All emphasis added unless otherwise indicated.
`
`4
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`mean merely ‘relevant’ and/or ‘admissible’”; rather, “‘useful means favorable in
`
`substantive value to a contention of the party moving for discovery.” Id., 7.
`
`Here, Masimo falls well short of showing that the discovery it seeks will
`
`yield anything useful with respect to allegations of secondary considerations of
`
`non-obviousness based on commercial success or copying.
`
`A. Commercial Success – General Failures
`To start, Masimo’s justification for discovery of alleged commercial success
`
`evidence is more aptly described as non-existent than merely deficient. The
`
`entirety of Masimo’s justification for seeking discovery relating to commercial
`
`success is captured in a single contention, as Masimo proclaims that “documents
`
`and testimony” from the ITC “provided evidence of … commercial success.”
`
`Motion, 2. And tellingly, the only support for this assertion is a citation by
`
`Masimo to its own ITC briefing, i.e., an allegation by Masimo in its Initial Post-
`
`Hearing Brief (EX2011) Masimo’s Reply Post-Hearing Brief (EX2051). Motion
`
`2. But Masimo should not be able to use circular citation to its own allegations to
`
`flout the unambiguous requirement for evidence established by Garmin. See
`
`Garmin, (“The party requesting discovery should already be in possession of
`
`evidence tending to show beyond speculation that in fact something useful will be
`
`uncovered.”). Indeed, merely pointing to an allegation previously raised in another
`
`5
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`forum does not transform the allegation into anything more than allegation, let
`
`alone evidence of usefulness as required by Garmin.
`
`To be sure, the Motion suffers from more than a lack of affirmative evidence
`
`of usefulness with respect to commercial success. Masimo relies on the success of
`
`Apple’s purportedly infringing products, but offers nothing to confront the ALJ’s
`
`findings, which are apparent from the public version of the ID—i.e., findings that
`
`squarely reject Masimo’s secondary considerations arguments, including
`
`commercial success, both for lack of nexus and because Masimo had not
`
`established that Apple’s products even infringed (and therefore practiced) the ’745
`
`patent. See EX1033, 242 n. 87 (“The evidence of commercial success is not
`
`relevant because the Accused Products have not been shown to practice claims of
`
`the ’745 patent”); 242 (finding purported evidence of secondary considerations
`
`“does not weigh significantly against a finding of obviousness.”); see also 160
`
`(“The evidence does not persuasively indicate, however, that the sales of the
`
`Apple Watch Series 6 are largely attributable to the blood oxygen feature, as
`
`market analysts have recognized the Apple Watch’s ‘blend of sleek design, good
`
`usability on a small screen, and a growing portfolio of health and fitness apps.”).
`
`The Board does not defer to the ITC, but the ID nonetheless suggests that
`
`Masimo’s commercial success evidence will not be useful. Silicon Labs v. Cresta
`
`Tech., IPR2014-00728, Paper 31 at 4 (PTAB Dec. 10, 2014) (denying discovery
`
`6
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`into evidence previously found unreliable by another “governmental body acting as
`
`an independent third party that represents the public interest”).
`
`Significantly, the Motion also fails to offer any indication of how Masimo
`
`intends to establish, contrary to the ID’s findings, that Apple’s products practice
`
`the ’745 patent and that there is a nexus between their success and the patent.
`
`Instead, it omits argument and evidence. This is fatal, and Masimo is not saved by
`
`its earlier proclaimed justification for nexus—alleged infringement of the ’745
`
`claims by the Apple Watch Series 6, which the ITC squarely rejected including in
`
`resolving no commercial success. POPR, 32; EX1033, 185-204, 246; Garmin, 8
`
`(“insufficient showing of nexus between the claimed invention and [the movant’s]
`
`discovery requests”); Square, Inc. v. REM Holdings 3, LLC, IPR2014-00312,
`
`Paper 23 at 5-6 (PTAB Sept. 15, 2014) (denying requested discovery for failure to
`
`provide “threshold amount of evidence tending to show that there is a nexus”).
`
`The Motion also fails to acknowledge burdens that would be imposed on
`
`Apple if Masimo’s discovery on commercial success were authorized. See
`
`Garmin, 7 (Factor 5: “requests must not be overly burdensome”). Discovery on
`
`commercial success would open the door for Masimo to re-litigate its infringement
`
`and nexus arguments that were already litigated at the ITC and rejected, thereby
`
`vastly expanding the scope of the present proceeding by creating a “trial within the
`
`trial” on infringement with no demonstrated likelihood of success. See Motion, 9
`
`7
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`(arguing that “Masimo’s infringement analyses in the ITC filings would provide
`
`useful evidence regarding a nexus for commercial success”); 77 Fed. Reg. 48,622
`
`(“The interests-of-justice standard for additional discovery is consistent with
`
`considerations identified in 35 U.S.C. 316(b), as amended, including the efficient
`
`administration of the Board and the Board’s ability to complete trials timely.”).
`
`Equally troubling, Masimo’s discovery requests on commercial success target
`
`Apple’s highly-sensitive technical, sales, and commercial data concerning its
`
`accused products. Apple should not be compelled to produce it, particularly
`
`where, as here, Masimo has so plainly failed to demonstrate the usefulness of the
`
`solicited discovery in moving against the elevated interests of justice standard.
`
`For each of the reasons, Masimo’s requests for discovery as related to
`
`commercial success should be denied.
`
`B. Copying – General Failures
`Masimo’s justification for discovery of alleged evidence of copying as an
`
`objective indicia of non-obviousness fares no better than its commercial success
`
`arguments. Apart from the table on page 8, the Motion’s only mention of copying
`
`is likewise provided in the context of a self-serving reference to Masimo’s own
`
`ITC briefs, in which Masimo alleges “evidence of … copying[] ….” Motion, 2.
`
`The Motion’s limited treatment of copying is a far cry from the high standards
`
`demanded by Garmin and the interests of justice. Garmin, 6; L’Oreal USA, Inc. v.
`
`8
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`Liqwd, Inc., PGR2017-00012, Paper 37, 5-8, 13 (PTAB Sept. 27, 2017) (denying
`
`discovery where “Patent Owner has not even alleged, much less supported with
`
`evidence, that Petitioner copied a product”); Axonics Modulation Techs., Inc. v.
`
`Medtronic, Inc., Paper 24 at 6-7 (PTAB Dec. 10, 2020) (denying discovery into
`
`copying where the evidence “does not show, beyond speculation, that the
`
`additional discovery would yield something useful”); Kamada, Ltd. v. Grifols
`
`Therapeutics Inc., IPR2014-00899, Paper 22 at 4-5 (PTAB Mar. 4, 2015).
`
`More, as with commercial success, the Motion fails to explain, and thus fails
`
`to inform the Board or Apple, on what basis the requested evidence of copying
`
`would be useful to lead the Board to a determination on this issue different than the
`
`ALJ’s determination in the ID. The ID flatly rejected the same argument: “the
`
`undersigned finds no significant credible evidence that Apple copied Masimo’s
`
`patented technology.” EX1033, 158; see also id., 246 (“[T]his evidence does not
`
`weight significantly against a finding of obviousness.”). And the ID elsewhere
`
`criticizes Masimo’s deficient copying contentions that “fail[] to identify the
`
`patented features that were allegedly copied” and that provide “no evidence that
`
`any of these products practices asserted claims … .” EX1033, 153 (citing Iron
`
`Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)
`
`(“Not every competing product that arguably falls within the scope of a patent is
`
`evidence of copying.”)); see also Silicon Labs, 4. Masimo’s failure to explain how
`
`9
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`the identified evidence requested for discovery would be useful to prove a legally
`
`sufficient copying claim is itself fatal, as the Board has repeatedly found. L’Oreal,
`
`5-8, 13; Axonics Modulation Techs., 6-7, Kamada, 4-5. What’s more, the Motion
`
`again ignores substantial burdens that would be imposed on Apple if the door were
`
`opened to yet another “trial within the trial” on the issue of copying for reasons
`
`similar to those addressed above. Supra, Section II.A. For each of the reasons,
`
`Masimo’s requests for discovery in relation to copying should be denied.
`
`C. Discovery of Unredacted ITC Briefs and Initial Determination
`(RFP #1)
`Notwithstanding any discovery that may be authorized with respect to
`
`particular substantive contentions including commercial success and copying,
`
`Masimo’s RFP #1 should be denied in whole. RFP #1 does not target discovery of
`
`any factual evidence; it instead seeks production of unredacted copies of the
`
`parties’ briefs and ID from the ITC proceeding. Motion, 2. Thus, by their very
`
`nature, the requested documents in RFP #1 would not be useful to substantiating
`
`claims of either objective indicia of non-obviousness or reasonable expectation of
`
`success. The briefs and ID cite evidence including documents otherwise sought
`
`through RFPs #2 and #3. But the briefs are not themselves evidence; they serve no
`
`evidentiary value and are not “‘useful’ … in substantive value” as required by
`
`Garmin Factor 1. Rather, discovery of briefs would serve the rather distinct
`
`purpose of extending the limited number of pages that Masimo is afforded for
`10
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`presenting its arguments. Nor does RFP #1 succeed under Garmin Factor 3
`
`(ability to generate equivalent information by other means), especially since public
`
`versions of the corresponding briefs and ID are readily available and there is no
`
`demonstrated need for redacted material. Garmin, 6.
`
`None of the affirmative rationales Masimo proffers for RFP #1 is
`
`compelling. See Motion, 9. Masimo argues that “the Board should have the
`
`benefit of the same information available to the ITC to ensure a complete record.”
`
`Id. But this is belied by Masimo’s requests for discovery of documents that it
`
`simultaneously avers are favorable to its positions while omitting other evidence,
`
`relied upon by Apple in the ITC, refuting these positions. Supra, Section III.
`
` Masimo’s next assumption that the “ITC filings are necessary to ensure that
`
`all responsive documents have been produced,” if followed, risks creating
`
`precedent that would vastly expand the scope of PTAB discovery into co-pending
`
`litigations contrary to congressional intent. See 77 Fed. Reg. 48,637 (“The
`
`legislative history for these provisions provides that additional discovery be
`
`restricted to particular limited situations justified by the special circumstances of
`
`the case.”); Motion, 9. Relatedly Masimo’s contention that its “infringement
`
`analyses in the ITC filings would provide useful evidence regarding a nexus”
`
`reflects logic that could be deployed by virtually any plaintiff/complainant to open
`
`PTAB discovery on secondary considerations based on routine infringement
`
`11
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`allegations. Motion, 9. Masimo’s final claim that it “needs the documents … to
`
`present the arguments without Apple baselessly accusing Masimo of violating the
`
`ITC protective order” is itself a baseless claim that fails to address Garmin.
`
`For each of these reasons, the Board should deny discovery as to RFP #1.
`
`D. Discovery of Unidentified Documents Behind Redaction (RFP #4)
`RFP #4 contravenes Garmin Factor 1 by seeking production of “any exhibits
`
`or testimony cited in … [certain] page ranges of the ID, MasimoIPHB, and
`
`MasimoRPHB, where the citation to the exhibit/testimony has been redacted in
`
`the public versions.” Motion, 10-11, 14, App’x A. In other words, RFP #4 targets
`
`documents whose identity and existence are unknown from the public ITC record.
`
`Rather than bringing forth “a threshold amount of evidence or reasoning tending to
`
`show beyond speculation that something useful will be uncovered” as required by
`
`Garmin Factor 1, Masimo offers no evidence or explanation for why anything
`
`useful would be uncovered by RFP #4. See, e.g., Silicon Labs., 3-4 (denying
`
`discovery where the movant “provide[d] no evidence identifying the specific
`
`character of the documents it seeks”); Garmin, 7-8. Worse, RFP #4 amounts to an
`
`improper request for the Board to correct Masimo’s own apparent failure to limit
`
`redactions in the public versions of the ITC documents. Motion, 10-11
`
`(“inadvertently redacted”). The Motion contains no indication that Masimo did
`
`inadvertently redact citations to the requested documents, only an indication that
`
`12
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`such redactions may have been inadvertent. Further, if such redactions exist, the
`
`Motion contains no indication that Masimo ever attempted to correct the issue at
`
`the ITC as would be proper under Garmin Factor 3. Masimo should not expect the
`
`Board to correct Masimo’s oversights at the ITC. RFP #4 should be denied.
`
` Masimo’s Requests for Discovery in Relation to Reasonable Expectation
`of Success Are Overly Broad and Should be Denied
`Among the documents identified in RFPs #2 and #3, Masimo identifies at
`
`least 21 as allegedly bearing on reasonable expectation of success in measuring
`
`oxygen saturation at the wrist and related secondary indicia (skepticism and
`
`failure). Motion, 8, App’x A. The requests as propounded are overly broad and
`
`include documents that have either no relation to reasonable expectation of success
`
`or contain substantial material on topics unrelated to reasonable expectation of
`
`success.3 Id. By offering no explanation in the Motion as to how the individual
`
`requested documents would each be useful for proving reasonable expectation of
`
`success, Masimo fails to meet its burden under Garmin Factor 1. See Garmin, 6-7.
`
`Masimo instead leaves Apple and the Board to search for indications of alleged
`
`
`
`3 Further, to the extent Masimo relates any of the documents identified in RFP #1
`
`or #4 to reasonable expectation of success, these requests should be denied for the
`
`reasons described above in Sections II.C-D.
`
`13
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`usefulness in the public ITC record. But such searching reveals multiple
`
`documents identified in Masimo’s requests that are without any demonstrable
`
`connection to reasonable expectation of success as to pulse oximetry at the wrist or
`
`related secondary considerations (skepticism and failure).
`
`For example, Masimo’s public post-hearing briefs cite CX-1789C and CX-
`
`1790C in relation to protrusion features not recited in the ’745 claims and in
`
`contexts with no discernible usefulness to the issue of reasonable expectation of
`
`success in deploying pulse oximetry at the wrist. Likewise, Masimo cites CX-
`
`0185C, CX-1539C, CX-1711C, and RX-0396C in its ITC briefs with respect to
`
`topics such as copying. The Motion sheds no light as to use of these documents in
`
`relation to reasonable expectation of success.
`
`In addition, requested production of the following additional documents in
`
`service of establishing a record on reasonable expectation of success would further
`
`serve to expose sensitive confidential information found on those documents
`
`pertaining to topics other than reasonable expectation of success, namely CX-
`
`0283C, CX-0289C, CX-0295C, CX-299C, and hearing transcripts of the
`
`testimonies of Vivek Venugopal, Brian Land, Paul Mannheimer, and Stephen
`
`Waydo. By contrast, Masimo selectively excludes requests for production of
`
`countervailing evidence including such evidence cited in Apple’s ITC briefs.
`
`14
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`For each of these reasons, Masimo’s requests as it relates to reasonable
`
`expectation of success should be denied.
`
` Conclusion
`Masimo’s discovery requests are deficient in multiple dimensions and fail
`
`against the interest of justice standard as described in Garmin.
`
`Moreover, Apple notes that the parties’ respective briefings in the Motion
`
`and Opposition was borne of a conferral process prematurely terminated by
`
`Masimo. See APPLE-1034, Footnote 1. Masimo was unwilling at that time even
`
`to offer to Apple basic information such as the relationship between the identified
`
`targets of discovery and the topics to which Masimo would contend usefulness. Id.
`
`Apple nonetheless remains willing to resume meetings with Masimo to
`
`explore whether the parties can resolve through good faith negotiations production
`
`of documents identified by Masimo on reasonable expectation of success and
`
`related objective indicia (skepticism and failure of others), along with Apple’s
`
`responsive documents. The deficiencies in Masimo’s requests on these topics
`
`primarily relate to scope, much of which should be resolvable through redactions.
`
`Remaining portions of Masimo’s requests should not be the subject of negotiation,
`
`however—including those related to commercial success, copying, and RFPs #1
`
`and #4 in light of the multiple significant deficiencies described above.
`
`
`
`15
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Nicholas Stephens, Reg. No. 74,320
`Andrew B. Patrick, Reg. No. 63,471
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`
`Attorneys for Petitioner
`
`
`
`
`Dated: 03/03/2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16
`
`
`
`Case No. IPR2022-01465
`Attorney Docket No: 50095-0045IP3
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on March
`
`3, 2023, a complete and entire copy of this Petitioner’s Opposition to Patent
`
`Owner’s Motion for Additional Discovery and its supporting exhibit were provided
`
`by email, to the Patent Owner by serving the email correspondence addresses of
`
`record as follows:
`
`Brian C. Claassen
`Carol Pitzel Cruz
`Jarom D. Kesler
`Jacob L. Peterson
`Daniel C. Kiang
`Jeremiah S. Helm
`Knobbe, Martens, Olson, & Bear, LLP
`2040 Main St., 14th Floor
`Irvine, CA 92614
`
`Email: AppleIPR745-3@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`