Trials@uspto.gov
`571-272-7822
`
`Paper No. 23
`Date: March 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2022-01465
`Patent 10,687,745 B1
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting-in-Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)(i)
`
`
`
`
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`
`
`

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`IPR2022-01465
`Patent 10,687,745 B1
`
`INTRODUCTION
`I.
`With our prior authorization, Masimo Corporation (“Patent Owner”)
`filed a Motion for Additional Discovery (“Motion” or “Mot.”) seeking
`unredacted copies of certain documents, exhibits, and testimony identifiable
`from (and subject to a protective order in) In re Certain Light-Based
`Physiological Measurement Devices and Components Thereof, ITC Inv.
`No. 337-TA-1276 (the “ITC Investigation”) between the parties concerning
`U.S. Patent No. 10,687,745 B1 (Ex. 1001, “the ’745 patent”), the same
`patent at issue in this proceeding. Paper 20. Patent Owner argues that the
`materials sought generally pertain to whether there was a “reasonable
`expectation of success in modifying the prior art to measure oxygen
`saturation at the wrist”1 and “objective indicia of nonobviousness,”
`including “evidence of industry skepticism, failure of others, copying, and
`commercial success.” Mot. 2. Apple Inc. (“Petitioner”) opposes the motion.
`Paper 21 (“Opposition” or “Opp.”). For the reasons that follow, we grant-in
`part the Motion, as set forth in our Order below.
`II. DISCUSSION
`Pursuant to 37 C.F.R. § 42.51(b)(2)(i), “[t]he parties may agree to
`additional discovery between themselves. Where the parties fail to agree, a
`party may move for additional discovery. The moving party must show that
`such additional discovery is in the interests of justice.”
`In determining whether a request for additional discovery should be
`granted under the “interests of justice” standard, we consider the factors set
`forth in Garmin International, Inc. v. Cuozzo Speed Technologies LLC,
`
`
`1 Patent Owner explains that the prior art at issue in the ITC Investigation
`included references relied on by Petitioner in this proceeding. Mot. 2.
`
`2
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`

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`IPR2022-01465
`Patent 10,687,745 B1
`IPR2021-00001, Paper 26 (PTAB Mar. 5, 2013) (Decision on Motion for
`Additional Discovery) (precedential). See, e.g., Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (Nov. 2019), at 25–28.2 The
`Garmin factors are as follows:
`1. whether the requests are based on more than a possibility and mere
`allegation;
`2. whether the requests seek litigation positions and underlying basis;
`3. whether the requestor has the ability to generate equivalent
`information by other means;
`4. whether the requests are easily understandable; and
`5. whether the requests are overly burdensome to answer.
`
`Id.
`
`Patent Owner argues that granting its requests “is in the interests of
`justice because it ensures that the Board decides validity based on a more
`complete record, including evidence relied on by another government
`agency when upholding the validity of the ’745 [p]atent.” Mot. 4. Below
`we address each of the four document production requests presented in the
`Motion in view of the Garmin factors. See Mot. Appx. A.
`Requests for Production Numbers 1 to 3
`A.
`Patent Owner’s requests for production numbers 1 to 3 are all directed
`to specific documents identified in regard to the ITC Investigation, including
`unredacted copies of three briefs, thirty-two exhibits, hearing testimony from
`five witnesses, and the ITC’s Final Initial Determination (the “ITC ID”). Id.
`We agree with Patent Owner that these requests are based on more
`than a mere possibility of uncovering something useful. In short, Patent
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
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`IPR2022-01465
`Patent 10,687,745 B1
`Owner argues that the publicly accessible information from the ITC
`Investigation demonstrates “beyond mere speculation that the requested
`discovery would produce useful evidence.” Mot. 5. Patent Owner further
`reasons that the evidence sought was considered during the ITC
`Investigation and “is necessary here to once again rebut [Petitioner’s]
`obviousness theories about the same combination of references.” Id. at 5–6.
`Patent Owner explains that “the discovery requests specifically target
`documents and testimony [Patent Owner] already relied on in the ITC
`investigation to uphold the validity of the ’745 patent.” Id. at 7. Patent
`Owner’s showing that the material sought would be “favorable in
`substantive value to a contention of the party moving for discovery” is
`supported by the fact that Patent Owner has relied upon the material in
`another forum for substantially similar purposes for which it is sought in this
`proceeding. See Garmin, Paper 26 at 7.
`In further support of the Motion, Patent Owner shows that the requests
`are easily understandable and identify specific documents by their name, as
`filed in the ITC, including exhibit numbers and hearing testimony
`transcripts, and that the requests do not seek a litigation position. Id. at 12,
`14. Patent Owner relatedly shows that the requests pose little burden to
`Petitioner as they are clearly identified documents in Petitioner’s possession
`that do not require any searching to locate. Id. at 14–15.
`Lastly, Patent Owner shows that it attempted to obtain the evidence,
`which is subject to a protective order in the ITC, through a motion it filed in
`the ITC proceeding. Id. at 12–14. According to Patent Owner, Petitioner
`successfully opposed that ITC motion, representing to the ITC that Patent
`Owner “should pursue any relevant additional discovery through an
`established mechanism in the PTAB.” Mot. 13 (quoting Ex. 2013, 10).
`
`4
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`IPR2022-01465
`Patent 10,687,745 B1
`Thus, Patent Owner reasons that it has sufficiently exhausted other means to
`obtain the information sought, thereby warranting the relief it now seeks
`through a motion for additional discovery here.
`Petitioner’s arguments in opposition do not refute Patent Owner’s
`showing that granting the additional discovery sought in requests for
`production numbers 1 to 3 is in the interests of justice. First, Petitioner
`argues that the evidence sought by Patent Owner is “imbalanced” and
`“calibrated only to tell [Patent Owner’s] story.” Opp. 1. Petitioner,
`however, may seek to obtain evidence supporting its positions and we are
`aware of no obligation on Patent Owner to seek evidence to tell Petitioner’s
`“story.” Next, Petitioner argues the requests “implicate some 2,200 pages of
`documents,” and will lead to “trials-within-trials.” Id. It is unclear whether
`Petitioner is suggesting that the requests require the production of 2,200
`pages, or merely “implicate” that number of pages. In any event, we do not
`find the number of documents sought to be unreasonable regardless of the
`number of pages implicated.
`Petitioner also broadly argues that the requests cover multiple topics
`and include “testimony from Apple engineers with respect to features in
`patents wholly unrelated to” the ’745 patent. Id. at 1–2. The mere fact that
`documents sought may include information related to other patents at issue
`in the ITC Investigation does not show that the requests are overly broad.
`Petitioner had the opportunity to reach agreement with Patent Owner on the
`additional discovery sought and chose to produce nothing voluntarily in
`
`5
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`IPR2022-01465
`Patent 10,687,745 B1
`response to the requests.3 Now Petitioner suggests the Motion should be
`denied in the absence of parsing page-by-page what portions of the
`documents sought are most relevant to the issues here. We disagree such an
`approach is necessary where, as here, Patent Owner has more than
`sufficiently shown that the information sought pertains to arguments
`presented in the ITC Investigation in regard to the same patent at issue in
`this proceeding.
`For similar reasons, Petitioner’s assertion that Patent Owner has not
`shown how the documents would be useful rings hollow. Petitioner suggests
`that the documents are not useful because in the ITC Investigation some
`arguments advanced by Patent Owner were purportedly “soundly rejected”
`by the “ALJ’s Initial Determination.” Id. at 2 (citing Ex. 1033). We find no
`basis to support the notion that additional discovery is limited to evidence on
`issues that the party seeking the discovery prevailed on in another forum.
`Petitioner’s more particular arguments are not persuasive for
`substantially the same reasons. Id. at 3–12. For example, according to
`Petitioner, Patent Owner “offers nothing to confront the ALJ’s findings”;
`however, there is no burden on Patent Owner to do so to show that the
`materials sought would be useful. Id. at 6. As Petitioner recognizes, we are
`
`
`3 Petitioner further states it “remains willing to resume meetings” with
`Patent Owner “to explore whether the parties can resolve through good faith
`negotiations” the production of some limited set of documents sought by
`Patent Owner. Opp. 3, 15. We find no ambiguity in the documents sought
`by Patent Owner or the bases for the requests that necessitates further
`discussions between the parties as to requests for production numbers 1 to 3,
`particularly in light of Petitioner’s refusal to voluntarily produce any
`document sought by Patent Owner in this regard, which would have
`potentially reduced the number of documents at issue in the Motion to the
`benefit of the parties and the efficiency of the Board.
`
`6
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`IPR2022-01465
`Patent 10,687,745 B1
`not bound to reach the same conclusion as the ITC in the ITC ID on the full
`record presented in this proceeding. Id. at 6 (noting that the “Board does not
`defer to the ITC”). Petitioner further would have us preclude Patent Owner
`from presenting evidence of objective indicia of nonobviousness because
`“[discovery on commercial success would open the door” to issues “already
`litigated at the ITC.” Id. at 7; see also id. at 9 (arguing that Patent Owner
`fails to show how “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”). There is simply no basis for Petitioner, having
`sought inter partes review, to now argue we should restrict Patent Owner
`from obtaining and asserting evidence that supports its positions, including
`evidence of objective indicia of nonobviousness, regardless of whether that
`evidence pertains to Petitioner’s “highly-sensitive technical, sales, and
`commercial data.” See id. at 8. A protective order may be sought in this
`proceeding to address confidentiality concerns raised by Petitioner.4
`Petitioner further suggests that Patent Owner’s requested discovery
`should be denied because Patent Owner has not shown “how the individual
`requested documents would each be useful for proving reasonable
`expectation of success.” Id. at 13. Petitioner then seeks to substantively
`dispute what particular documents show, arguing again that they have “no
`discernible usefulness” as to proving specific issues. Id. at 14. Under the
`particular circumstances presented here, where the documents sought were
`produced and relied upon by the parties in the ITC Investigation pertaining
`to the same patent challenged here, we find sufficient Patent Owner’s
`
`4 As an example, the parties previously agreed to a protective order in
`another pending proceeding. Apple Inc. v. Masimo Corp., IPR2022-01299,
`Exhibit 2094.
`
`7
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`IPR2022-01465
`Patent 10,687,745 B1
`articulation of the usefulness of the documents sought for purposes of
`allowing additional discovery.
`Lastly, Petitioner argues that the production of unredacted versions of
`“the parties’ briefs and ID from the ITC proceeding” is improper because the
`material sought is not “factual evidence,” and, therefore, “would not be
`useful to substantiating claims of either objective indicia of non-obviousness
`or reasonable expectation of success.” Id. at 10–12. We need not resolve
`whether these materials are “factual evidence” for purposes of allowing
`discovery as Petitioner identifies no support for the notion that unredacted
`briefs and the ITC DI are necessarily precluded from discovery because they
`are “not themselves evidence.” See id. Under the particular circumstances
`presented here, we find reasonable Patent Owner’s request to obtain
`unredacted versions of these documents to clarify what additional evidence
`presented during the ITC Investigation supports its contentions in this
`proceeding as to the same patent challenged here.
`Upon consideration of all arguments advanced by both parties, for the
`reasons provided above, we find that Patent Owner has shown that all five
`Garmin factors support our determination that granting the additional
`discovery sought in production requests numbers 1 to 3 is in the interests of
`justice.
`
`Request for Production Number 4
`B.
`Patent Owner’s request for production number 4 is directed to
`“any exhibits or testimony” cited on certain pages redacted in the public
`versions of two briefs filed by Patent Owner in the ITC Investigation and in
`the ITC ID. Mot. Appx. A, 2–3. Patent Owner reasons that the documents
`and testimony sought “should be zero if no citations were inadvertently
`redacted in the public version,” thereby conceding that it does not know
`
`8
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`IPR2022-01465
`Patent 10,687,745 B1
`whether any responsive documents exist. Mot. 10. Patent Owner reasons
`that if such documents exist, they “would be useful to demonstrating no
`reasonable expectation of success or objective indicia of nonobviousness
`because they were cited and discussed in sections of [Patent Owner’s]
`briefing and the Initial Determination specifically addressing reasonable
`expectation of success or objective indicia.” Id. (citing Ex. 1033, 116).
`Petitioner argues that the request “targets documents whose identity
`and existence are unknown from the public ITC record.” Opp. 12.
`According to Petitioner, Patent Owner “offers no evidence or explanation for
`why anything useful would be uncovered” by the request and that Patent
`Owner is responsible for any inadvertent redactions. Id. at 12–13.
`We find that Patent Owner’s request for production, at this stage of
`the proceeding, is too speculative to show more than a possibility that
`something useful will be obtained.5 However, as explained above, we are
`ordering the production of unredacted versions of the briefs and ITC ID at
`issue. After production and upon review of that material, the parties may
`meet and confer to determine whether agreement can be reached, pursuant to
`37 C.F.R. § 42.51(b)(2)(i), on any additional discovery sought, consistent
`with this Decision. Our expectation is that the parties will seek to resolve
`the issue without the need for further motions practice. If agreement cannot
`be reached, Patent Owner may request leave to file a motion for additional
`discovery.
`
`
`5 We do not find the issue of whether a redaction was “inadvertent,” much
`less who is responsible for redacting material in the ITC proceedings, to be
`pertinent to our determination in this case.
`
`9
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`IPR2022-01465
`Patent 10,687,745 B1
`
`IV. CONCLUSION
`For the foregoing reasons, we grant Patent Owner’s request for
`production numbers 1–3 and deny Patent Owner’s request for production
`number 4, recognizing that materials addressed by request for production
`number 4 may again be the subject of a motion for additional discovery
`depending upon further developments.
`III. ORDER
`Upon consideration of the record before us, it is:
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`granted-in-part, and that Petitioner shall produce, no later than March 24,
`2023, documents responsive to Patent Owner’s Requests for Production
`Numbers 1–3, as set forth in Appendix A to Patent Owner’s Motion for
`Additional Discovery (Paper 20), and
`FURTHER ORDERED that Patent Owner’s Request for Production
`Number 4, as set forth in Appendix A to Patent Owner’s Motion for
`Additional Discovery (Paper 20), is denied.
`
`10
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`IPR2022-01465
`Patent 10,687,745 B1
`FOR PETITIONER:
`W. Karl Renner
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`dsmith@fr.com
`patrick@fr.com
`nstephens@fr.com
`IPR50095-0045IP1@fr.com
`PTABInbound@fr.com
`
`
`
`FOR PATENT OWNER:
`
`Brian C. Claassen
`Carol Pitzel Cruz
`Jarom D. Kesler
`Jacob L. Peterson
`Daniel Kiang
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2bcc@knobbe.com
`2cmp@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`2dck@knobbe.com
`AppleIPR745-1@knobbe.com
`
`
`11
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