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`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
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`Filed: May 26, 2023
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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
`E-mail:
`AppleIPR745-3@knobbe.com
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`
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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.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner.
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`
`
`Case IPR2022-01465
`U.S. Patent 10,687,745
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`PATENT OWNER MOTION TO SEAL
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`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`INTRODUCTION
`Patent Owner Masimo Corporation (“Masimo”) submits this Motion to Seal
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`I.
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`pursuant to the Protective Order (EX1035). Masimo’s Patent Owner Response and
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`its expert’s declaration (EX2070) rely, in part, on evidence that Apple produced in
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`response to Masimo’s Motion for Additional Discovery. That evidence consists of
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`Apple’s documents and its engineers’ testimony during the June 6-10, 2022 hearing
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`in the ITC investigation, Certain Light-Based Physiological Measurement Devices
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`and Components Thereof, Inv. No. 337-TA-1276 (ITC) (“ITC Investigation”). All
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`of the information that Masimo moves to seal was designated by Apple in the ITC
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`Investigation as containing its Confidential Business Information. Specifically,
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`Masimo moves to seal confidential versions of its Patent Owner Response and
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`Exhibits 2070, 2076-2086, 2089, 2090, and 2093. Masimo has filed public versions,
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`with confidential portions redacted, of its Patent Owner Response and the
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`Declaration of R. James Duckworth.
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`Counsel for the parties have conferred via email. Apple does not oppose the
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`motion as to sealing any Apple confidential information in any documents that Apple
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`produced in response to the Masimo’s Motion for Additional Discovery or other
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`papers or exhibits that quote from the produced documents, but reserves the right to
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`oppose any other aspects of the motion at a later time after an opportunity to review
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`the substance of this motion. Thus, Masimo believes that the motion is unopposed.
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`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`II. MOTION TO SEAL LEGAL STANDARD
`“There is a strong public policy for making all information filed in a
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`quasijudicial administrative proceeding open to the public.” Garmin Int’l v. Cuozzo
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`Speed Techs., LLC, IPR2012–00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper
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`34). The record for an inter partes review shall be made available to the public,
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`except as otherwise ordered on a motion to seal. 35 U.S.C. § 326(a)(1); 37 C.F.R. §
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`42.14. The documents and information that are the subject of the motion to seal
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`shall be treated as sealed until the motion is decided. Id.
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`In determining whether to grant a Motion to Seal, the Board must find “good
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`cause” and “strike a balance between the public’s interest in maintaining a complete
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`and understandable file history and the parties’ interest in protecting truly sensitive
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`information.” 37 C.F.R. § 42.54(a); Consolidated Trial Practice Guide (November
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`2019) at 19 see also Argentum Pharms. LLC v. Alcon Res., Ltd., IPR2017-01053,
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`Paper 27 at 3-4 (PTAB Jan. 19, 2018) (Informative) (describing the “good cause”
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`standard). As described in the Consolidated Trial Practice Guide, the Board
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`identifies confidential information in a manner “consistent with Federal Rule of
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`Civil Procedure 26(c)(1)(G), which provides for protective orders for trade secret or
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`other confidential research, development, or commercial information.”
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`The moving party bears the burden of showing that the relief requested should
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`be granted. 37 C.F.R. § 42.20(c). That includes showing that the information is
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`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`truly confidential, and that such confidentiality outweighs the strong public interest
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`in having an open record. See Argentum, Paper 27 at 3–4. A party moving to seal
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`has the burden of showing that:
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`(1) the information sought to be sealed is truly confidential, (2) a
`concrete harm would result upon public disclosure, (3) there exists a
`genuine need to rely on the specific information sought to be sealed,
`and (4) on balance, an interest in maintaining confidentiality outweighs
`the strong public interest in having an open record.
`Id. These factors support granting Masimo’s motion to seal.
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`III. ALL OF THE DOCUMENTS REQUESTED TO BE SEALED
`CONTAIN APPLE’S CONFIDENTIAL BUSINESS INFORMATION
`Masimo’s Patent Owner Response contains quotes and images from
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`documents and testimony designated as Apple’s Confidential Business Information.
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`Masimo has concurrently filed a public version of its Patent Owner Response with
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`Apple’s Confidential Business Information redacted. Information that previously
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`became public through public filings in the ITC Investigation have not been
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`redacted.
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`Exhibit 2070 is the Declaration of R. James Duckworth, Ph.D., in support of
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`Masimo’s Patent Owner Responses. Exhibit 2070 contains quotes and images from
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`documents and testimony designated as Apple’s Confidential Business Information.
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`Masimo has concurrently filed a public version of Exhibit 2070 with Apple’s
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`Confidential Business Information redacted. Information that previously became
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`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`public through public filings in the ITC Investigation have not been redacted.
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`Exhibits 2076, 2077, 2078, and 2079 are transcripts of the ITC Investigation
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`hearing testimonies of Apple’s engineers, Brian Land, Dr. Paul Mannheimer, Dr.
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`Stephen Waydo, and Dr. Vivek Venugopal, respectively. The transcripts contain
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`portions of their testimonies that were designated as Apple’s Confidential Business
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`Information. The public portions of their testimony can be found in Exhibit 2008.
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`Exhibits 2080, 2081, and 2082 are designated portions of transcripts of the
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`depositions of Apple’s engineers, Dr. Paul Mannheimer, Dr. Stephen Waydo, and
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`Dr. Tao Shui, respectively, taken during the ITC Investigation. Apple designated
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`these transcripts as containing its Confidential Business Information.
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`Exhibit 2083 is an internal Apple email between Apple’s engineers and an
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`attached internal Apple presentation. Apple designated this exhibit as containing its
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`Confidential Business Information.
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`Exhibit 2084 is an internal Apple organizational chart. Apple designated this
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`exhibit as containing its Confidential Business Information.
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`Exhibits 2085, 2086, and 2089 are internal Apple presentations concerning its
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`research and development. Apple designated these exhibits as containing its
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`Confidential Business Information.
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`Exhibit 2090 is an internal Apple email between Apple employees. Apple
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`designated this exhibit as containing its Confidential Business Information.
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`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`Exhibit 2093 is an unredacted copy of the ITC’s Final Initial Determination
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`in the ITC Investigation. The Final Initial Determination contains both parties’
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`Confidential Business Information. A public version of the Final Initial
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`Determination was previously filed as Exhibit 1033.
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`None of these exhibits or confidential information have been made public.
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`Because Apple has designated the exhibits and information as its Confidential
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`Business Information, good cause exists to seal the exhibits and the confidential
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`version of Masimo’s Patent Owner Response.
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`IV. CONCLUSION
`The Board should grant this Motion to seal the requested exhibits.
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`
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`Dated: May 26, 2023
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
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`IPR2022-01465
`Apple Inc. v. Masimo Corporation
`CERTIFICATE OF SERVICE
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`
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`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
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`of counsel for Petitioner, a true and correct copy of PATENT OWNER MOTION
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`TO SEAL is being served electronically on May 26, 2023, to the e-mail addresses
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`shown below:
`
`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: IPR50095-0045IP3@fr.com
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`Dated: May 26, 2023
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`
`
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`Kim Leung
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax:877-769-7945Email:
`PTABInbound@fr.com
`
`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`
`Attorney for Patent Owner
`Masimo Corporation
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`-6-
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