`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper : 41
`Date: August 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)1
`
`____________
`
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s and Petitioner’s Motions to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`1 This order is being filed in each proceeding listed in the caption, due to the
`common issues addressed. The parties are not authorized to use a combined
`caption in these proceedings.
`
`
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`INTRODUCTION
`I.
`In each of these two proceedings, Masimo Corporation (“Patent
`Owner”) and Apple Inc. (“Petitioner”) have each filed a Motion to Seal
`certain documents. See, e.g., IPR2022-01291, Paper 30 (“PO Mot.”),
`Paper 38 (“Pet. Mot.”).2 All four Motions are unopposed.3 For the
`following reasons, we grant all four Motions.
`
`II.
`
`PATENT OWNER’S MOTIONS
`A. Documents At Issue
`Patent Owner’s Motions request that we seal Paper 28 and
`Exhibits 2070, 2076–2086, 2089, 2090, and 2093 in each proceeding. See
`PO Mot. 1.
`Specifically, Exhibits 2076–2086, 2089, 2090, and 2093 in each
`proceeding (“the ITC Documents”) are documents Petitioner produced in
`these two inter partes review proceedings, in response to Patent Owner’s
`Motion for Additional Discovery (Paper 20) which was granted-in-part
`(Paper 23). See PO Mot. 1. The ITC Documents “consist[] of [Petitioner’s]
`documents and its engineers’ testimony during the June 6–10, 2022 hearing
`in the ITC investigation, Certain Light-Based Physiological Measurement
`Devices and Components Thereof, Inv. No. 337-TA-1276 (ITC) (‘ITC
`Investigation’).” PO Mot. 1, 4–5. “All of the information that [Patent
`Owner] moves to seal was designated by [Petitioner] in the ITC
`
`
`2 For expediency, this Order cites to papers filed in IPR2022-01291, unless
`noted otherwise. Similar papers were also filed in IPR2022-01465.
`3 When Patent Owner’s Motions were filed, it was not clear whether
`Petitioner might oppose (see PO Mot. 1), but the time for Petitioner to file an
`opposition has now passed. Petitioner’s Motions state they are unopposed
`(see Pet. Mot. 1–2).
`
`2
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`Investigation as containing” Petitioner’s confidential business information.
`Id. at 1. The ITC Documents have been provisionally filed under seal
`pending the Board’s decision on Patent Owner’s Motion.
`Exhibit 2070 in each proceeding is a Declaration of Dr. R. James
`Duckworth prepared in support of Patent Owner’s arguments in both
`proceedings, discussing information found in the ITC Documents. Patent
`Owner filed two versions of Exhibit 2070: an unredacted version
`provisionally filed under seal pending the Board’s decision on Patent
`Owner’s Motions, and a redacted version to be viewed by the public.
`Paper 28 in each proceeding is the Patent Owner Response in the
`respective proceeding, discussing information found in the ITC Documents.
`Patent Owner provisionally filed Paper 28 under seal pending the Board’s
`decision on Patent Owner’s Motions. Patent Owner also filed a redacted
`version of Paper 28 (i.e., Paper 29) to be viewed by the public.
`
`Analysis and Conclusion
`B.
`Patent Owner asserts good cause exists for maintaining the indicated
`documents under seal. See PO Mot. 2–3. According to Patent Owner, the
`documents contain Petitioner’s confidential information. See PO Mot. 3–5.
`Patent Owner further represents that “[i]nformation that previously became
`public through public filings in the ITC Investigation [has] not been
`redacted.” Id. at 3.
`The standard for granting a motion to seal is “good cause.” 37 C.F.R.
`§ 42.54(a). The party moving to seal bears the burden to show entitlement
`to the requested relief, and to establish that information sought to be sealed
`is confidential information. Id. § 42.20(c). The “good cause” standard
`reflects the strong public policy for making all information in an inter partes
`
`3
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`review open to the public. See Argentum Pharms. LLC v. Alcon Research,
`Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018) (informative).
`When assessing whether the standard has been met, we may consider
`whether the information at issue is truly confidential, whether harm would
`result upon public disclosure, and whether the interest in maintaining
`confidentiality as to the information outweighs the strong public interest in
`an open record. Id. at 3–4.
`We have reviewed the documents at issue, and we conclude they
`reflect Petitioner’s confidential technical and business information. We also
`conclude Patent Owner’s filing of redacted versions of Paper 28 and
`Exhibit 2070 is sufficient to notify the public of the general thrust of Patent
`Owner’s reliance on the ITC Documents as relating to Patent Owner’s
`assertions that Petitioner has failed to demonstrate a reasonable expectation
`of success, either: (1) in combining the prior art to measure oxygen
`saturation at the wrist (IPR2022-01291, Paper 29, at 1–2, 28–40;
`IPR2022-01465, Paper 29, at 37–40); and/or (2) in adding oxygen saturation
`measurements to Iwamiya’s device in light of Sarantos (IPR2022-01465,
`Paper 29, at 36–37). Similarly, as Patent Owner points out, some of the
`witness testimony from the ITC Investigation is publicly available through
`other means. See PO Mot. 4 (public portions of witness testimony in
`Exs. 2076–2079 can be found in Ex. 2008), 5 (public portion ITC Final
`Initial Determination in Ex. 2093 can be found in Ex. 1033).
`Under these circumstances, we agree with Patent Owner’s argument
`that granting Patent Owner’s Motions strikes the right balance “between the
`public’s interest in maintaining a complete and understandable file history
`
`4
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`and the parties’ interest in protecting truly sensitive information.”
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)4, 19.
`We determine good cause exists for granting Patent Owner’s Motions.
`
`III. PETITIONER’S MOTIONS
`A. Documents At Issue
`Petitioner’s Motions request that we seal Paper 40 and Exhibits 1036,
`1037, 1042, and 1059 in each proceeding. See Pet. Mot. 1–2.
`Specifically, Exhibits 1036 and 1037 in each proceeding are
`transcripts of witness testimony from the ITC Investigation (“Further ITC
`Testimony”). See, e.g., Pet. Mot. 3. This testimony, according to Petitioner,
`was provided “in closed session at the ITC and include[d] questioning and
`testimony related to Apple’s Watch products, including sensitive,
`proprietary research and development (R&D) information, trade secrets,
`proprietary processes and apparatuses, and confidential business operations
`information.” Id. at 4–5. Petitioner filed two versions of Exhibits 1036 and
`1037: an unredacted version provisionally filed under seal pending the
`Board’s decision on Petitioner’s Motions, and a redacted version to be
`viewed by the public.
`Exhibit 1042 in each proceeding is a Declaration of Dr. Brian
`Anthony prepared in support of Petitioner’s arguments in both proceedings,
`discussing information found in the ITC Documents and the Further ITC
`Testimony. See, e.g., Pet. Mot. 3–4. Petitioner filed two versions of
`Exhibit 1042: an unredacted version provisionally filed under seal pending
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`5
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`the Board’s decision on Petitioner’s Motions, and a redacted version to be
`viewed by the public.
`Exhibit 1059 in each proceeding is the deposition testimony of Dr. R.
`James Duckworth in support of Patent Owner’s arguments in both
`proceedings, discussing information found in the ITC Documents. See, e.g.,
`Pet. Mot. 4. Petitioner filed two versions of Exhibit 1059: an unredacted
`version provisionally filed under seal pending the Board’s decision on
`Petitioner’s Motions, and a redacted version to be viewed by the public.
`Paper 40 in each proceeding is the Petitioner Reply in the respective
`proceeding, discussing information found in the ITC Documents and the
`Further ITC Testimony. Petitioner provisionally filed Paper 40 under seal
`pending the Board’s decision on Petitioner’s Motions. Petitioner also filed a
`redacted version of Paper 40 (i.e., Paper 39) to be viewed by the public.
`
`Analysis and Conclusion
`B.
`Petitioner asserts good cause exists for maintaining the indicated
`documents under seal. See Pet. Mot. 2–3. According to Petitioner, the
`documents contain Petitioner’s confidential information. See Pet. Mot. 1,
`3–7.
`
`We have reviewed the documents at issue, and we conclude they
`reflect Petitioner’s confidential technical and business information. We also
`conclude Petitioner’s filing of redacted versions of Paper 40 and
`Exhibits 1036, 1037, 1042, and 1059 is sufficient to notify the public of the
`general thrust of Petitioner’s arguments concerning reasonable expectation
`of success. See IPR2022-01291, Paper 39, 15–23; IPR2022-01465,
`Paper 39, at 15–23. Under these circumstances, we agree with Petitioner’s
`argument that granting Petitioner’s Motions strikes the right balance
`
`6
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`“between the public’s interest in maintaining a complete and understandable
`file history and the parties’ interest in protecting truly sensitive information.”
`CTPG 19.
`We determine good cause exists for granting Petitioner’s Motions.
`
`IV. PROTECTIVE ORDER
`A Protective Order has already been entered in both of these
`proceedings. See, e.g., IPR2022-01291, Paper 24, Ex. 1035. That Protective
`Order governs the confidentiality of the sealed documents at issue here.
`
`V. CONCLUSION
`For the foregoing reasons, we grant Patent Owner’s and Petitioner’s
`Motions to Seal in each of the two subject proceedings.
`We remind the parties of the public’s interest in maintaining a
`complete and understandable file history, and of the general expectation that
`information will be made public where the existence of the information is
`identified in a final written decision following a trial. See CTPG 21–22. We
`also note that confidential information subject to a protective order
`ordinarily becomes public 45 days after final judgment in a trial. See id.
`After final judgment, a party may file a motion to expunge confidential
`information from the record prior to the information becoming public. See
`id.; 37 C.F.R. § 42.56.
`
`VI. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motions to Seal (IPR2022-01291,
`Paper 30; IPR2022-01465, Paper 30) are both granted;
`
`7
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`FURTHER ORDERED that Petitioner’s Motions to Seal
`(IPR2022-01291, Paper 38; IPR2022-01465, Paper 38) are both granted;
`FURTHER ORDERED that Papers 28 and 40, and Exhibits 1036,
`1037, 1042, 1059, 2070, 2076–2086, 2089, 2090, and 2093 (unredacted
`versions), in both proceedings shall remain sealed and designated as “Board
`and Parties Only” in P-TACTS until further notice; and
`FURTHER ORDERED that the Protective Order set forth in
`Exhibit 1035 continues to govern these proceedings.
`
`8
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`FOR PETITIONER:
`
`W. Karl Renner
`Nicholas Stephens
`Andrew B. Patrick
`Kim Leung
`Patrick J. Bisenius
`Patrick J. King
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`leung@fr.com
`bisenius@fr.com
`pking@fr.com
`IPR50095-0045IP1@fr.com
`PTABInbound@fr.com
`
`FOR PATENT OWNER:
`
`Brian C. Claassen
`Carol Pitzel Cruz
`Daniel C. Kiang
`Jeremiah S. Helm
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2bcc@knobbe.com
`2cmp@knobbe.com
`2dck@knobbe.com
`2jgh@knobbe.com
`AppleIPR745-1@knobbe.com
`
`9
`
`
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