UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Monica Bhattacharyya
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN LIGHT-BASED PHYSIOLOGICAL
`MEASUREMENT DEVICES AND
`COMPONENTS THEREOF
`
`Inv. No. 337-TA-1276
`
`COMPLAINANTS’ MOTION TO MODIFY PROTECTIVE ORDER
`
`Complainants Masimo Corporation and Cercacor Laboratories, Inc. (collectively,
`
`“Masimo” or “Complainants”) respectfully bring this Motion to Modify the Protective Order.
`
`Masimo seeks to amend the Protective Order to add specific provisions permitting the use of
`
`evidence relating to objective indicia of nonobviousness and nexus from this Investigation in eight
`
`co-pending inter partes review (“IPR”) proceedings initiated by Respondent Apple Inc. (“Apple”)
`
`in the U.S. Patent & Trademark Office (“USPTO”). Each of the eight Apple IPRs involve one of
`
`the Asserted Patents and are listed below:
`
` Apple, Inc. v. Masimo Corp., IPR2022-01271 (challenging U.S. Patent No. 10,912,501)
`
`(“’501 Patent”),
`
` Apple, Inc. v. Masimo Corp., IPR2022-01272 (challenging ’501 Patent),
`
` Apple, Inc. v. Masimo Corp., IPR2022-01273 (challenging U.S. Patent No. 10,912,502)
`
`(“’502 Patent”),
`
` Apple, Inc. v. Masimo Corp., IPR2022-01274 (challenging ’502 Patent),
`
` Apple, Inc. v. Masimo Corp., IPR2022-01275 (challenging U.S. Patent No. 10,945,648)
`
`(“’648 Patent”),
`
` Apple, Inc. v. Masimo Corp., IPR2022-01276 (challenging ’648 Patent),
`
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`IPR2022-01465
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`

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` Apple, Inc. v. Masimo Corp., IPR2022-01291 (challenging U.S. Patent No. 10,687,745)
`
`(“’745 Patent”),
`
` Apple, Inc. v. Masimo Corp., IPR2022-01292 (challenging ’745 Patent) (collectively, the
`
`“IPRs”).
`
`Good cause exists for this Protective Order modification, because it will allow the USPTO to
`
`benefit from the record developed in this Investigation when evaluating Apple’s assertions of
`
`obviousness. Apple chose not to present that evidence to the USPTO in its IPR petitions. Absent
`
`an agreement from Apple, which Apple has refused, or a modification of the existing Protective
`
`Order, Masimo cannot present any of Apple’s CBI relevant to nonobviousness in the IPR
`
`proceedings.
`
`GROUND RULE 3.2 CERTIFICATION
`
`Pursuant to Ground Rule 3.2, Masimo made good faith efforts to resolve this Motion at
`
`least two business days in advance of filing this motion. Apple stated that it would oppose.
`
`
`
`
`Dated: August 18, 2022
`
`
`
`
`
`By: /s/ Sheila N. Swaroop
`Stephen C. Jensen
`Joseph R. Re
`Irfan A. Lateef
`Sheila N. Swaroop
`Ted. M. Cannon
`Brian C. Claassen
`Alan G. Laquer
`Kendall M. Loebbaka
`Daniel C. Kiang
`Douglas B. Wentzel
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile: (949) 760-9502
`
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`William R. Zimmerman
`Jonathan E. Bachand
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`1717 Pennsylvania Avenue N.W., Suite 900
`Washington, DC 20006
`Telephone: (202) 640-6400
`Facsimile: (202) 640-6401
`
`Carol Pitzel Cruz
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`925 4th Ave., #2500
`Seattle, WA 98104
`Telephone: (206) 405-2000
`Facsimile: (206) 405 2001
`
`Karl W. Kowallis
`Matthew S. Friedrichs
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`1155 Avenue of the Americas
`24th Floor
`New York, NY 10036
`Telephone: (212) 849-3000
`Facsimile: (212) 849-3001
`
`Counsel for Complainants
`Masimo Corporation and
`Cercacor Laboratories, Inc.
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`In the Matter of Certain Light-Based Physiological Measurement Devices
`and Components Thereof
`Inv. No. 337-TA-1276
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that on August 18, 2022, I caused copies of the foregoing
`document to be filed and served as indicated below:
`
`
`Secretary – U.S. International Trade Commission
`The Honorable Lisa R. Barton
` Via Electronic Filing [EDIS]
`Secretary to the Commission
` Via hand delivery
`U.S. International Trade Commission
` Via Express Delivery
`500 E Street, SW, Room 112
` Not filed
`Washington, DC 20436
`Administrative Law Judge – U.S. International Trade Commission
`The Honorable Monica Bhattacharyya
` Via E-mail to edward.jou@usitc.gov and
`U.S. International Trade Commission
`michael.maas@usitc.gov and
`500 E Street, S.W., Room 317
`Bhattacharyya337@usitc.gov
`Washington, D.C. 20436
`
`Counsel for Respondent Apple, Inc.
`Michael Esch
`David Cavanaugh
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`
`Mark Selwyn
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`2600 El Camino Real
`Suite 400
`Palo Alto, California 94306
`
`Joseph Mueller
`Richard Goldenberg
`Sarah Frazier
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`60 State Street
`Boston, Massachusetts 02109
`
` Via Hand Delivery
` Via E-mail to
`WHApple-
`Masimo1276ServiceList@wilmerhale.com
` Via Express Delivery
` Via Facsimile
`
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`

`August 18, 2022
`
`
`56152788
`
`/s/ Claire A. Stoneman
`Claire A. Stoneman
`Litigation Paralegal
`Knobbe, Martens, Olson & Bear, LLP
`
`
`
`
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`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Monica Bhattacharyya
`Administrative Law Judge
`
`In the Matter of
`
`CERTAIN LIGHT-BASED PHYSIOLOGICAL
`MEASUREMENT DEVICES AND
`COMPONENTS THEREOF
`
`
`
`
`
`
`Inv. No. 337-TA-1276
`
`
`
`COMPLAINANTS’ MEMORANDUM IN SUPPORT OF MOTION TO MODIFY
`PROTECTIVE ORDER
`
`
`
`
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`MASIMO 2012
`Apple v. Masimo
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`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ............................................................................................................. 1 
`
`FACTUAL BACKGROUND ............................................................................................ 3 
`
`A. 
`
`B. 
`
`Apple’s IPR Petitions ............................................................................................. 3 
`
`The Evidence Masimo Seeks to Introduce in the IPRs .......................................... 4 
`
`LEGAL STANDARD ........................................................................................................ 5 
`
`THE PROTECTIVE ORDER SHOULD BE AMENDED TO PERMIT
`USE OF A LIMITED SET OF EVIDENCE ..................................................................... 5 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Masimo Would Be Prejudiced Without the Proposed Amendments ..................... 7 
`
`Apple Would Suffer No Prejudice from the Proposed Amendments .................... 8 
`
`Third-Party Confidential Information Will Not Be Impacted ............................. 10 
`
`The Proposed Amendments Do Not Conflict with the ITC’s Interest
`in Protecting CBI ................................................................................................. 11 
`
`V.
`
`CONCLUSION ................................................................................................................ 12 
`
`
`
`
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`TABLE OF AUTHORITIES
`
`Page No(s).
`
`4G Capabilities,
`Inv. No. 337-TA-868, Order No. 46 at 2 (July 24, 2013) ..........................................................5
`
`Akzo N.V. v. U.S. Int’l Trade Comm’n,
`808 F.2d 1471 (Fed. Cir. 1986)................................................................................................11
`
`Apple v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) (en banc) ..................................................................................6
`
`Apple, Inc. v. Cercacor Laboratories,
`IPR2022-01299, and -01300 ......................................................................................................1
`
`Atlas Copco Tools & Assembly Sys., LLC v. Wildcat Licensing WI LLC,
`IPR2020-00891, Paper No. 37 (P.T.A.B. Mar. 18, 2021) .........................................................8
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper No. 20 (P.T.A.B. Feb. 28, 2018) ..........................................................9
`
`Certain Composite Aerogel Insulation Materials,
`No. 337-TA-1003, Order No. 21 (Dec. 19, 2016) ...................................................................10
`
`Certain Ground Fault Circuit Interrupters,
`Inv. No. 337-TA-739, Comm’n Op. at 5 (Feb. 22, 2013) ........................................................11
`
`Certain Two-Way Global Satellite Communication Devices,
`Inv. No. 337-TA-854 (Enforcement Proceeding), Order No. 23 (Nov. 7, 2013) ......................5
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .......................................................................................................................6
`
`Masimo Corp. et al. v. Apple Inc.,
`No. 8:20-cv-00048 (C.D. Cal.) ..................................................................................................3
`
`Robert Bosch Tool Corp. v. SD3, LLC,
`IPR2016-01751, Paper 15 (P.T.A.B. Mar. 22, 2017) ................................................................6
`
`Stryker Corp. v. KFX Medical, LLC,
`IPR2019-00817, Paper No. 10 (P.T.A.B. Sept. 16, 2019) .........................................................6
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012)..................................................................................................6
`
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`TABLE OF AUTHORITIES
`(cont’d)
`
`OTHER AUTHORITIES
`
`Page No(s).
`
`19 C.F.R. § 210.34 ...........................................................................................................................5
`
`37 C.F.R. § 42.11 .............................................................................................................................9
`
`37 C.F.R. § 42.14 ...........................................................................................................................10
`
`37 C.F.R. § 42.51 .....................................................................................................................7, 8, 9
`
`37 C.F.R. § 42.54 ...........................................................................................................................10
`
`37 C.F.R. § 42.56 ...........................................................................................................................10
`
`
`
`
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`I. INTRODUCTION
`
`Masimo seeks to amend the Protective Order (Order No. 1 and as amended in Order No.
`
`13) in this Investigation to permit the submission of Apple CBI produced in this Investigation in
`
`eight (8) inter partes review proceedings (“IPRs”) filed by Apple challenging the validity of the
`
`’501, ’502, ’648, and ’745 Patents asserted in this Investigation.1 Appendix A contains the specific
`
`provisions proposed to be added to the Protective Order.
`
`The ALJ held a full evidentiary hearing from June 6-10, 2022 during which Masimo and
`
`Apple presented their cases on infringement, domestic industry, and validity through hours of
`
`witness testimony and hundreds of exhibits. After Apple promised to the ALJ that it would
`
`“present the best possible evidence on the issues” before the ALJ, Tr. (Apple Opening) at 39:11-
`
`17, Apple then waited until after the completion of post-hearing briefing to file IPR challenges to
`
`the asserted patents. Apple hinted at its intended tactic during its examination of Masimo’s CEO.
`
`Tr. (Kiani) at 164:5-7 (“You would agree with me, Mr. Kiani, that there are no IPR proceedings
`
`yet involving the three patents in this family in this investigation, correct?”) (emphasis added).
`
`In its IPRs, Apple asserts that Masimo’s patent claims are invalid as obvious based on
`
`similar, and in some cases identical, arguments already presented to the ALJ. For example, in
`
`several of the IPRs challenging the ’501, ’502, and ’648 Patents, Apple relies on the same
`
`reference, Lumidigm, as the primary reference in its obviousness combinations. See, e.g., Ex. 2 at
`
`4 ; Ex. 4 at 3-4; Ex. 6 at 4. And in a petition challenging the ’745 Patent, Apple presented the
`
`same Iwamiya, Sarantos, and Venkatraman grounds it had presented in post-hearing briefing and
`
`
`1 Apple also filed two additional petitions for IPR of the ’127 Patent also asserted in this
`Investigation, captioned Apple, Inc. v. Cercacor Laboratories, IPR2022-01299, and -01300.
`Masimo is not seeking to amend the Protective Order to permit use of CBI documents in IPR2022-
`01299 and -01300 because Masimo did not rely on Apple CBI for objective indicia of
`nonobviousness of the ’127 Patent.
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`the same Sarantos, Shie, and Venkatraman grounds it had presented in its pre-hearing brief (but
`
`dropped during the hearing). Ex. 7 at 2; Apple Corrected Post-Hearing Br. (Public Version) (EDIS
`
`Dkt. No. 776462) at 67-140 (invalidity arguments directed to ’501, ’502, and ’648 Patents based
`
`on Lumidigm), 186-199 (invalidity arguments directed to ’745 Patent based on Iwamiya, Sarantos,
`
`and Venkatraman); Apple Corrected Pre-Hearing Br. (Public Version) (EDIS Dkt. No. 771819) at
`
`174-182 (Sarantos, Shie, and Venkatraman grounds).
`
`As shown in the publicly available portions of the hearing and post-hearing briefing,
`
`Masimo presented significant evidence and argument regarding objective
`
`indicia of
`
`nonobviousness relating to Masimo’s asserted ’501, ’502, ’648, ’745, and ’127 Patents, much of
`
`which came from Apple’s own documents and witnesses. Yet Apple’s IPR petitions and expert
`
`declarations omit any reference to the substantial Apple testimony and documents regarding
`
`objective indicia of nonobviousness fully developed in this Investigation. See generally Exs. 1-8.
`
`Apple even chose to use different technical experts to support its IPR arguments from those it
`
`presented to the ALJ, apparently to shield these new experts from the substantial evidence
`
`contradicting their opinions on obviousness. As a result, neither the PTAB nor Apple’s own
`
`technical experts have the benefit of the record from this Investigation, and Apple has refused to
`
`allow Masimo to present any of this information to the PTAB.
`
`Good cause exists to amend the Protective Order to permit the PTAB to fully consider the
`
`evidence of nonobviousness that Apple is attempting to withhold that is directly relevant to the
`
`patents. Doing so would protect the public interest by providing a more complete record in the
`
`IPR proceedings regarding objective indicia of nonobviousness and would protect the parties from
`
`undue burden and expense by minimizing the duplication of discovery. The USPTO has
`
`procedures to maintain the confidential status of the information produced in this Investigation,
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`
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`such as by filing confidential information under seal. Masimo’s proposed amendments to the
`
`Protective Order also ensure that the use of Apple CBI in the IPRs would be subject to the same
`
`protections as under the ITC Protective Order.
`
`The parties met and conferred on August 15. Apple explained it objected to the PTAB
`
`learning of any of this evidence from Apple because that information was designated as
`
`confidential. Ex. 19 at 1-2 (summarizing meet and confer). Notably, while Apple has objected to
`
`use of its CBI in the IPR proceedings it decided to initiate after the full evidentiary hearing, Apple
`
`previously requested that the ITC hearing transcript, deposition transcripts and all accompanying
`
`exhibits be useable in the co-pending district court case between the parties, Masimo Corp. et al.
`
`v. Apple Inc., No. 8:20-cv-00048 (C.D. Cal.). See Ex. 18. Apple cannot reconcile its contrary
`
`position here.
`
`A.
`
`Apple’s IPR Petitions
`
`II. FACTUAL BACKGROUND
`
`Between July 15-22, 2022—after the parties completed their post-hearing briefing on July
`
`11, 2022—Apple filed ten petitions with the USPTO for inter partes review of the ’501, ’502,
`
`’648, (“Multi-Detector Patents”),’745 Patent, and ’127 Patent in this Investigation. Exs. 1-8 (IPR
`
`petitions for Multi-Detector and ’745 Patents). Because Apple filed its IPRs after the completion
`
`of post-hearing briefing, Apple had full knowledge of Masimo’s validity arguments and evidence,
`
`including objective indicia of nonobviousness for the Multi-Detector Patents and ’745 Patent—at
`
`the time it filed the eight IPR petitions. Apple’s IPR petitions tellingly omit all of the objective
`
`indicia of nonobviousness for each of the patents, much less address any of the public or
`
`confidential evidence that Masimo cited in post-hearing briefing. See generally Exs. 1-8.
`
`Masimo’s patent owner preliminary responses (“POPRs”) to Apple’s IPR petitions are due
`
`between October 26, 2022 and November 4, 2022. Exs. 9-16 (notices of filing date accorded dated
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`
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`July 26 and August 4, providing three months to file POPRs). Because Apple has argued that the
`
`claims of the Asserted Patents would have been obvious, Masimo intends to raise objective indicia
`
`of nonobviousness in responding to Apple’s IPR petitions. But, Apple has made clear it intends
`
`to try to shield its own evidence from consideration by the PTAB. Ex. 19 at 1-2.
`
`B.
`
`The Evidence Masimo Seeks to Introduce in the IPRs
`
`Masimo rebutted Apple’s obviousness arguments in this Investigation by presenting
`
`evidence of objective indicia of nonobviousness. See Masimo Post-Hearing Br. (Public Version)
`
`(EDIS Dkt. No. 775168) 158-175, 233-34. For example, Masimo presented evidence of
`
`skepticism and unexpected results for the claimed convex protrusions in the Multi-Detector Patents
`
`(’501, ’502, and ’648 Patents). Id. at 160-164. This included evidence that Apple’s own engineers
`
`viewed a convex back crystal as a negative in that it would increase crosstalk compared to a flat
`
`back crystal. Id. at 160-161. Masimo also presented evidence of industry skepticism of measuring
`
`oxygen saturation at the wrist and Apple’s copying of Masimo’s technology. Id. at 165-173.
`
`Masimo also explained how the Apple Watch Series 6 and Series 7 achieved commercial success
`
`and their nexus to the inventions of the Multi-Detector and ’745 Patents. Id. at 173-175. While
`
`much of Masimo’s arguments and characterizations of evidence are now public (see id. at 160-
`
`175), some of the underlying exhibits, hearing transcripts, and deposition transcripts remain
`
`confidential.
`
`
`
`Masimo would like to present the same evidence and arguments regarding objective indicia
`
`of nonobviousness in the pending IPRs that was part of the record in this Investigation. Thus,
`
`Masimo is seeking permission to use the confidential exhibits, hearing testimony, and deposition
`
`transcripts cited in Masimo’s post-hearing briefs for objective indicia of nonobviousness. Because
`
`Masimo’s objective indicia arguments also relied on the commercial success of the Series 6 and
`
`Series 7 due to the claimed blood oxygen feature, Masimo also seeks permission to use the
`
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`
`
`evidence cited in post-hearing briefing to show that the accused Apple Watches infringe the Multi-
`
`Detector Patents and ’745 Patent to demonstrate nexus.
`
`
`
`No third-party confidential information is at issue. The only third-party testimony cited in
`
`support of objective indicia of nonobviousness was the deposition testimony of Mr. Robert Rowe.
`
`Masimo Post-Hearing Br. (Public Version) at 162 (citing CX-0279C (Rowe)). But Mr. Rowe’s
`
`attorneys de-designated that deposition transcript, and it is no longer confidential. Ex. 17.
`
`III. LEGAL STANDARD
`
`Commission Rule 210.34(a) authorizes the ALJ to issue and amend a protective order for
`
`good cause. 19 C.F.R. § 210.34(a) (authorizing the ALJ “for good cause shown, … make any
`
`order that may appear necessary and appropriate for the protection of the public interest or that
`
`justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue
`
`burden or expense”). The ALJ’s authority to issue and amend a protective order further includes
`
`specifying how confidential information may be disclosed. 19 C.F.R. § 210.34(a)(7). In prior
`
`investigations, ALJs have authorized amendments to protective orders to allow the use of
`
`confidential information from an ITC investigation in a different forum involving the same patents.
`
`See Certain Two-Way Global Satellite Communication Devices, Inv. No. 337-TA-854
`
`(Enforcement Proceeding), Order No. 23 at 6-7 (Nov. 7, 2013) (granting in relevant part motion
`
`to amend protective order to permit discovery obtained in the investigation to be used in a co-
`
`pending district court matter); Certain Wireless Devices with 3G and/or 4G Capabilities, Inv. No.
`
`337-TA-868, Order No. 46 at 2 (July 24, 2013) (granting joint motion to amend protective order).
`
`IV. THE PROTECTIVE ORDER SHOULD BE AMENDED TO PERMIT
`USE OF A LIMITED SET OF EVIDENCE
`
`Good cause exists to amend the Protective Order in the manner Masimo requests. The
`
`proposed amendments will protect the public interest by permitting the PTAB to review the full
`
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`
`
`record regarding nonobviousness developed in this Investigation and will protect the parties from
`
`undue burden and expense by minimizing the duplication of discovery.
`
`Objective indicia of nonobviousness, also known as secondary considerations, is one of the
`
`four Graham factors relevant to obviousness. Graham v. John Deere Co. of Kansas City, 383 U.S.
`
`1, 17-18 (1966). The Federal Circuit has explained that objective indicia of nonobviousness “must
`
`always when present be considered en route to a determination of obviousness.” Transocean
`
`Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
`
`2012) (citation omitted). “A determination of whether a patent claim is invalid as obvious under
`
`§ 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of
`
`obviousness until all those factors are considered.” Apple v. Samsung Elecs. Co., 839 F.3d 1034,
`
`1048 (Fed. Cir. 2016) (en banc) (citations omitted).
`
`Because Masimo has already developed evidence and arguments regarding objective
`
`indicia in this forum, the PTAB should be permitted to consider the same evidence and arguments.
`
`The PTAB has previously faulted IPR petitioners who failed to address known evidence of
`
`objective indicia previously developed at a trial. See Robert Bosch Tool Corp. v. SD3, LLC,
`
`IPR2016-01751, Paper 15 (P.T.A.B. Mar. 22, 2017) (denying institution of IPR where petitioner
`
`failed to address known secondary considerations evidence that was fully developed in an ITC
`
`investigation involving the same parties); Stryker Corp. v. KFX Medical, LLC, IPR2019-00817,
`
`Paper No. 10 (P.T.A.B. Sept. 16, 2019) (denying IPR institution where petitioner failed to address
`
`known secondary considerations evidence that was fully developed in a previous litigation).
`
`Because the PTAB is obligated to consider all evidence of nonobviousness before making a
`
`validity determination, amending the Protective Order to permit this evidence to be used in the
`
`IPRs would protect the public interest in ensuring fair dispositions of patent rights.
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`
`
`A. Masimo Would Be Prejudiced Without the Proposed Amendments
`
`Apple is attempting to hide information from the PTAB that was fully briefed in rebuttals
`
`to Apple’s invalidity arguments. Faced with strong evidence of nonobviousness in this
`
`Investigation, Apple omitted all reference to those arguments and evidence in its IPRs. See
`
`generally Exs. 1-8. And now Apple is objecting to Masimo’s request to submit that evidence to
`
`the USPTO. 2 Such attempts to thwart full consideration of the relevant evidence should not be
`
`tolerated.
`
`Without the proposed amendments, Masimo would be limited to making arguments based
`
`solely on the public record. For example, while Masimo would be able to reference
`
`characterizations of evidence in the public versions of its post-hearing briefing, Masimo would not
`
`be able to introduce compelling underlying contemporaneous documents from Apple or hearing
`
`testimony that Apple maintains secret from the PTAB. It would be unfairly prejudicial to allow
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`Apple to delay filing IPR petitions until after the full ITC record was developed, and then hide that
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`evidence from the PTAB. Apple should have itself provided candid disclosure to the PTAB
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`regarding this evidence and made its arguments. Thus, allowing Masimo to present this evidence
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`constitutes good cause for amendment.
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`Additionally, the Protective Order should be amended because discovery in IPR
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`proceedings into objective indicia is not guaranteed. The PTAB permits discovery into topics
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`identified in IPR initial disclosures, but such discovery takes place after institution of trial and
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`requires the agreement of the parties on the information to be identified in the initial disclosures.
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`See 37 C.F.R. § 42.51(a). Apple has already indicated that it will object to Masimo’s use of Apple
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`
`2 Apple has previously tried to block Masimo from relying on evidence obtained in the district
`court case in this Investigation. Masimo was only able to rely on several documents for objective
`indicia after obtaining a court order from the California District Court allowing use of 18 Apple
`documents in the ITC investigation. Masimo Post-Hearing Br. (Public Version) at 165 n.12.
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`CBI relating to objective indicia in the IPRs, rendering any agreement by Apple on initial
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`disclosures unlikely. Moreover, Masimo should be allowed to provide this evidence in its patent
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`owner preliminary responses, particularly given Apple’s conscious decision to hide the evidence
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`from the PTAB. Discovery after institution of the IPRs would be too late.
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`The PTAB also permits parties to move for “additional discovery” that can include
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`discovery into objective indicia of nonobviousness. 37 C.F.R. § 42.51(b)(2). Masimo intends to
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`seek such relief from the PTAB. However, such relief is not automatically granted. The PTAB
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`has previously suggested that where the patent owner knows of secondary considerations evidence
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`developed in a previous trial, the patent owner should seek the prior court’s approval to use such
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`evidence in the IPR. Atlas Copco Tools & Assembly Sys., LLC v. Wildcat Licensing WI LLC,
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`IPR2020-00891, Paper No. 37 at 15 (P.T.A.B. Mar. 18, 2021) (denying additional discovery where
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`patent owner could have “us[ed] the district court’s protective order to ask the district court to use
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`the documents requested in the motions and enter only those documents in these proceedings that
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`tend to show nexus, commercial success, and copying.”). Thus, it is appropriate to modify the
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`Protective Order to permit use of evidence of nonobviousness in the IPRs.
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`B.
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`Apple Would Suffer No Prejudice from the Proposed Amendments
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`Despite its objection, Apple has identified no prejudice that would result from Masimo’s
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`use of Apple CBI in the IPRs to demonstrate objective indicia of nonobviousness and nexus. Nor
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`could it. The evidence is Apple’s own contemporaneous documents and witness testimony. Apple
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`can set forth its arguments on these documents, but should not be allowed to hide their existence
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`and content from the PTAB. Beyond simply stating that the information was designated as
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`confidential and should not be used in other proceedings, Apple identified no substantive basis
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`for its objection. But Apple previously requested that the ITC hearing transcript and deposition
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`transcripts, along with their accompanying exhibits, can be used for any purpose in the pending
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`district court case between the parties. Ex. 18 at 1-2.
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`Apple unilaterally chose to relitigate validity at the PTAB, delaying this challenge until
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`after post-hearing briefing. Because Apple chose the PTAB as its forum to try to get a second bite
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`at these issues, it cannot credibly claim any prejudice from Masimo’s use of Apple’s own evidence
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`and arguments from this proceeding. Rather, Apple’s selective shielding of its CBI from the
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`PTAB, but not from the District Court, confirms that Apple is hoping to present an invalidity
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`challenge to the PTAB that is based on hiding the ball from the PTAB.
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`Apple also cannot credibly assert any prejudice from the use of such evidence in the IPRs
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`because Apple was also obligated to provide such evidence to the PTAB and to Masimo. Pursuant
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`to 37 C.F.R. §§ 42.11, 11.18(b)(1), and 42.51(b)(1)(iii), Apple owes a duty of candor to the PTAB.
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`The PTAB rules provide that “a party must serve relevant information that is inconsistent with a
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`position advanced by the party during the proceeding concurrent with the filing of the documents
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`or things that contains the inconsistency.” 37 C.F.R. § 42.51(b)(1)(iii). Here, Apple possesses
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`evidence from this Investigation that has been fully briefed as showing nonobviousness, including
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`industry skepticism, unexpected results, copying, and commercial success, and Apple’s possession
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`of this evidence is apparent from the public record. This evidence is inconsistent with Apple’s
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`IPR position that the patents are invalid. Indeed, the PTAB has previously relied on Rule
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`42.51(b)(1)(iii) to order a petitioner to produce evidence from a co-pending litigation that tended
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`to show objective indicia of nonobviousness. Becton, Dickinson & Co. v. B. Braun Melsungen
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`AG, IPR2017-01586, Paper No. 20 at 2-5 (P.T.A.B. Feb. 28, 2018). Notably, the WilmerHale firm
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`represented Apple in this Investigation and also represented the petitioner in that proceeding,
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`arguing it should not have to provide the information to the PTAB. It was ordered to produce the
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`evidence. Apple would not suffer any prejudice from producing documents it should have
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`disclosed to the USPTO in the first place.
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`Additionally, to the extent Apple claims it is concerned about the confidentiality of its
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`information, the PTAB has its own mechanisms in place to safeguard confidential information.
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`For example, the parties in an IPR proceeding can agree on the entry of a stipulated protective
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`order and file documents under seal. 37 C.F.R. §§ 42.14, 42.54. Upon the conclusion of an IPR,
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`parties may also move to expunge confidential information from the record prior to the information
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`becoming public. 37 C.F.R. § 42.56. The proposed amendments to the Protective Order make
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`clear that any CBI from this Investigation cannot be used in the IPRs before a suitable protective
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`order is issued in the IPRs.
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`C.
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`Third-Party Confidential Information Will Not Be Impacted
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`The ITC has previously declined to allow use of CBI obtained in the ITC investigation in
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`a parallel IPR due to concerns over third-party confidentiality. See, e.g., Certain Composite
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`Aerogel Insulation Materials, No. 337-TA-1003, Order No. 21 (Dec. 19, 2016) (denying motion
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`to amend PO to allow cross-use where IPR where not all respondents in the ITC investigation were
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`involved in the IPR). No such concerns exist here. Masimo is not seeking to use any third-party
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`confidential information obtained in this Investigation in the IPRs. Apple is the only respondent
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`in this Investigation and the only petitioner in the IPRs. The proposed amendments to the
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`Protective Order also clarify that the amendments do not permit the use of information designated
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`by a third party in this Investigation as its confidential business information. Thus, there are no
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`issues with respect to third-party confidentiality in amending the Protective Order.
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`D.
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`The Proposed Amendments Do Not Conflict with the ITC’s Interest in Protecting
`CBI
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`The ITC has previously emphasized its “conservative position on the side of optimum
`
`shielding of business information.” Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1483-
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`84 (Fed. Cir. 1986). In another investigation, the ITC explained its reluctance to release
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`con