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
`
`RESPONDENT APPLE INC.’S OPPOSITION TO
`COMPLAINANTS’ MOTION TO MODIFY PROTECTIVE ORDER
`(MOTION NO. 1276-055)
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`I. 
`INTRODUCTION ................................................................................................................. 1 
`II.  ARGUMENT ......................................................................................................................... 2 
`ITC Precedent Disfavors Waiver of Protective Order Restrictions Over the Objection of
`A. 
`the Submitting Party. ................................................................................................................... 2 
`Complainants Would Not Suffer Any Cognizable Prejudice By Denial Of Their
`B. 
`Request To Remove The Protective Order Restrictions. ............................................................ 8 
`Apple Would Be Prejudiced By The Proposed Removal of the Protective Order
`C. 
`Restriction On Use Outside This Investigation. ........................................................................ 12 
`III.  CONCLUSION .................................................................................................................... 13 
`
`
`
`i
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Akzo N.V. v. U.S. Int’l Trade Comm’n,
`808 F.2d 1471 (Fed. Cir. 1986)..................................................................................................6
`
`Atlas Copco Tools & Assembly Sys., LLC v. Wildcat Licensing WI LLC,
`IPR2020-00891, Paper No. 37 (P.T.A.B. Mar. 18, 2021) .................................................10, 11
`
`Becton, Dickinson and Company v. B. Braun Mulsungen AG, Paper No. 20
`(P.T.A.B. Feb. 28, 2018) ....................................................................................................11, 12
`
`Certain Composite Aerogel Insulation Materials and Methods for Manufacturing
`the Same,
`Inv. No. 337-TA-1003, Order No. 21 (Dec. 19, 2016) ................................................3, 4, 7, 10
`
`Certain DC-DC Controllers & Products Containing the Same,
`Inv. No. 337-TA-698, Order No. 55 (Aug. 17, 2010) ................................................................3
`
`Certain Navigation Prod.,
`Inv. No. 337-TA-900, Order No. 10 (Feb. 18, 2014) ................................................................6
`
`Certain Removable Hard Disk Cartridges & Prod. Containing Same,
`Inv. No. 337-TA-351, Order No. 5 (Aug. 13, 1993)..................................................................3
`
`Certain Transp. Vehicle Tires,
`Inv. No. 337-TA-390, Order No. 15 (Jan. 30, 1997) .................................................................3
`
`Certain Two-Way Global Satellite Communication Devices,
`Inv. No. 337-TA-854, Order No. 23 (Nov. 7, 2013) ..................................................................4
`
`Douglas Dynamics, L.L.C. v. Meyer Prod. LLC,
`No. IPR2015-01839, 2016 WL 8969239 (P.T.A.B. July 26, 2016) ..........................................8
`
`ZUP, LLC v. Nash Mfg., Inc.,
`896 F.3d 1365 (Fed. Cir. 2018)..........................................................................................11, 12
`
`Statutes and Regulations
`
`19 C.F.R. § 210.5(b) ........................................................................................................................3
`
`19 C.F.R. § 210.5(c).........................................................................................................................8
`
`19 C.F.R. § 210.34(a).......................................................................................................................5
`
`19 C.F.R. § 210.34(a)(7) ..................................................................................................................6
`
`
`
`ii
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`37 C.F.R. § 42.51(a).........................................................................................................................9
`37 CAR. § 42.51 (a)ccccccssccssssseccssccessssssessecessssssececcersssusecseceesssnsesseeessnsusecseceesssnsessecersssnsesseeersnsnsesseeet 9
`
`37 C.F.R. § 42.51(b) ........................................................................................................................9
`37 CAR. § 42.51(D) coccesecssssssssssssssssesessesesssssssssseseessssessesssssesesessesessssssnunsesesssessessssssnsetsssseesensesssneeees 9
`
`37 C.F.R. § 42.51(b)(1)(iii) ............................................................................................................11
`37 CAFR. § 42.51 (b)(1)(fii) ...cscssssssssesscccssssssssssesessssessssssssssnsessesesseessssssnsesessessessssssnsesessssesenssusseeees 11
`
`37 C.F.R. § 42.51(b)(2) ..................................................................................................................10
`37 CAFR. § 42.51 (b)(Q)scesscscssssssssssessesscssssssssssnsesssssssssssssssnsesseseecesssssssnsesssseseessssssneesesssseeenesneneeses 10
`
`37 C.F.R. § 42.120 .........................................................................................................................12
`37 CAR. § 42.120 vocccecececsccsssssssssssesesessesessssssssesessseesssssssnsnseeseseesessesssnsesssseserssssunsesesseeesesssasneeses 12
`
`19 U.S.C. § 1337 ..............................................................................................................................2
`19 U.S.C. § 1337 sccecsesessssscsssssssssnscsesssssssssssssnseeesessesssssssnsetsessesesesssssnsesessessessssnsnsetsssseseessssnanseeeeseee2
`
`28 U.S.C. § 1659 ..............................................................................................................................8
`28 U.S.C. § 1659 .cccscsssesssssscsssssssssssseessessssesssssnsesseseseessesssnsesessssseessssssnsnssessseessssssssnsetsseeeeeesesssneeees 8
`
`35 U.S.C. § 315(b) ...........................................................................................................................8
`35 U.S.C. § 315(b) ccscscsecsssscssssssssssssesessscsssssssssnsesscssessesssssssssnsesssesesesssssnsessssessessssnnseessesensessuneeees 8
`
`35 U.S.C. § 315(e)(2) .......................................................................................................................8
`35 U.S.C. § 315(6)(2)eesecesssscssssssssssssesessesessssssssssesecsssseessessssssuseesssssesssssssnsessseeseesessnnseeessesessnsssneeees 8
`
`
`
`
`
`
`
`iii
`iii
`
`MASIMO2013
`Apple v. Masimo
`IPR2022-01466
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Complainants unjustifiably seek to modify the Protective Order (Order No. 1) entered at
`
`the outset of this Investigation to allow the use of broad categories of Apple’s Confidential
`
`Business Information (CBI) in eight separate inter partes review (IPR) proceedings before the
`
`Patent and Trial and Appeal Board (PTAB). Motion at 1. Apple produced the subject CBI in this
`
`Investigation, including closely-guarded commercial and technical product information, in
`
`reliance on the terms of the Protective Order, including the critical requirement that such
`
`information be used “solely for purposes of this investigation.” Order No. 1, ¶ 4 (DocID 749877).
`
`Complainants present no good cause to remove those protections. Changing the terms of the
`
`Protective Order after Apple has relied on those protections in submitting its CBI in this
`
`Investigation is inherently prejudicial. As Complainants acknowledge, the PTAB has established
`
`procedures and requirements governing discovery in IPR proceedings. Complainants’ request to
`
`sidestep those established procedures would prejudice Apple and undermine the public’s
`
`confidence in the Commission’s enforcement of its protective orders safeguarding sensitive
`
`commercial and technical information.
`
`Complainants ground their motion on a series of unfounded assumptions and outright
`
`misrepresentations. Complainants assert that “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” and that “Apple cannot reconcile its contrary position here.”
`
`Mem.at 3 (citing Ex. 18). In fact, it was Complainants that made this request, not Apple. See
`
`Motion Ex. 18 (6/2/22 Email from Mr. Kachner [Masimo’s counsel] to Ms. Passamaneck [Apple’s
`
`counsel] (“As I explained on our call, our intention when we made the request was that the
`
`transcripts be available for impeachment. But based on our discussion and the examples you
`
`offered as other potential ’uses’ (such as citing a transcript as affirmative evidence in this case),
`1
`
`
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`we do not see any reason why these transcripts would not be available for any purpose in this
`
`district court litigation.”)) (emphasis added). In any event, the Protective Order expressly
`
`contemplates that a party retains control over access to its own CBI, and may agree, in writing, to
`
`the disclosure of its CBI to other persons or its use in other proceedings. Order No. 1, ¶¶ 3, 5. A
`
`party’s agreement to the use of its CBI in specific circumstances, including use in another
`
`proceeding subject to approved terms and conditions, does not operate as a waiver for the use of
`
`its CBI in proceedings outside of any agreed-upon protections.
`
`Throughout their motion, Complainants predicate their arguments in support of waiving
`
`the restrictions of the Protective Order on the correctness of their ultimate assertion on secondary
`
`considerations: that the subject CBI materials in fact constitute evidence of “objective indicia of
`
`nonobviousness.” See, e.g., Mem.at 3. Apple disagrees with Complainants’ characterization of
`
`the record developed in this Investigation and disputes their suggestion that any of the subject CBI
`
`constitutes “relevant evidence” that Apple was under an obligation to submit to the PTAB with its
`
`IPR petitions. Id. at 7.
`
`Complainants do not satisfy the high bar of “good cause” required for the requested
`
`modification to waive the standard restrictions of the Protective Order on use of CBI for any
`
`purpose outside this Investigation. For these reasons and others set forth below, Apple requests
`
`the ALJ deny Complainants’ motion.
`
`II.
`
`ARGUMENT
`A.
`
`ITC Precedent Disfavors Waiver of Protective Order Restrictions Over the
`Objection of the Submitting Party.
`
`The protection of a party’s Confidential Business Information from disclosure without the
`
`consent of the supplier is codified in both the statute and the Commission’s regulations. 19 U.S.C.
`
`§ 1337(n): 19 C.F.R. § 210.5(b). The ITC’s long-standing practice under section 337 has been to
`
`
`
`2
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`issue a protective order at the commencement of each investigation. Under the standard form of
`
`protective order, as in this Investigation, signatories to the order must commit in writing “to utilize
`
`such confidential business information solely for purposes of this investigation.” Order No. 1, ¶
`
`4. These protections constitute an essential element in the conduct of section 337 investigations.
`
`“Protection of confidential information is crucial to the Commission’s ability to carry out its
`
`statutory responsibilities. …” Certain DC-DC Controllers & Prods. Containing the Same, Inv.
`
`No. 337-TA-698, Order No. 55 at 14 (Aug. 17, 2010) (DocID 434811). “Every person who obtains
`
`confidential business information by agreeing to comply with the Protective Order is expected to
`
`conform to a high duty of care and treat that information with the utmost caution.” Certain Transp.
`
`Vehicle Tires, Inv. No. 337-TA-390, Order No. 15 at 6-7 (Jan. 30, 1997) (DocID 164782).
`
`The ITC routinely denies requests to modify a protective order to allow use of CBI in other
`
`cases without the consent of the supplier, whether the supplier is the respondent or the complainant.
`
`Certain Removable Hard Disk Cartridges & Prod. Containing Same, Inv. No. 337-TA-351, Order
`
`No. 5 (Aug. 13, 1993) (in absence of complainant’s agreement, denying respondent’s motion to
`
`modify protective order to allow use of CBI in other litigation); Certain Vehicle Security Systems
`
`and Components Thereof, Inv. No. 337-TA-355, Order No. 5, 1993 WL852857 (Oct. 26, 1993)
`
`(in absence of respondent’s agreement, denying complainant’s motion to modify protective order
`
`to allow use of CBI in other litigation). See also Certain Composite Aerogel Insulation Materials
`
`and Methods for Manufacturing the Same, Inv. No. 337-TA-1003, Order No. 21 at 4-7 (Dec. 19,
`
`2016) (DocID 598456) (denying motion to modify protective order to allow use of respondents’
`
`discovery materials in co-pending IPR proceedings, citing respondents’ lack of consent, lack of
`
`similar protections under default PTAB protective orders, and deference to PTAB to decide the
`
`
`
`3
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`scope of discovery available in IPR proceedings).1 The cases cited by Complainants as authority
`
`for amending a protective order to allow use of CBI in another forum (Mem. at 5) are consistent
`
`with this principle: in each case, each of the affected supplying parties agreed to the amendment.
`
`In Certain Two-Way Global Satellite Communication Devices, Inv. No. 337-TA-854
`
`(Enforcement Proceeding), Order No. 23 (Nov. 7, 2013) (DocID 521621), the ALJ granted
`
`modification of the protective order where the complainant and respondents agreed that ITC
`
`discovery materials should be usable in the co-pending district court proceeding; respondents only
`
`disagreed that district court material could be cross-used in the ITC investigation. See id., Order
`
`No. 23 at 1, 4 (complainant BriarTek moving to permit “cross-use of discovery in this Investigation
`
`in the co-pending district court proceeding” but respondent DeLorme arguing that “cross-use of
`
`material from the district court action has never been broached, let alone approved”); Certain Two
`
`Way Global Satellite Communication Devices, Inv. No. 337-TA-854 (Enforcement Proceeding),
`
`Inv. No. 337-TA-854 (Enforcement Proceeding), Order No. 12 (Aug. 21, 2013) (DocID 516725)
`
`(respondent DeLorme earlier moving to “amend the protective orders to permit the use of
`
`discovery from the … Investigation in a currently pending … District Court case” but the ALJ
`
`ruling that respondents’ proposal did not adequately safe-guard third-party rights); Certain Two
`
`Way Global Satellite Communication Devices, Inv. No. 337-TA-854 (Enforcement Proceeding),
`
`Inv. No. 337-TA-854 (Enforcement Proceeding), Order No. 15 (Sept. 24, 2013) (DocID 519032)
`
`
`1 Complainants mischaracterize the decision in Composite Aerogel Insulation Materials as based
`on the grounds that “not all” the objecting ITC respondents were parties to the IPR proceedings.
`Memo. at 10. While the ALJ noted the additional burdens that would be placed on the
`respondent who was not also a party to the IPR proceedings, the decision rested on multiple
`grounds, and denied the motion as to all objecting respondents. Inv. No. 337-TA-1003, Order
`No. 21 at 5, 7
`
`
`
`4
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`(same). Certain Two-Way Global has no applicability here because Apple does not agree that ITC
`
`discovery materials may be used in the parallel IPR proceedings.
`
`Similarly, in Certain Wireless Devices with 3G and/or 4G Capabilities, Inv. No. 337-TA-
`
`868, Order No. 46 at 2 (July 24, 2013), the ALJ granted a joint motion to amend the protective
`
`order to permit use of discovery from the investigation in co-pending district court actions.
`
`While Complainants acknowledge that they must demonstrate “good cause” to justify the
`
`requested modification of the protective order, Mem. at 5 (citing 19 C.F.R. § 210.34(a)), they
`
`otherwise rely on a reading that turns the rule upside-down. Commission Rule 210.34(a) provides
`
`for issuance of a protective order where necessary to protect a party against whom discovery is
`
`sought:
`
`(a) Issuance of protective order. Upon motion by a party or by the person from
`whom discovery is sought or by the administrative law judge on his own initiative,
`and for good cause shown, the administrative law judge may 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, including one or more of the following …
`
`19 C.F.R. § 210.34(a). There is no indication, as Complainants would have it (Mem.at 5-6), that
`
`issuance of a protective order “for the protection of the public interest” was intended to authorize
`
`removal of CBI restrictions, at the request of the party seeking discovery, to protect the alleged
`
`“public interest” in “permitting” the PTAB to review the “full record” regarding obviousness
`
`developed in this Investigation, where development of such a record would be in derogation of the
`
`PTAB’s own procedures governing discovery. Likewise, there is no indication that issuance of a
`
`protective order “to protect a party [from whom discovery is sought] from … undue burden or
`
`expense” was intended to authorize removal of CBI restrictions, at the request of the party seeking
`
`discovery, to ease the usual discovery burdens of the requesting party in another forum. Mem. at
`
`5-6. Nor do Complainants show the unspecified “undue burden” associated with the alleged
`
`
`
`5
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`discovery effort required before the PTAB, which they acknowledge would be premature at this,
`
`pre-institution stage of the proceedings. Mem. at 6-7. The ITC also does not find “good cause”
`
`where the justification is simply the convenience of the movant. See Certain Navigation Prod.,
`
`Inv. No. 337-TA-900, Order No. 10 (Feb. 18, 2014) (finding good cause to amend the protective
`
`order to include additional restrictions on the disclosure and use of source code, but not finding
`
`good cause to amend inadvertent disclosure procedures for ease of parties despite the joint motion
`
`for amendment).
`
`Complainants similarly assert that “[t]he ALJ’s authority to issue and amend a protective
`
`order further includes specifying how confidential information may be disclosed.” Mem. at 5
`
`(citing 19 C.F.R. § 210.34(a)(7)). That subparagraph provides:
`
`(7) That a trade secret or other confidential research, development, or commercial
`information not be disclosed or be disclosed only in a designated way; . . .
`
`19 C.F.R. § 210.34(a)(7) (emphasis added). Again, Complainants turn the regulation on its head,
`
`citing the provision to justify removal of CBI restrictions, whereas it plainly contemplates placing
`
`additional restrictions on disclosure of CBI, such as the special restrictions frequently placed on
`
`disclosure of highly-confidential source code, as in this Investigation. See Order No. 13, Granting
`
`Joint Motion To Amend The Protective Order To Add Provisions Regarding Production And
`
`Review Of Source Code (Jan. 10, 2022) (DocID 760100).
`
`As Complainants acknowledge, the Federal Circuit has recognized and upheld the ITC’s
`
`“conservative position on the side of optimum shielding of business information.” Mem. at 11
`
`(quoting Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1483-84 (Fed. Cir. 1986)). As the
`
`Federal Circuit explained, “[d]isclosure of sensitive materials to an adversary would undoubtedly
`
`have a chilling effect on the parties’ willingness to provide the confidential information essential
`
`to the Commission’s factfinding processes.” 808 F.2d at 1483. Complainants nonetheless assert
`
`
`
`6
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`that the Federal Circuit’s and the ITC’s concerns with the “optimum shielding of business
`
`information” can be set aside because, under their proposed amendments to the Protective Order,
`
`“Apple’s CBI would remain subject to the confidentiality requirements of the Protective Order in
`
`this Investigation.” Mem. at 11. That bland assurance rings hollow. First, by their express terms,
`
`the proposed amendments would derogate from the standard restriction against use of CBI for
`
`purposes other than this Investigation. Second, as Complainants acknowledge (Mem. at 10), there
`
`are no protective orders in place in the IPR proceedings, and Apple is provided no assurance that
`
`the terms of any such protective orders will provide protections equivalent to those in the ITC.
`
`Third, as noted in Composite Aerogel Insulation Materials, Inv. No. 337-TA-1003, Order No. 21
`
`at 6, the default protective order in IPR proceedings does not provide protections comparable to
`
`an ITC protective order, and “the PTAB has made it clear that information submitted during an
`
`IPR proceeding is expected to be made public.” Fourth, Complainants do not explain in practical
`
`terms how CBI, once submitted for use in the IPR proceedings, could “remain subject to the
`
`confidentiality requirements of the Protective Order in this Investigation.” Will Complainants’
`
`counsel in the IPR proceedings file individual PO acknowledgments in the ITC before being given
`
`access to the CBI? Will Complainants’ experts in the IPR proceedings be required to be disclosed
`
`pursuant to the provisions of the ITC Protective Order? If this Investigation terminates while the
`
`IPR proceedings are ongoing, will Complainants be required to retrieve and destroy any CBI that
`
`has been presented to the PTAB? These questions remain unanswered; there is no mechanism in
`
`place at the PTAB to ensure that any of these safeguards will be in force.
`
`Parallel proceedings in the ITC and in the district courts or IPR proceedings before the
`
`PTAB are frequent occurrences. Complainants have not identified anything unique about this case
`
`to justify the requested relaxation of the standard restrictions in the Protective Order.
`
`
`
`7
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`B.
`
`Complainants Would Not Suffer Any Cognizable Prejudice By Denial Of
`Their Request To Remove The Protective Order Restrictions.
`
`Complainants’ claims of alleged “prejudice” from enforcement of the standard terms of the
`
`Protective Order issued at the outset of this Investigation are baseless. Mem. at 7-8. Complainants
`
`seek to replicate in the IPR proceedings their arguments and briefing on obviousness in the ITC
`
`without acknowledging the different procedures and standards employed by each forum. In
`
`authorizing IPR proceedings, Congress intended to establish streamlined and efficient
`
`administrative proceedings and avoid the expansive, open-ended discovery available in district
`
`court (or ITC) litigation. Douglas Dynamics, L.L.C. v. Meyer Prod. LLC, No. IPR2015-01839,
`
`2016 WL 8969239, at *1 (P.T.A.B. July 26, 2016). Congress also foresaw potential overlap of
`
`issues in IPRs and ITC proceedings, and included provisions restricting parties from asserting in
`
`the ITC the same grounds of invalidity previously decided in an IPR final written decision, see 35
`
`U.S.C. § 315(e)(2). But Congress made no provision for transfer of the evidentiary record from
`
`the ITC to the PTAB, unlike the provisions for transfer of the confidential ITC record for use in a
`
`parallel district court action that has been stayed pending completion of the ITC investigation. See
`
`28 U.S.C. § 1659; see also 19 C.F.R. § 210.5(c).
`
`First, Complainants broadly assert that Apple’s filing of the IPR petitions after the ITC
`
`hearing constitutes “delay” that is somehow “unfairly prejudicial” to Complainants. Mem. at 7.
`
`But there is no legally-cognizable delay. There is no time limit from the commencement of an
`
`ITC action within which respondents must file an IPR petition. 35 U.S.C. § 315(b). Complainants
`
`also fail to explain how they are in any worse position with respect to the IPR proceedings than if
`
`Apple had filed its petitions a year ago, and before any of the alleged “relevant evidence” was
`
`produced in the ITC discovery.
`
`
`
`8
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`Second, Complainants can make all their arguments on secondary considerations in the
`
`IPR proceedings using their own confidential information and any non-confidential information
`
`they have developed. To the extent any such evidence exists, Complainants may present to the
`
`PTAB evidence of “skepticism and unexpected results for the claimed convex protrusions in the
`
`Multi-Detector Patents (’501, ’502, and ’648 Patents),” and “industry skepticism of measuring
`
`oxygen saturation at the wrist.” Mem. at 4. Complainants may also present any evidence they
`
`might have of the asserted commercial success of their own products that allegedly practice the
`
`patents at issue. As Complainants acknowledge, “much of Masimo’s arguments and
`
`characterization of evidence are now public,” and only “some” of the underlying exhibits remain
`
`confidential. Mem. at 4.
`
`Complainants also seek authority to use other categories of Apple CBI from this proceeding
`
`that Apple has already demonstrated on the public record are irrelevant. See Apple’s Post-Hearing
`
`Reply Brief at 6-9 (July 11, 2022) (DocID 775073). Examples include Apple’s alleged “copying”
`
`(Mem. at 4), which Apple has demonstrated on numerous occasions is not relevant to objective
`
`indicia, as Complainants do not purport to tie any alleged domestic industry product or Asserted
`
`Patent to development of Apple Watch as would be required to show copying. Furthermore, Apple
`
`has presented unrefuted testimony that Apple’s Blood Oxygen feature is based on Apple’s own
`
`ingenuity and hard work. Apple’s Post-Hearing Reply Brief at 6-9. Complainants seek to use the
`
`commercial success of the Series 6 and Series 7 based on the Blood Oxygen feature; however,
`
`Complainants’ commercial success expert provided no evidence of nexus. Id. at 71. Evidence of
`
`the commercial success of Series 6 and Series 7 is therefore also irrelevant.
`
`Third, as Complainants also acknowledge, the PTAB has established procedures and
`
`standards in place for the conduct of discovery appropriate to the IPR proceedings. Mem. at 7-8;
`
`9
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`see also 37 C.F.R. § 42.51(a), (b). Complainants claim “prejudice” because, they assert, the PTAB
`
`procedures are inadequate as they either “require[] the agreement of the parties” (Mem. at 7) or
`
`are “not automatically granted.” Mem. at 8. Such complaints are both misplaced, as they are more
`
`appropriately addressed to the PTAB, and premature, as the IPR proceedings are only at the pre-
`
`institution stage and have not reached the discovery phase.
`
`Bizarrely, Complainants argue that the remedy to the assertedly inadequate procedures
`
`available in the IPR proceedings is for the ITC to authorize an end-run around the other agency’s
`
`established procedures. Mem. at 8. To the contrary, the PTAB should follow its established
`
`procedures and standards for allowing discovery and determine itself if such discovery would be
`
`appropriate to its determination. Complainants’ disagreement with the PTAB’s “interests of
`
`justice” standard for allowing discovery does not justify removing the ITC’s CBI protections. As
`
`the ALJ stated in Composite Aerogel Insulation Materials:
`
`Additionally, the Leahy-Smith America Invents Act (“AIA”) defines the scope of
`discovery available in IPR proceedings. See, e.g., Garmin Int’l, Inc. v. Cuozzo
`Speed Techs. LLC, 2013 WL 8149380, at *1 (Patent Tr. & App. Bd. Feb. l4, 2013).
`Complainant should therefore seek discovery from Respondent Nano in the IPR
`proceedings, and the PTAB should decide whether the scope of discovery available
`in IPR proceedings encompasses CBI belonging to a third party, such as
`Respondent Nano.
`
`Composite Aerogel Insulation Materials, Inv. No. 337-TA-1003, Order No. 21 at 6-7.
`
`Complainants’ reliance on the PTAB’s decision in Atlas Copco Tools (Mem. at 8) is
`
`misplaced. Atlas Copco Tools simply illustrates that Complainants should pursue any relevant
`
`discovery through an established mechanism in the PTAB, and that tribunal should be permitted
`
`to act as its own gatekeeper for additional discovery. See Atlas Copco Tools & Assembly Sys.,
`
`LLC v. Wildcat Licensing WI LLC, IPR2020-00891, Paper No. 37 at 2-3, 8 (P.T.A.B. Mar. 18,
`
`2021) (“Atlas Copco Tools”) (denying motion for additional discovery under 37 C.F.R. §
`
`42.51(b)(2) and the Garmin factors, and finding that patent owner failed to “support a showing of
`10
`
`
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`the required nexus” in its motion). Moreover, Atlas Copco Tools did not suggest that other
`
`tribunals should permit protected discovery to be used in the PTAB. Instead, the panel merely
`
`found that the patent owner had not shown it had exhausted avenues to “generate equivalent
`
`information by other means” under Garmin factor 3—such as by asking a district court to use
`
`specific, identified documents. Id. at 3, 15. Thus, by denying Complainants’ instant motion, the
`
`ALJ will set the table for the PTAB to consider the substantive merit of Complainants’ request for
`
`discovery and make its own determination about whether the discovery should be injected into its
`
`proceedings.
`
`Complainants’ argument that Apple was somehow “obligated” to present purported
`
`evidence of secondary considerations is equally meritless. The Federal Circuit has held the
`
`opposite: “[A] patentee bears the burden of production with respect to evidence of secondary
`
`considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir.
`
`2018). Complainants’ reliance on 37 C.F.R. § 42.51(b)(1)(iii) (Mem. at 9) is similarly misplaced,
`
`because Complainants fail to identify any inconsistency with any factual position Apple has taken
`
`in the IPRs; moreover, Apple disagrees with Complainants’ argument that the evidence they cited
`
`are indicia of nonobviousness. See, e.g., Apple’s Post-Hearing Reply Brief at 66-72, 109-110.
`
`The Becton, Dickinson PTAB decision relied on Complainants (Mem. at 9) is inapplicable for
`
`numerous reasons, including because: (1) Complainants have not moved to compel discovery in
`
`the PTAB or identify a discrete number of documents, as the patentee did in Becton, Dickinson;
`
`(2) the co-pending litigation was held in district court, and not subject to an ITC protective order;
`
`(3) the PTAB specifically stated that it did not authorize the parties “to ignore or set aside any
`
`obligation imposed by a protective order” in the litigation; and (4) Complainants did not identify
`
`any inconsistencies between the declaration of Apple’s IPR expert (who Complainants concede
`
`
`
`11
`
`MASIMO 2013
`Apple v. Masimo
`IPR2022-01466
`
`

`

`
`
`did not participate in the ITC, Mem. at 2) and any testimony or documents in the ITC, which was
`
`the basis for the PTAB panel’s holding. See Becton, Dickinson and Company v. B. Braun
`
`Mulsungen AG, Paper No. 20 at 2, 4-5 (P.T.A.B. Feb. 28, 2018) (citing Ultratec, Inc. v.
`
`CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse
`
`to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would
`
`likely bear on the overall credibility of the expert.”). Becton, Dickinson simply reinforces that the
`
`appropriate arbiter of Complainants’ dispute is the PTAB, and the ALJ should not diminish the
`
`protective order in this investigation at one party’s unilateral request.
`
`Complainants also claim purported “prejudice” from Apple’s alleged “omission” in not
`
`presenting Complainants’ own arguments of nonobviousness to the PTAB. Mem. at 7. Apple
`
`abides by its duty of candor to the PTAB, but such a duty does not obligate it to present evidence
`
`on which it does not bear the burden of production and which Complainants are permitted include
`
`in their response. See ZUP, LLC, 896 F.3d at 1373; 37 C.F.R. § 42.120. Subject to the page limits
`
`for IPR petitions, Apple met its initial burden by providing evidence of obviousness of the
`
`challenged patent claims. Apple may respond at the