Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 1 of 14 Page ID
`#:14551
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`REDACTED CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 NS(JDEx)
`
`Date Sept. 16, 2020
`
`Title
`
`Masimo Corporation et al. v. Apple Inc.
`
`Present: The
`Honorable
`
`James V. Selna, U.S. District Court Judge
`
`Lisa Bredahl
`Deputy Clerk
`
`Not Present
`Comi Repo1ier
`
`Attorneys Present for Plaintiffs:
`
`Attorneys Present for Defendants:
`
`Not Present
`
`Not Present
`
`Proceedings:
`
`[IN CHAMBERS] Order Regarding Motion for Preliminary Injunction
`
`Plaintiffs Masimo Corporation and Cercacor Laboratories, Inc., (collectively (cid:173)
`"Plaintiffs") filed a motion for preliminary injunction. Mot., ECF No 116. Defendant
`Apple, Inc. ("Apple") filed an opposition to the motion. Opp 'n, ECF No. 150. Plaintiffs
`filed a reply. Reply, ECF No. 161-1.
`
`For the following reasons, the Court DENIES the motion.
`
`I. BACKGROUND
`
`A.
`
`The Technology at Issue
`
`Plaintiffs are two companies that confidentially collaborate to develop technology
`that is used in medical devices. Mot. at 1-2. Relevant to this litigation is Plaintiffs'
`techniques to noninvasively monitor physiological parameters. Id. To monitor
`physiological parameters without entering the body, Plaintiffs have developed signal
`processing techniques that are able to analyze how the human body absorbs light at
`various frequencies. Diab Deel., ECF No. 119, ,r 4.
`
`One difficulty in measuring how the body absorbs light at multiple frequencies
`occurs when light from those multiple sources first reaches the detector: the detector is
`only able to produce a single digital data stream that describes overall intensity of the
`light detected. Id. at ,r 5. What is needed, however, is a way to parse from this single data
`stream how the body absorbed the light at each of the various frequencies used. Id. To
`extract relevant information about the body' s absorption of light at the different
`CIVIL~flNUTES - GENERAL
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`

`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 2 of 14 Page ID
`#:14552
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 NS(JDEx)
`
`Date Sept. 16, 2020
`
`Title
`
`Masimo Corporation et al. v. Apple Inc.
`
`frequencies used, Masimo uses a technique called modulation and demodulation. Id.
`Modulation is the intentional variation of a wave, in this case light, so that it carries
`information, while demodulation is the process of extracting the relevant information
`carried by the modulated wave. For modulation, Masimo specifically uses a process
`called "time-division multiplexing" that involves turnin on and off different li ht
`sources in a re eatable attem. Id. at 8
`
`B.
`
`Factual Background
`
`For about seven years up to January 2014, Marcelo Lamego ("Lamego") was the
`Chief Technological Officer of Ceracor Laboratories ("Ceracor"). Pl. Ex. 4 at 16. During
`this time, Lamego was intimately involved with the development of Plaintiffs'
`technology. Diab Deel. at ,r 31. He specifically told one Ceracor employee to implement
`the technique described above. Poeze Deel. at ,r 6. In May 2009, Lamego also signed a
`confidentiality agreement that extended to beyond the time when he was employed by
`Ceracor. Pl. Ex. 5 at 23 , a practice that is routine at Plaintiff companies. Kiani Deel., ECF
`No. 118, at ,r 8.
`
`In January 2014, Lamego left Ceracor for Apple, where he worked until June of
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 3 of 14 Page ID
`#:14553
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`that year. Pl. Ex. 4 at 16. That January, Plaintiffs’ counsel sent a letter to Apple notifying
`the company about Lamego’s confidentiality agreement. Pl. Ex. 5. In September 2014,
`Apple filed an application for what became Patent 10,219,754 (“’754 Patent”). Pl. Ex. 14
`at 322. The ’754 Patent listed Lamego as the sole inventor. Id. Apple also requested non-
`publication of the application so that it would not be published until the ’754 Patent was
`issued. Pl. Ex. 13 at 279. The ’754 Patent was issued in March 2019. Pl. Ex. 14 at 322.
`
`Plaintiffs also have filed for two patents particularly relevant here because of their
`connection to the technology described above. One application, for Patent 9,861,305
`(“the ’305 Patent”), was filed in October 2006 with a non-publication request. Def. Ex. C
`at 57. The ’305 Patent was issued in 2018. Id. A second application, for Patent 8,471,713
`(“the ’713 Patent”), was filed in July 2009, and the patent was issued in June 2013. Def.
`Ex. D at 79.
`
`On January 9, 2020, Plaintiffs filed their complaint with this court, alleging a
`variety of causes of action against Apple including trade secret misappropriation under
`the California Uniform Trade Secrets Act, Cal. Civ. Code § 3426 et seq. (“CUTSA”).
`Compl. ECF No. 1. On July 27, Plaintiffs filed an application to submit a second
`amended complaint. SAC, ECF No. 89-1. Specifically, Plaintiffs argue that the ’754
`Patent made public the technique described above, which they argue was a trade secret.
`Mot. at 7. Starting on March 6, Apple has refused at least three times to answer questions
`from Plaintiffs about whether there are currently unpublished patent applications that list
`Plaintiffs’ former employees as inventors and about whether they will allow any such
`patent applications to publish. to Pl. Ex. 7-11.
`
`On August 17, Plaintiffs filed the instant motion for preliminary injunction. Mot.
`Plaintiffs ask the Court to grant the following preliminary injunction:
`
`1. Apple shall take all necessary steps to prevent publication of any Apple patent,
`patent application, document, or other presentation of information that: (a)
`Concerns measurement or tracking of health-related or physiological information;
`and (b) Names as an inventor or author one or more of Plaintiffs’ former
`employees; Until, 2. Apple provides Plaintiffs with a copy of the patent, patent
`application, document, or other presentation of information on a confidential basis
`and either: (a) Plaintiffs do not seek injunctive relief within 60 days of receiving
`3
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 4 of 14 Page ID
`#:14554
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`the information from Apple; or (b) Plaintiffs seek injunctive relief and the Court
`denies such relief.
`
`Prop. Order, ECF No. 110-1, at 1.
`
`II. LEGAL STANDARD
`
`On an application for a preliminary injunction, the plaintiff has the burden to
`establish that (1) he is likely to succeed on the merits, (2) he is likely to suffer irreparable
`harm if the preliminary relief is not granted, (3) the balance of equities favors the
`plaintiff, and (4) the injunction is in the public interest. Winter v. Natural Res. Def.
`------ ---- ----
`Council, Inc., 555 U.S. 5, 20 (2008).
`
`In the Ninth Circuit, the Winter factors may be evaluated on a sliding scale:
`“serious questions going to the merits, and a balance of hardships that tips sharply toward
`the plaintiff can support issuance of a preliminary injunction, so long as the plaintiff also
`shows that there is a likelihood of irreparable injury and that the injunction is in the
`public interest.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1134-35 (9th
`------ -- -- ---- -------
`Cir. 2011).
`
`Moreover, in the Ninth Circuit, the plaintiff may meet this burden if it
`“demonstrates either a combination of probable success on the merits and the possibility
`of irreparable injury or that serious questions are raised and the balance of hardships tips
`sharply in his favor.” Johnson v. California State Bd. of Accountancy, 72 F.3d 1427,
`-------- ---- --- -- ----------
`1429 (9th Cir. 1995) (internal quotations and citation omitted). “To reach this sliding
`scale analysis, however, a moving party must, at an ‘irreducible minimum,’ demonstrate
`some chance of success on the merits.” Global Horizons, Inc. v. U.S. Dep’t of Labor, 510
`----- ------- --- - --- ----
`F.3d 1054, 1058 (9th Cir. 2007) (citing Arcamuzi v. Cont’l Air Lines, Inc., 819 F.2d 935,
`937 (9th Cir. 1987)).
`
`III. DISCUSSION
`
`A.
`
`Success on the Merits
`
`CV-90 (06/04)
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 5 of 14 Page ID
`#:14555
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 NS(JDEx)
`
`Date Sept. 16, 2020
`
`Title
`
`Masimo Corporation et al. v. Apple Inc.
`
`To prove a prima facie case of trade secret appropriation, the CUTSA "requires the
`plaintiff to demonstrate: (I) the plaintiff owned a trade secret, (2) the defendant acquired,
`disclosed, or used the plaintiffs trade secret through improper means, and (3) the
`defendant's actions damaged the plaintiff." CytoDyn of New Mexico, Inc. v.
`Amerimmune Pharm., Inc., 160 Cal. App. 4th 288, 297 (Cal. Ct. App. 2008) ( citing
`Sargent Fletcher, Inc. :y_,_ Able Corp., 110 Cal. App. 4th 1658, 1665 (Cal. Ct. App. 2003)).
`See also Cal. Civ. Code§ 3426.1. The Court addresses the first two of these elements in
`turn, and combines the analysis of damage to the plaintiff in its analysis of irreparable
`harm.
`
`1.
`
`The Existence of a Trade Secret
`
`The CUTSA defines a trade secret as:
`
`information, including a formula, pattern, compilation, program, device, method,
`technique, or process, that: (I) Derives independent economic value, actual or
`potential, from not being generally known to the public or to other persons who
`can obtain economic value from its disclosure or use; and (2) Is the subject of
`efforts that are reasonable under the circumstances to maintain its secrecy.
`
`Cal. Civ. Code §3426.l(d). Plaintiffs argue that the technique described above is a trade
`secret that gives Plaintiffs an advantage over competitors by virtue of not being known.
`Mot. at 12 (citing Kiani Deel. at ,r 9). Plaintiffs further argue that they took reasonable
`steps to maintain secrecy, such as requiring that employees sign non-disclosure and
`confidentiality agreements and notifying Apple that Lamego knew trade secrets when
`Apple hired Lamego. Mot. at 13-14 (citing Kiani Deel. at ,r 8, Ex. 5, Ex. 12).
`
`Apple's primary response is that Plaintiffs' technique was not secret, and that each
`step of the process had already been published by Plaintiffs at the time Apple submitted
`the application for its '754 patent. Opp'n at 7. Apple thoroughly analyzes the ten bullet
`points that comprise Plaintiffs' summary of their trade secret and describes how each part
`of the trade secret had also been published in the '713 Patent, the '305 Patent, or both. Id.
`at 8-13.
`
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 6 of 14 Page ID
`#:14556
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 NS(JDEx)
`
`Date Sept. 16, 2020
`
`Title
`
`Masimo Corporation et al. v. Apple Inc.
`
`Plaintiffs argue that the ' 305 Patent cannot be used as evidence that aspects of the
`' 754 Patent were publicly known because Apple filed its application for the '754 Patent
`in 2014 while the ' 305 Patent did not issue until 2018. Compare Ex. 22 at 540 ('754
`Patent Application) with Ex. C at 57 ('305 Patent). The Court finds it to be clear that the
`' 754 Patent application was submitted before the '305 Patent was published and so the
`' 305 Patent cannot be used as evidence that Plaintiffs' claimed trade secret was public
`when Apple filed its own application. The Court therefore concludes that, based on the
`evidence before it, Apple is unlikely to be able to show that aspects of Plaintiffs' claimed
`trade secrets were publicly known where A
`le has relied exclusive! on information in
`the ' 305 Patent. Namel , this a
`lies to
`
`Plaintiffs further focus on how Plaintiffs' two
`
`atents did not describe(cid:127)
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 7 of 14 Page ID
`#:14557
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 NS(JDEx)
`
`Date Sept. 16, 2020
`
`Title
`
`Masimo Corporation et al. v. Apple Inc.
`
`The Court therefore concludes that Plaintiffs are likely to prove that the existence
`of the trade secret that they allege.
`
`2.
`
`The Acquisition, Disclosure or Use of the Trade Secret by Improper
`Means
`
`a.
`
`Acquisition
`
`A defendant misappropriates trade secrets by acquisition if it "knew or had reason
`to know that the trade secret was acquired by improper means," which includes "breach
`or inducement of a breach of a duty to maintain secrecy." Cal. Civ. Code§§ 3426.l(a) &
`(b )(1 ). The core of Plaintiffs' argument that Apple acquired Plaintiffs' trade secrets by
`improper means has two parts. First, Apple should have known that Lamego possessed
`trade secrets and had a duty to maintain secrecy because of a letter Plaintiffs sent to
`Apple alerting the company of Lamego's knowledge and confidentiality agreement and
`because of Apple planning to "dig deep" while meeting with Plaintiffs under a
`confidentiality agreement about Plaintiffs' technology. Mot. at 14-15. Second, Apple
`should have known that the particular information that Apple incorporated into its
`application for the '754 Patent was confidential because of how quickly Lamego
`produced the information after arriving at Apple, their request for non-publication of the
`' 754 Patent application, and their inability to secure Lamego's signature on a declaration
`that he was the true inventor of the '754 Patent. Id.
`
`The Court agrees that Plaintiffs are likely to show that Apple should have known
`that Lamego possessed confidential information and a duty to maintain secrecy. Although
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 8 of 14 Page ID
`#:14558
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`the Court does not believe that merely planning to “dig deep” in a meeting suggests
`anything about Lamego’s personal obligations to maintain secrecy, the confidentiality
`agreement sent to Apple did include a clause stating “[a]fter my employment with
`[Ceracor] has terminated, I will not disclose or make use of any Confidential Information
`for any purpose, either on my own or on behalf of another business.” Ex. 5 at 23.
`Although Apple argues that the letter only seeks to enforce “invalid” clauses, Opp’n at
`14, the above provision in the confidentiality agreement clearly states a duty to maintain
`confidentiality that goes beyond the non-competition and non-solicit clauses that Apple
`focuses on.
`
`The Court further agrees that Plaintiffs are likely to show that Apple should have
`known that the particular information incorporated in the ’754 Patent was confidential.
`Apple provides evidence that Plaintiffs have failed to secure a signed declaration from
`Lamego stating that he was the true inventor of an invention for an application Plaintiffs
`submitted after Lamego left Plaintiff companies. See Ex. I. at 127. The Court therefore
`does not draw any negative inferences from Apple’s failure to secure a similar
`declaration. But the Court does not agree with Apple’s argument that it should not have
`known the information included in the ’754 Patent was confidential because the letter
`sent to Apple about Lamego does not identify the above mentioned process as a trade
`secret. Opp’n at 14. Apple was still on notice that Lamego possessed confidential
`information for which he had a duty to maintain secrecy because of its receipt of
`Lamego’s confidentiality agreement.
`
`Plaintiffs point to two further pieces of evidence suggesting that Apple knew that
`the information in the ’754 Patent could have been confidential information. First,
`Plaintiffs note that Lamego would have had to have generated independently the process
`included in the ’754 Patent within the six months that he worked at Apple within a few
`months of starting at Apple. Reply at 10. Second, they note that Apple requested non-
`publication of the ’754 Patent application, even though Apple did not submit such a
`request for another patent on which Lamego is listed as an inventor. Id. (citing Ex. 27 at
`74). Apple does note that the submission of non-publication requests is common by
`Apple. Lerner Decl., ECF No. 141, ¶ 4 (noting that Apple submitted more than 300 such
`requests in the last six years). But this information, without knowing the full number of
`patent applications Apple submits, does not tell the Court whether submitting non-
`publication requests is in fact the norm for applications. From these pieces of evidence
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 9 of 14 Page ID
`#:14559
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 NS(JDEx)
`
`Date Sept. 16, 2020
`
`Title
`
`Masimo Corporation et al. v. Apple Inc.
`
`combined, the Court concludes that Plaintiffs are likely to show that Apple
`misappropriated Plaintiffs' trade secrets through acquisition.
`
`b.
`
`Disclosure or Use
`
`A defendant misappropriates a trade secret through disclosure or use who (A) uses
`improper means to acquire the knowledge or (B) at the time of disclosure or use knew or
`had reason to know the information was (i) derived from or through a person who had
`used improper means to acquire the information, (ii) acquired while under a duty to
`maintain its secrecy, or (iii) derived from a person who owed a duty to the plaintiff to
`maintain its secrecy. Cal. Civ. Code§ 3426. l(b )(2).
`
`The Court agrees that the Plaintiffs are likely to win on the disclosure or use prong.
`Plaintiffs are likely to show disclosure or use through the publication of the '754 Patent,
`which incorporates the information found above to be Plaintiffs' trade secrets. See su ra
`Section 111.A. l . Plaintiffs have resented evidence showin tha
`
`his amounts to disclosure of Plaintiffs' trade secret.
`
`Next, the Court turns to the two main prongs of misappropriation through
`disclosure or use. Section 3426.1 (b )(2)(A) incorporates improper acquisition, which the
`Court has also found the Plaintiffs are likely to prove. See supra Section 111.A.2.a. Thus,
`finding that Apple disclosed or used Plaintiffs' trade secret and that Apple improperly
`acquired that trade secret is sufficient to find that Plaintiffs are likely to prove
`misappropriation through disclosure or use.
`
`The Court still turns to analyze the arguments for proving misappropriation under
`§ 3426. l(b )(2)(B). Plaintiffs argue that they are likely to show that Apple knew or had
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 10 of 14 Page ID
`#:14560
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`reason to know that the information was acquired from Lamego while he was under an
`existing duty to maintain secrecy. Mot. at 16. The Court agrees. As stated above, the
`Court believes that Apple had reason to know that Lamego was under a duty to not reveal
`trade secrets and that the provision of the information included in the ’754 Patent was in
`violation of that duty. See supra Section III.A.2.a.
`
`Plaintiffs present a third reason for proving misappropriation - respondeat superior.
`Mot. at 16-17. But, because the Court has already found that Plaintiffs are likely to
`demonstrate misappropriation, the Court declines to consider this theory.
`
`Finally, Apple argues that Plaintiffs cannot secure a preliminary injunction because
`they have failed to describe their trade secrets “with sufficient particularity.” Opp’n at 16
`(citing CanWe Studios LLC v. Sinclair, 2013 WL 12120437, at *2 (C.D. Cal. Nov. 20,
`------ ------ --- - ------
`2013)). On a motion for preliminary injunction on the basis of trade secret
`misappropriation, a plaintiff must “describe the subject matter of the trade secret with
`sufficient particularity to separate it from matters of general knowledge in the trade or of
`special knowledge of those persons who are skilled in the trade, and to permit the
`defendant to ascertain at least the boundaries within which the secret lies.” Whyte v.
`Schlage Lock Co., 101 Cal. App. 4th 1443, 1453 (Cal. Ct. App. 2002). Here, however,
`------ ---- ---
`Plaintiffs have defined their trade secret with sufficient particularity for Apple to provide
`more than twenty pages of detailed analysis about whether Plaintiffs’ trade secret was in
`fact already public knowledge. Opp’n at 713; Opp’n App’x A. The trade secret was also
`sufficiently described for the Court to discern with particularity what is in fact secret. See
`supra Section III.A.1. The Court therefore does not deny a preliminary injunction on this
`ground.
`
`Thus, based on the above analysis, the Court concludes that Plaintiffs are likely to
`succeed on the merits.
`
`B.
`
`Irreparable Harm
`
`The Court next turns to whether Plaintiffs have demonstrated irreparable harm if
`the Court does not grant this motion. Plaintiffs claim to maintain certain technologies,
`which are known by former employees, as trade secrets. Mot. at 18. Plaintiffs argue that
`granting an injunction requiring Apple to provide advance notice to Plaintiffs “before
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 11 of 14 Page ID
`#:14561
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`publishing patent applications or other publications that name Plaintiffs’ former
`employees as inventors” would provide Plaintiffs sufficient notice to seek relief from
`such publication should it risk revealing Plaintiffs’ trade secrets. Id.
`
`Apple does not object to the argument that, in theory, the loss of trade secrets can
`result in irreparable harm. See Opp’n at 17-18. “[T]he loss of trade secrets cannot be
`measured in money damages . . . [because] a trade secret once lost . . . is lost forever.”
`Super Chefs, Inc. v. Second Bite Foods, Inc., 2015 WL 12914441 at *4 (citing FMC
`---- ----- --- - ------
`Corp. v. Taiwan Tainan Giant Industrial Co., 730 F.2d 61, 63 (2d Cir. 1984)). Apple
`does, however, provide several arguments as to why this case is not one where Plaintiffs
`are likely to suffer that irreparable harm. Opp’n at 17-20. Apple first argues that Plaintiffs
`have failed to identify any specific advantage that would be lost as a result of a specific
`secret being revealed, meaning that there is only a conclusory assertion of harm. Opp’n at
`17. Plaintiffs’ response for why they are likely to suffer irreparable harm is best
`summarized in one sentence from their reply brief: “Apple’s refusal to provide
`[information about whether Apple has pending patent applications identifying Plaintiffs’
`former employees as inventors] justifies an inference that it intends to allow more
`applications to publish in this field naming Plaintiffs’ former employees as inventors.”
`Reply at 15.
`
`The Court does not find this to be a reasonable inference. “Under Winter, plaintiffs
`must establish that irreparable harm is likely, not just possible, in order to obtain a
`preliminary injunction.” Cottrell, 632 F.3d at 1131 (emphasis in original). The Court
`cannot accept Plaintiffs’ suggestion that Apple’s refusal to voluntarily comply with
`Plaintiffs’ proposed preliminary injunction shows the need to issue the preliminary
`injunction that Plaintiffs seek. See Reply at 15 (presenting as evidence that “Plaintiffs’
`apprehension is not speculation” that Apple declined to voluntarily comply with
`preliminary injunction during proposed extension of time to file an opposition to this
`motion). Nor does the Court believe that Apple’s refusal to answer questions about its
`current pending patent applications is sufficient to conclude that it is “likely” that Apple
`will infringe on Plaintiffs’ trade secrets. Id. As this case demonstrates, all companies have
`an interest in keeping the intellectual property secret, and there is no reason for the Court
`to believe that Apple’s refusal to answer Plaintiffs’ questions is not just a manifestation
`of that interest. The Court therefore finds that Plaintiffs have not made a sufficient
`showing that they are likely to suffer irreparable harm.
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`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 12 of 14 Page ID
`#:14562
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`Nor is the Court certain about whether there would be irreparable harm in this case.
`A “long delay before seeking a preliminary injunction implies a lack of urgency and
`irreparable harm.” Miller v. California Pacific Medical Center, 991 F.2d 536, 555 (9th
`Cir. 1993) (citing Oakland Tribune, Inc. v. Chronicle Pub. Co., 762 F.2d 1374, 1377 (9th
`------ ------ --- - ------- --- ---
`Cir. 1985)). Apple argues that Plaintiffs did not file the present motion until five months
`after Apple’s refusal to notify Plaintiffs before the publication of a patent application
`involving Plaintiffs’ former employees. Opp’n at 19. More significantly, Apple notes that
`Plaintiffs waited ten months between the filing of the ’754 Patent, at which point
`Plaintiffs theoretically would have notice that Apple might be misappropriating its trade
`secrets, and when it filed the instant lawsuit. Id.
`
`Plaintiffs dismiss this latter point by noting that “the harm from Apple publishing
`the ’754 Patent already occurred.” Reply at 20 n.9. But if the ’754 Patent was not a cause
`of urgency and is irrelevant to Plaintiffs’ concerns about future trade secret
`misappropriation, then the Court is only further persuaded by Apple’s argument that the
`irreparable harm alleged in this motion is untethered from Apple’s allegedly wrongful
`acts. Opp’n at 18. If there were a “direct connection between Plaintiffs’ harm . . . and
`Apple’s wrongful disclosure of those trade secrets” as Plaintiffs claim, then this ten-
`month delay is unexplained. Reply at 16. If the ’754 Patent and the underlying trade
`secret claim is irrelevant and the delay can be excused, then the proposed preliminary
`injunction is too broad because “[w]here injunctive relief is warranted, the order must be
`narrowly tailored to ‘remedy only the specific harms shown by the plaintiffs, rather than
`to enjoin all possible breaches of the law.’” Gallagher Benefit Services, Inc. v. De La
`------- ------ ------- --- - -- --
`Torre, 283 Fed. Appx. 543, 546 (9th Cir. 2008) (citing Price v. City of Stockton, 390
`---- - --- -- -------
`F.3d 1105, 1117 (9th Cir. 2004)).
`
`Although “delay is but a single factor to consider in evaluating irreparable injury,”
`Cuviello v. City of Vallejo, 944 F.3d 816, 833 (9th Cir. 2019), the Court considers
`------ - --- -- ------
`Plaintiffs’ failure to show a likelihood of irreparable harm, together with Plaintiffs’
`proposed preliminary injunction being either delayed or disconnected from the
`underlying harm, to cause this prong to weigh against issuance of the preliminary
`injunction.
`
`C.
`
`Balance of Equities
`
`CV-90 (06/04)
`
`12
`CIVIL MINUTES - GENERAL
`
`Page 12 of 14
`
`MASIMO 2027
`Apple v. Masimo
`IPR2022-01466
`
`

`

`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 13 of 14 Page ID
`#:14563
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`Plaintiffs next argue that the balance of the equities weighs heavily in their favor
`because the hardship of Apple publishing Plaintiffs’ trade secrets would outweigh Apple
`being required to provide covered patent applications to Plaintiffs’ counsel. Mot. at 18.
`Plaintiffs would not be barred from publishing their patent applications unless Plaintiffs
`sought a subsequent injunction. Reply at 21.
`
`But, as noted earlier, the Court does not believe that Plaintiffs have shown that it is
`likely that Apple will publish one of Plaintiffs’ trade secrets. See supra Section III.B. By
`contrast, Apple argues that its First Amendment rights will be violated because the
`injunctive order would bar Apple from publishing certain documents or making certain
`presentations, amounting to a prior restraint. Opp’n at 23. Under the First Amendment,
`restrictions on speech must be “narrowly drawn,” extending “only as far as the interest it
`serves.” Central Hudson Gas & Electric Corp. v. Public Service Commission of New
`------ ------ --- - ------ -----
`----- ------ --------- -- ----
`York, 447 U.S. 557, 565 (1980). Here, Plaintiffs’ failure to show a likelihood of
`irreparable harm means that the Court cannot find there to be a sufficiently broad interest
`to justify an injunction stopping Apple from releasing documents or presentations related
`to “measurement or tracking of health-related or physiological information” and listing
`any of Plaintiffs’ former employees as an author or inventor. Prop. Order at 1. The Court
`finds the proposed injunction to not be narrowly tailored, and therefore for the balance of
`the equities to weigh against granting the injunction.
`
`D.
`
`Public Interest
`
`Finally, the Court turns to whether issuing Plaintiffs’ proposed preliminary
`injunction would be in the public interest. “If . . . the impact of an injunction reaches
`beyond the parties, carrying with it a potential for public consequences, the public
`interest will be relevant to whether the district court grants the preliminary injunction.”
`Stormans Inc. v. Selecky, 586 F.3d 1109, 1139 (9th Cir. 2009). Here, Apple argues that
`------- --- - ------
`the proposed injunction is not in the public interest because it “requires the disclosure of
`all former employees’ inventions or publications relating to health information as long as
`they are listed as an inventor or author.” Reply at 25 (emphasis in original).
`Consequently, Apple argues, this would act as a restriction on former employees’
`employment and employee mobility. Id.
`
`This argument goes too far. The proposed injunction would merely require the
`13
`CIVIL MINUTES - GENERAL
`CV-90 (06/04)
`Page 13 of 14
`
`MASIMO 2027
`Apple v. Masimo
`IPR2022-01466
`
`

`

`Case 8:20-cv-00048-JVS-JDE Document 206 Filed 09/16/20 Page 14 of 14 Page ID
`#:14564
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. SACV 20-00048 JVS(JDEx)
`Masimo Corporation et al. v. Apple Inc.
`Title
`
`Date Sept. 16, 2020
`
`disclosure of Apple’s patent applications listing Plaintiffs’ former employees as
`inventors. Prop. Order at 1. The proposed injunction would not restrict Apple from
`submitting the patent application or directly implicate the employees’ mobility. The
`Court therefore concludes that the proposed preliminary injunction is not against the
`public interest.
`
`IV. CONCLUSION
`
`As the Court neither finds there to be a likelihood of irreparable harm, nor
`concludes that the balance of the equities weighs in favor of the Plaintiffs, the Court
`DENIES Plaintiffs’ motion for a preliminary injunction. The Court asks the parties to
`meet and