By Anthony Bautista and Matt Johnson

In Apple Inc. v. Masimo Corp., the PTAB granted Masimo, the owner of patent 10,687,745 (“the ’745 patent”), their request for production directed to “specific documents identified in regard to [a prior] ITC Investigation, including unredacted copies of three briefs, thirty-two exhibits, hearing testimony from five witnesses, and the ITC’s Final Initial Determination.” Apple Inc. v. Masimo Corp., IPR2022-01291, Paper 23 at 3 (PTAB Mar. 17, 2023). Additionally, the PTAB rejected Masimo’s request for production of exhibits or testimony “cited on certain pages redacted in the public versions of two briefs filed by Masimo in the ITC Investigation and in the ITC [Initial Determination].” Id. at 8.

Prior to Apple’s petition for an Inter Partes Review of the ’745 patent, there was an ITC investigation between both parties regarding the ’745 patent. As part of their requests for production, Masimo argued that “the materials sought generally pertain to whether there was a ‘reasonable expectation of success in modifying the prior art to measure oxygen saturation at the wrist’ and ‘objective indicia of nonobviousness.” Id. at 2. The PTAB assessed Masimo’s requests for production under the factors established in Garmin International, Inc. v. Cuozzo Speed Technologies LLC. In Garmin, the PTAB established the following factors (“the Garmin factors”) for evaluating whether a request for additional discovery should be granted: “1. whether the requests are based on more than a possibility and mere allegation; 2. whether the requests seek litigation positions and underlying basis; 3. whether the requestor has the ability to generate equivalent information by other means; 4. whether the requests are easily understandable; and 5. whether the requests are overly burdensome to answer.” Id. at 3.

In Masimo’s requests numbered 1-3 for “specific documents identified in regard to the ITC Investigation,” Masimo argued that the “publicly accessible information from the ITC investigation demonstrates…‘that the request discovery would produce useful evidence’” and “’is necessary here to once again rebut [Apple’s] obviousness theories about the same combination of references.’” Id. at 4. Furthermore, Masimo asserted that requested discovery “would be ‘favorable in substantive value to the contention of the party moving for discovery,’” “pose little burden to [Apple] as they are clearly identified documents in [Apple’s] possession,” and Masimo has “sufficiently exhausted other means to obtain the information sought.” Id. at 4-5.

Apple argued that the evidence sought by Masimo “is ‘imbalanced’ and ‘calibrated only to tell [Masimo’s] story’”, and includes information and testimony  “’from Apple engineers with respect to features in patents wholly unrelated to’ the ’745 patent.’” The PTAB noted that there is no obligation on Masimo to “seek evidence to tell [Apple’s] ‘story’” and “the mere fact that documents sought may include information related to other patents at issue in the ITC investigation does not show that the requests are overly broad.” Id. at 5. Moreover, Apple asserted that the documents under Masimo’s discovery request are not useful because some of the arguments advanced by Masimo in the ITC investigation were “’soundly rejected.’” Id. Assessing this argument, the PTAB stated that “[w]e find no basis to support the notion that additional discovery is limited to evidence on issues that the party seeking the discovery prevailed on in another forum.” Id. at 6. Additionally, Apple argued that the discovery request should be denied because Masimo has offered “’nothing to confront the [ITC’s] findings,’” “’discovery on commercial success would open the door’ to issues ‘already litigated at the ITC’”, and the unredacted production that Masimo requests “is improper because the material sought is not ‘factual evidence.’” Id. at 7-8. In response, the PTAB noted that there is no burden on Masimo to confront the ITC’s findings to show that the “materials sought would be useful”, and there is no basis for Apple to argue that the PTAB should restrict Masimo from “obtaining and asserting evidence that supports its positions, including evidence of objective indicia of nonobviousness” despite pertaining to issues already litigated at the ITC such as “’highly-sensitive technical, sales, and commercial data.’” Id. at 6-7. The PTAB also highlighted that Apple provided “no support for the notion that unredacted briefs and the ITC [initial determination] are necessarily precluded from discovery because they are ‘not themselves evidence.’” Id. at 8.

The PTAB concluded that Masimo demonstrated that “all five Garmin factors support [the] determination that granting the additional discovery sought…is in the interests of justice.” Id.

In addition to requesting production of specific documents related to the prior ITC investigation, Masimo made request 4, for production directed to “‘any exhibits or testimony’ cited on certain pages redacted in the public version of two briefs filed by Masimo in the ITC Investigation.” Id.  The PTAB highlighted that Masimo conceded “that it does not know whether any responsive documents exist” and held that the request is “too speculative to show more than a possibility that something useful will be obtained.” Id. at 8-9. In conclusion, the PTAB granted Masimo’s request for production numbers 1-3 and denied Masimo’s request for production number, “recognizing that materials addressed by request for production number 4 may again be the subject of a motion for additional discovery depending upon further developments.” Id. at 10.

The following two tabs change content below.
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.