UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`CERTAIN LIGHT-BASED
`PHYSIOLOGICAL MEASUREMENT
`DEVICES AND COMPONENTS
`THEREOF
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` Inv. No. 337-TA-1276
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`ORDER NO. 47: ADDRESSING COMPLAINANTS’ HIGH PRIORITY
`OBJECTIONS
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`(June 3, 2022)
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`On May 17, 2022, Complainants Masimo Corporation and Cercacor Laboratories, Inc.
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`(collectively, “Masimo”) filed high priority objections (the “HPOs,” EDIS Doc. ID 770992). On
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`May 24, 2022, Respondent Apple Inc. (“Apple”) filed a response to the HPOs (“Resp.,” EDIS
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`Doc. ID 771457). Certain of these objections were discussed at the pre-hearing conference on
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`June 3, 2022.
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`1. Allegedly Privileged Deposition Testimony
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`Masimo’s HPO No. 1 seeks to preclude the admission of certain designated deposition
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`testimony that Masimo claims to be protected by attorney-client privilege. HPOs at 1-5.
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`Masimo submits that during the deposition of Stephen Scruggs on February 28, 2022, there was
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`substantial questioning regarding a privileged document, which was clawed back pursuant to
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`Commission Rule 210.27(e)(2). 19 C.F.R. § 210.27(e)(2). On March 9, 2022, Masimo served a
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`letter identifying several additional privileged documents that had been inadvertently produced
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`and listing four parts of the deposition transcript that are subject to privilege. See HPOs Exhibit
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`1 (identifying 39:10-13, 41:9-11, 42:19-44:4, and 45:1-46:21 as privileged). Masimo explained
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`that “[t]he privileged information relates to
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` conducted at the direction of Masimo’s
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`PUBLIC VERSION
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`Washington, D.C.
`
`In the Matter of
`
`CERTAIN LIGHT-BASED
`PHYSIOLOGICAL MEASUREMENT
`DEVICES AND COMPONENTS
`THEREOF
`
` Inv. No. 337-TA-1276
`
`ORDER NO. 47: ADDRESSING COMPLAINANTS’ HIGH PRIORITY
`OBJECTIONS
`
`(June 3, 2022)
`
`On May 17, 2022, Complainants Masimo Corporation and Cercacor Laboratories, Inc.
`
`(collectively, “Masimo”) filed high priority objections (the “HPOs,” EDIS Doc. ID 770992). On
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`May 24, 2022, Respondent Apple Inc. (“Apple”) filed a response to the HPOs (“Resp.,” EDIS
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`Doc. ID 771457). Certain of these objections were discussed at the pre-hearing conference on
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`June 3, 2022.
`
`1. Allegedly Privileged Deposition Testimony
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`Masimo’s HPO No. 1 seeks to preclude the admission of certain designated deposition
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`testimony that Masimo claims to be protected by attorney-client privilege. HPOs at 1-5.
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`Masimo submits that during the deposition of Stephen Scruggs on February 28, 2022, there was
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`substantial questioning regarding a privileged document, which was clawed back pursuant to
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`Commission Rule 210.27(e)(2). 19 C.F.R. § 210.27(e)(2). On March 9, 2022, Masimo served a
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`letter identifying several additional privileged documents that had been inadvertently produced
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`and listing four parts of the deposition transcript that are subject to privilege. See HPOs Exhibit
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`1 (identifying 39:10-13, 41:9-11, 42:19-44:4, and 45:1-46:21 as privileged). Masimo explained
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`that “[t]he privileged information relates to
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` conducted at the direction of Masimo’s
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`PUBLIC VERSION
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`counsel at Knobbe Martens.” Id. Masimo explains that its counsel communicated the request
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` to Ammar Al-Ali, who conveyed the request to Mr. Scruggs without describing the
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`privileged nature of the analysis. HPOs at 3-4. Masimo now seeks to claim additional portions
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`of the deposition transcript as privileged. Id. at 4-5.
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`In response, Apple argues that Masimo’s privilege claim is unsubstantiated, failing to
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`identify the attorney(s) involved in the alleged attorney-client communication or providing any
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`of the information required by Ground Rule 4.8.1. Resp. at 1-3. Apple further argues that there
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`is no justification for the belated expansion of Masimo’s privilege claim, identifying a
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`substantially larger portion of the deposition transcript as privileged more than two months after
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`the initial privilege claim. Id. at 5-6.
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`This objection was discussed at the pre-hearing conference, where Masimo clarified that
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`it was claiming work-product protection in addition to attorney-client privilege. Masimo was
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`unable to name any of the attorneys involved in the communication with Mr. Al-Ali, who could
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`not remember who made the request. Apple reiterated its argument that Masimo has failed to
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`substantiate its privilege claim.
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`The undersigned agrees with Apple that Masimo has failed to establish that any privilege
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`applies to Mr. Scruggs’s deposition testimony. “The attorney-client privilege protects the
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`confidentiality of communications between attorney and client made for the purpose of obtaining
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`legal advice.” Genentech, Inc. v. U.S. Int'l Trade Comm’n, 122 F.3d 1409, 1415 (Fed. Cir.
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`1997). Masimo admits that Mr. Scruggs did not communicate with any attorneys, however, and
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`Masimo was unable to name any attorneys that allegedly communicated with Mr. Al-Ali.
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`Moreover, Masimo has not demonstrated the requirements for a claim of attorney-client privilege
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`for communications between non-lawyers, which requires that “the employees discuss or
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`PUBLIC VERSION
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`transmit legal advice given by counsel.” U.S. v. ChevronTexaco Corp., 241 F.Supp.2d 1065,
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`1077 (N.D.Cal. 2002). Masimo concedes that Mr. Al-Ali did not tell Mr. Scruggs about the legal
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`nature of his request. See HPOs at 3-4. In his deposition testimony, Mr. Scruggs describes the
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`request from Mr. Al-Ali as part of
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` Appendix 1 at 42:6-13.
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`Masimo argued at the pre-hearing conference that Mr. Scruggs was mistaken regarding the
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` but his ignorance of any legal aspect of the analysis
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`underscores the fact that the communications between Mr. Al-Ali and Mr. Scruggs were not
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`attorney-client communications. Accordingly, Masimo has failed to show a basis for a claim of
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`attorney-client privilege with respect to Mr. Scruggs’s deposition testimony.
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`Masimo’s privilege claim might have been stronger under the work product doctrine,
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`which protects “documents and tangible things that are prepared in anticipation of litigation.”
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`Fed. R. Civ. P. 26(b)(3). The work product doctrine has been invoked to protect a complainant
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`in a section 337 investigation from disclosing evidence regarding its pre-complaint investigation
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`of accused products. See, e.g., Certain Sintered Rare Earth Magnets, Methods of Making Same
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`and Products Containing Same, Inv. No. 337-TA-855, Order No. 75, EDIS Doc. ID 506360
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`(Mar. l 1, 2013) (denying motion to compel discovery regarding a complainant’s pre-complaint
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`investigation). If the analysis referenced by Mr. Scruggs was conducted in preparation for
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`litigation, as represented by Masimo, then it would be protected work product. Mr. Scruggs’s
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`deposition testimony contradicts Masimo’s arguments, however. The questioning at his
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`PUBLIC VERSION
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`deposition did not ask about analysis that was conducted in anticipation of litigation—Mr.
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`Scruggs was only asked about
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`See Appendix 1 at 38:24-25
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` 41:3-5
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`45:8-10
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` 45:18-20
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` 46:5-7
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`. Thus, even if Masimo’s
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` were protected work
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`product, Mr. Scruggs’s deposition testimony falls outside of that privilege because he only
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`discusses analysis that was for
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`—not for litigation.1
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`At the prehearing conference, Masimo argued that Mr. Scruggs had an incorrect
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`understanding of the purpose for Masimo’s
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`, but Masimo offers
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`no evidence to contradict Mr. Scruggs’s sworn testimony. Masimo did not attach any evidence
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`from Mr. Al-Ali or any attorney to support its privilege claim. Masimo did not move to correct
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`Mr. Scruggs’s deposition testimony and did not identify all of the testimony allegedly subject to
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`privilege until its objection was filed, almost three months after the deposition had concluded.2
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`, any work product
`1 To the extent that Masimo used its
`protection would be waived, because Masimo is relying on the development of these products as evidence
`for the alleged domestic industry. See Certain Semiconductor Devices, Semiconductor Device Packages,
`and Products Containing Same, Inv. No. 337-TA-1010, Order No. 50, EDIS Doc. ID 600896 (Dec. 16,
`2016) (finding waiver of work-product protection for materials relied upon in discovery).
`2 Accordingly, any claim of attorney-client privilege or work product protection relating to testimony
`other than 39:10-13, 41:19-44:4, and 45:1-46:21 has also been waived based on this delay. See Clarke v.
`J.P. Morgan Chase & Co., No. 08 Civ. 02400, 2009 WL 970940, at *6 (S.D.N.Y. 2009) (finding waiver
`based on delay of “over two months”).
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`PUBLIC VERSION
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`In support of its objection, Masimo cites an order from Certain Programmable Logic
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`Controller (Plcs), Components Thereof, & Prods. Containing Same, where a deposition exhibit
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`was clawed back after a witness was questioned regarding its contents, but in that case the
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`witness had no recollection of the clawed-back document and it was only his testimony regarding
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`the contents of the document that was excluded pursuant to the privilege. Inv. No. 337-TA-
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`1105, Order No. 17, EDIS Doc. ID 656708 (Sept. 25, 2018). Here, Mr. Scruggs’s deposition
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`testimony shows that he had personal knowledge regarding Masimo’s
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` The record before the undersigned shows no basis for claiming attorney-client or work
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`product privilege for any portion of Mr. Scruggs’s deposition testimony.
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`Masimo has failed to establish that any privilege applies to Mr. Scruggs’s testimony, and
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`accordingly, Masimo’s HPO No. 1 is OVERRULED.
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`2. Exhibits Outside the Scope of Apple’s Invalidity and Non-Infringement Contentions
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`Masimo’s HPO No. 2 seeks to exclude exhibits that were not identified as part of Apple’s
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`invalidity contentions or non-infringement contentions. HPOs at 5-9. Apple submits that each
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`of the prior art exhibits identified by Masimo were cited in its invalidity contentions, notice of
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`prior art, and expert reports. Resp. at 6-13. Moreover, as set forth in Order No. 40, Apple is not
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`precluded from relying on prior art references for purposes other than grounds for anticipation or
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`obviousness. Order No. 40 at 1-2 (Jun. 1, 2022). Similarly, Apple may use documents related to
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`its Apple Watch products that were not cited in its non-infringement contentions for other
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`purposes, such as to describe the development of these products or to provide relevant
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`background information. See Resp. at 14-15. Masimo has failed to show that any of these
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`exhibits warrant exclusion and accordingly, Masimo’s HPO No. 2 is OVERRULED.
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`PUBLIC VERSION
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`3. Discovery Responses and Expert Materials
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`Masimo’s HPO No. 3 seeks to preclude Apple from relying on its own discovery
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`responses and expert report materials. HPOs at 9-10. Apple represents that it does not intend to
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`seek admission of its own discovery responses or expert reports, but Apple confirms that it does
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`seek to admit certain financial schedules attached to the expert report of its economic expert and
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`a summary of metadata relied upon by its technical experts. Resp. at 15-17. Financial schedules
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`prepared by experts are routinely admitted in section 337 proceedings as summaries of
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`information relevant to the domestic industry requirement. See, e.g., Certain Light-Emitting
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`Diode Products, Systems, and Components Thereof (III), Inv. No. 337-TA-1168, Order No. 34 at
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`3-4, EDIS Doc. ID 702675 (Feb. 14, 2020) (admitting spreadsheet summarizing labor hours).
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`With respect to the metadata summary, Masimo’s objections to the qualifications of Apple’s
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`experts to analyze this data is an issue of weight, not admissibility. See Certain Foodservice
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`Equip. and Components Thereof, Inv. No. 337-TA-1166, Order No. 27, EDIS Doc. ID 707270
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`(Apr. 8, 2020) (denying motion in limine to exclude testimony regarding metadata, finding that
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`“concerns regarding the reliability of expert analysis are attenuated in administrative
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`proceedings, where there is no danger of jury confusion.” (internal quotations removed)).
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`Accordingly, Masimo’s HPO No. 3 is OVERRULED.
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`4. Non-Designated Deposition Transcripts
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`Masimo’s HPO No. 4 seeks to preclude Apple from admitting the entirety of deposition
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`transcripts. HPOs at 10-11. Apple represents that it is not seeking to admit the entirety of
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`deposition transcripts but may use these deposition transcripts for impeachment or to refresh a
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`witness’s recollection. Resp. at 17-18. At the pre-hearing conference, Masimo withdrew its
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`objection to these exhibits for impeachment but reserved its right to object to the use of these
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`PUBLIC VERSION
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`exhibits to refresh a witness’s recollection. Based on Apple’s representation that the exhibits
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`will not be offered as substantive evidence, the undersigned finds that Masimo’s HPO No. 4 is
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`moot.
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`5. Apple Watch Customer Correspondence
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`Masimo’s HPO No. 5 seeks to exclude certain customer correspondence regarding the
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`Apple Watch as unreliable and irrelevant hearsay. HPOs at 12-13. At the pre-hearing
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`conference, Apple represented that it would not rely on any of these exhibits as substantive
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`evidence, and Masimo agreed that this objection is moot.
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`6. Attorney Correspondence and Case Materials
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`Masimo’s HPO No. 6 seeks to exclude certain attorney correspondence, motion briefing,
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`hearing transcripts, and orders. HPOs at 13. Apple represents that it is not seeking to admit
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`these exhibits as substantive evidence. Resp. at 19. At the pre-hearing conference, the parties
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`agreed that this objection is moot.
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`7. Counter-Designations
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`Masimo’s HPO No. 7 had sought to exclude Apple’s counter-designations of certain
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`deposition transcripts because they go beyond the scope of Masimo’s affirmative designations.
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`HPOs at 13-15. At the pre-hearing conference, Masimo’s counsel represented that the objections
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`in HPO No. 7 have been withdrawn.
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`This order has been issued with a confidential designation. Within seven days of the date
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`of this document, the parties shall submit a joint statement as to whether or not they seek to have
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`any portion of this document deleted from the public version. If the parties do seek to have
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`portions of this document deleted from the public version, they must submit a single proposed
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`public version of this order with any proposed redactions in the manner specified by Ground
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`PUBLIC VERSION
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`Rule 1.9. To the extent possible, the proposed redacting should be made electronically, in a PDF
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`of the issued order, using the “Redact Tool” within Adobe Acrobat, wherein the proposed
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`redactions are submitted as “marked” but not yet “applied.” The submission shall be made by
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`email to Bhattacharyya337@usitc.gov and need not be filed with the Commission Secretary.
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`SO ORDERED.
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`___________________________________
`Monica Bhattacharyya
`Administrative Law Judge
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`PUBLIC VERSION
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