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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`
`
`
` Case IPR2020-00905
` U.S. Patent No. 10,225,479
`
`
`
`
`
`PATENT OWNER’S UNOPPOSED MOTION TO FILE UNDER SEAL AND
`FOR ENTRY OF PROTECTIVE ORDER
`
`Patent Owner Corephotonics Ltd. respectfully moves under 37 C.F.R. §§
`
`42.14 and 42.54 to file under seal the following documents, which are being filed
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`concurrently herewith as “Board and Parties Only” documents:
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`1.
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`2.
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`Certain highlighted portions of Patent Owner’s Response;
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`Certain highlighted portions of Ex. 2001, the Declaration of John C.
`
`Hart;
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`3.
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`Ex. 2006, a document titled “Dual Aperture Image Fusion Technology,
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`Proposed Engagement Framework” and dated June 22, 2014;
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`
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`Case IPR2020-00905
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Ex. 2007, email chain with emails dating from. July and August 2014;
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`Ex. 2008, an email chain with emails dating from March 2015;
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`Ex. 2009, an email dated December 21, 2015;
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`Ex. 2010, an email chain with emails dating from August 2016;
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`Ex. 2011, an email dated May 23, 2013;
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`Ex, 2012, an email dated May 23, 2013;
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`10. Certain highlighted portions of Ex. 2013, the Declaration of Eran Kali;
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`11. Ex. 2018, an email chain with emails dating from June and July 2013;
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`12. Ex. 2019, an email chain with emails dating from June and July 2013;
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`13. Ex. 2020, an email chain with emails dating from October 2013;
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`14. Ex. 2021, Technology Evaluation Agreement signed September 18,
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`2013;
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`15. Ex. 2022, an email chain with emails dating from September 2013; and
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`16. Ex. 2023, an email dated May 21, 2014.
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`In support of this motion, Patent Owner states as follows:
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`The documents and information sought by Patent Owner to be filed under seal
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`reflect Patent Owner’s confidential business information of Patent Owner, including
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`the identities of third parties who have licensed Patent Owner’s technology as well
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`as the dates those licenses were granted. The material sought to be redacted also
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`includes the confidential business and licensing discussions that Petitioner and
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`Case IPR2020-00905
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`Patent Owner had between 2012 and 2017, during which time Petitioner and Patent
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`Owner exchanged numerous communications and documents relating to Patent
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`Owner’s technologies and Petitioner’s interest in licensing those technologies.
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`As such, Patent Owner considers the information to be confidential, and
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`believes that the public’s interest in having access to this information for the
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`purposes of the patentability of the challenged claims in this proceeding is
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`outweighed by the prejudicial effect that disclosure would have on Patent Owner.
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`Patent Owner understands that Petitioner provisionally does not oppose this motion
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`but reserves the right to confer with Patent Owner after the confidential material is
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`filed with the Board, and may also consider some or all of the material to reflect
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`Apple’s confidential information.
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`For the foregoing reasons, Patent Owner respectfully requests entry of the
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`appended Proposed Protective Order, which is substantively identical to the Board’s
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`Default Protective Order set forth in Appendix B to the Board’s July 2019 Trial
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`Practice Guide Update. Patent Owner also requests that this motion to file under seal
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`be granted.
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`
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`Dated: February 4, 2021
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`3
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`Respectfully submitted,
`
` / Neil A. Rubin /
`Neil A. Rubin
`Reg. No. 67,030
`Russ August & Kabat
`
`
`
`Case IPR2020-00905
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`
`
`
`
`
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
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`
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`4
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`Case IPR2020-00905
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`February 4, 2021, by filing this document through the Patent Trial and Appeal Board
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`End to End System as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`
`
`Date: February 4, 2021
`
` / Neil A. Rubin /
`
`
`
`
`
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`(310) 826-7474
`
`
`Neil A. Rubin
`Reg. No. 67,030
`Attorney for Patent Owner
`
`
`
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`5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`
`
`
` Case IPR2020-905
` U.S. Patent No. 10,225,479
`
`
`
`
`[PROPOSED] PROTECTIVE ORDER
`
`This protective order governs the treatment and filing of confidential
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`
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`information, including documents and testimony.
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`1. Confidential information shall be clearly marked “PROTECTIVE ORDER
`
`MATERIAL.”
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`2. Access to confidential information is limited to the following individuals
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`who have executed the acknowledgment appended to this order:
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`(A) Parties. Persons who are owners of a patent involved in the proceeding
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`and other persons who are named parties to the proceeding.
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`
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`(B) Party Representatives. Representatives of record for a party in the
`
`proceeding.
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`(C) Experts. Retained experts of a party in the proceeding who further certify
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`in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject
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`matter of the proceeding.
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`(D) In-house counsel. In-house counsel of a party.
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`(E) Support Personnel. Administrative assistants, clerical staff, court reporters
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`and other support personnel of the foregoing persons who are reasonably
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`necessary to assist those persons in the proceeding shall not be required to
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`sign an Acknowledgement, but shall be informed of the terms and
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`requirements of the Protective Order by the person they are supporting who
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`receives confidential information.
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`(F) The Office. Employees and representatives of the United States Patent and
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`Trademark Office who have a need for access to the confidential information
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`shall have such access without the requirement to sign an Acknowledgement.
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`Such employees and representatives shall include the Director, members of
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`the Board and their clerical staff, other support personnel, court reporters, and
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`other persons acting on behalf of the Office.
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`3. Employees (e.g., corporate officers), consultants, or other persons
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`2
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`performing work for a party, other than in-house counsel and in-house counsel’s
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`support staff, who sign the Acknowledgement shall be extended access to
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`confidential information only upon agreement of the parties or by order of the Board
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`upon a motion brought by the party seeking to disclose confidential information to
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`that person. The party opposing disclosure to that person shall have the burden of
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`proving that such person should be restricted from access to confidential
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`information.
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`4. Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons not
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`authorized to receive the information shall not have access;
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`(B) Otherwise using reasonable efforts to maintain the confidentiality of the
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`information, which efforts shall be no less rigorous than those the recipient
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`uses to maintain the confidentiality of information not received from the
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`disclosing party;
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`(C) Ensuring that support personnel of the recipient who have access to the
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`confidential information understand and abide by the obligation to maintain
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`the confidentiality of information received that is designated as confidential;
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`and
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`(D) Limiting the copying of confidential information to a reasonable number
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`3
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`of copies needed for conduct of the proceeding and maintaining a record of
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`the locations of such copies.
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`5. Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board along
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`with a Motion to Seal. The Motion to Seal should provide a non-
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`confidential description of the nature of the confidential information
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`that is under seal, and set forth the reasons why the information is
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`confidential and should not be made available to the public. A party
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`may challenge the confidentiality of the information by opposing the
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`Motion to Seal. The submission shall be treated as confidential and
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`remain under seal, unless the Board determines that the documents or
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`information do not to qualify for confidential treatment. The
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`information shall remain under seal unless the Board determines that
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`some or all of the information does not qualify for confidential
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`treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the
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`information submitted to the Board, the submitting party shall file
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`confidential and non-confidential versions of its submission, together
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`4
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`with a Motion to Seal the confidential version setting forth the reasons
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`why the information redacted from the non-confidential version is
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`confidential and should not be made available to the public. A party
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`may challenge the confidentiality of the information by opposing the
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`Motion to Seal. The non-confidential version of the submission shall
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`clearly indicate the locations of information that has been redacted. The
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`confidential version of the submission shall be filed under seal. The
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`redacted information shall remain under seal unless the Board
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`determines that some or all of the redacted information does not qualify
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`for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Documents
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`(including deposition transcripts) and other information designated as
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`confidential that are disclosed to another party during discovery or other
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`proceedings before the Board shall be clearly marked as “PROTECTIVE
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`ORDER MATERIAL” and shall be produced in a manner that maintains its
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`confidentiality.
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`6. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential information
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`must return, or certify the destruction of, all copies of the confidential information
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`to the producing party.
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`5
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`
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`The following form may be used to acknowledge a protective order and gain
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`access to information covered by the protective order:
`PATENT TRIAL AND APPEAL BOARD
`
`IPR2020-00905
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`Standard Acknowledgment for
`Access to Protective Order Material
`
`
`Petitioner,
`
`
`APPLE INC.,
`
`
`v.
`
`COREPHOTONICS, LTD.,
`
`
`Patent Owner.
`
`
`
`I __________________________________________, affirm that I have read
`
`the Protective Order; that I will abide by its terms; that I will use the confidential
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`information only in connection with this proceeding and for no other purpose; that I
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`will only allow access to support staff who are reasonably necessary to assist me in
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`this proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`_________________________
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`[Signature]
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`6
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