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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`COREPHOTONICS, LTD.,
`Patent Owner.
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`
`
`
`
` Case IPR2020-00905
` U.S. Patent No. 10,225,479
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`
`
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`PATENT OWNER’S UNOPPOSED
`REVISED MOTION TO FILE UNDER SEAL
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`Pursuant to the Board’s June 21, 2021 Order Granting-in-Part and Denying-
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`
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`in-Part Patent Owner’s Motion to Seal and to Enter a Protective Order (Paper 30)
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`and June 21, 2021 Order Denying Petitioner’s Motion to Seal (Paper 31), Patent
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`Owner Corephotonics Ltd. respectfully files this revised motion under 37 C.F.R. §§
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`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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`Certain highlighted portions of Patent Owner’s Response;
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`Case IPR2020-00905
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`2.
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`Certain highlighted portions of Ex. 2001, the Declaration of John C.
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`Hart;
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`3.
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`Certain highlighted portions of Ex. 2006, a document titled “Dual
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`Aperture
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`Image Fusion Technology, Proposed Engagement
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`Framework” and dated June 22, 2014;
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`4.
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`Certain highlighted portions of Ex. 2007, email chain with emails
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`dating from. July and August 2014;
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`5.
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`Certain highlighted portions of Ex. 2008, an email chain with emails
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`dating from March 2015;
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`6.
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`7.
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`8.
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`9.
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`The second page of Ex. 2009, an email dated December 21, 2015;
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`Certain highlighted portions of Ex. 2010;
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`Certain highlighted portions of Ex. 2011, an email dated May 23, 2013;
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`Certain highlighted portions of 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. Certain highlighted portions of Ex. 2018, an email chain with emails
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`dating from June and July 2013;
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`12. Certain highlighted portions of Ex. 2019, an email chain with emails
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`dating from June and July 2013;
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`13. Certain highlighted portions of Ex. 2020, an email chain with emails
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`dating from October 2013;
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`14. Certain highlighted portions of Ex. 2022, an email chain with emails
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`dating from September 2013;
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`15. Certain highlighted portions of Ex. 2023, an email dated May 21, 2014;
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`16. Certain highlighted portions of Petitioner’s Reply dated May 7, 2021;
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`17. Certain highlighted portions of APPL-1037, a transcript of the April 29,
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`2021 deposition of Dr. John C. Hart; and
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`18. Certain portions of APPL-1038, the Declaration of Dr. Fredo Durand
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`in support of Petitioner’s Reply briefs in IPR2020-00905 and IPR2020-
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`00906, marked for redaction by red-colored boxes.
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`In support of this motion and in response to the Board’s request that Patent
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`Owner provide with particularity the reasons why the redacted information is
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`confidential and why the harm from its disclosure outweighs the strong public
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`interest in maintaining an open record, Patent Owner states as follows.
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`Certain Highlighted Portions of Patent Owner’s Response
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`• Pages 38–39 (highlighted portion of the bullet point beginning with
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`“Ex. 2018 is an email chain…”): The highlighted portions reflect what
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`Patent Owner considered to be key characteristics of their confidential
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`lens design at the time of the 2013 email chain shown in Ex. 2018. The
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`highlighted portions also reveal the precise technical information
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`regarding Corephotonics’ telephoto lens design that was provided to
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`Petitioner at an in-person meeting during the Summer of 2013 between
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`Petitioner and Patent Owner. Public disclosure of these specific
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`technical details, as well as time manner in which they were disclosed
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`to Petitioner, would cause Patent Owner commercial harm. Such details
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`could be competitively used against Patent Owner because Patent
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`Owner’s business involves the licensing of its technology to customers.
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`• Page 39 (highlighted portion of the bullet point beginning with “Ex.
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`2021 is a copy of a Technology Evaluation Agreement…”): The
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`highlighted portions contain description and quotations of Ex. 2021,
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`which the Board has ordered sealed in its entirety. See Paper 30, at 7.
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`• Page 40 (highlighted portion of the bullet point beginning with “Ex.
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`2010 is …”); page 41 (highlighted portions): Both Patent Owner and
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`Petitioner believe that the highlighted portions, which are descriptions
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`and quotations of Ex. 2010, is subject to an active non-disclosure
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`agreement (“Confidentiality Agreement”) to which Patent Owner and
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`Petitioner have been parties since 2012. Petitioner believes the entirety
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`of Ex. 2010 is subject to the Confidentiality Agreement. At Petitioner’s
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`request and out of an abundance of caution, and to avoid breaching the
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`Confidentiality Agreement, Patent Owner proposes that the highlighted
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`material be sealed. To the extent Petitioner believes there are additional
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`reasons why the highlighted portion should be sealed, Patent Owner
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`expects Petitioner to advise the Board of those reasons as appropriate.
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`• Page 42 (highlighted portion of first paragraph): The highlighted
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`portions reflect identities of licensees to Patent Owner’s technology and
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`whose licenses to Patent Owner’s technology is not public information.
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`Patent Owner believes the public disclosure of that material would
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`harm to the interests of both Patent Owner and its non-public licensees.
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`Certain highlighted portions of Ex. 2001, the Declaration of John C. Hart
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`• Page 66 (highlighted portion of bullet point beginning with “Ex. 2018
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`is an email chain…”): The highlighted portions reflect what Patent
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`Owner considered to be key characteristics of their confidential lens
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`design at the time of the 2013 email chain shown in Ex. 2018. The
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`highlighted portions also reveal the precise technical information
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`regarding Corephotonics’ telephoto lens design that was provided to
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`Petitioner at an in-person meeting during the Summer of 2013 between
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`Petitioner and Patent Owner. Public disclosure of these specific
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`technical details, as well as time manner in which they were disclosed
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`to Petitioner, would cause Patent Owner commercial harm. Such details
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`could be competitively used against Patent Owner because Patent
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`Owner’s business involves the licensing of its technology to customers.
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`• Page 67 (highlighted portion of the bullet point beginning with “Ex.
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`2021 is a copy of a Technology Evaluation Agreement…”): The
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`highlighted portions contain description and quotations of Ex. 2021,
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`which the Board has ordered sealed in its entirety. See Paper 30, at 7.
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`• Page 68-69 (highlighted portions): Both Patent Owner and Petitioner
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`believe that the highlighted portions, which are descriptions and
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`quotations of Ex. 2010, is subject to an active Confidentiality
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`Agreement to which Patent Owner and Petitioner have been parties
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`since 2012. Out of an abundance of caution and to avoid breaching the
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`Confidentiality Agreement, Patent Owner proposes that the highlighted
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`material be sealed. To the extent Petitioner believes there are additional
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`reasons why the highlighted portion should be sealed, Patent Owner
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`expects Petitioner to advise the Board of those reasons as appropriate.
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`• Page 70 (highlighted portion): The highlighted portions reflect
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`identities of licensees to Patent Owner’s technology and whose licenses
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`to Patent Owner’s technology is not public information. Patent Owner
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`believes the public disclosure of that material would harm to the
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`interests of both Patent Owner and its non-public licensees.
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`Certain highlighted portions of Ex. 2006
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`• The highlighted portion of Ex. 2006 (beginning on page 2 of the
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`document) reflects confidential licensing and royalty terms offered by
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`Patent Owner to Petitioner. Public disclosure of such competitive
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`information would irreparably harm Patent Owner, whose business
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`involves licensing its technology to its customers.
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`Certain highlighted portions of Ex. 2007
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The highlighted portion at the bottom of page 2 (under the paragraph
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`beginning with “CP to send telephoto samples to Apple…”) contains
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`the identity of the manufacturer of Patent Owner’s lenses. The identity
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`of Patent Owner’s manufacturer is non-public information, the
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`disclosure of which would harm the interests of Patent Owner and its
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`manufacturing partner.
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`Certain highlighted portions of Ex. 2008
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The highlighted hyperlink in Ex. 2008 is a hyperlink to a shared folder
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`hosted by Dropbox, which was provided to Petitioner by Patent Owner
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`on a confidential basis. The folder contains technical samples of videos
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`captured using Patent Owner’s image processing algorithms and
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`reference videos for comparison. Public disclosure of the hyperlink,
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`which is still accessible, is a disclosure of the technical samples hosted
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`at the Dropbox folder. Public disclosure of such technical information
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`would irreparably harm Patent Owner.
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`The second page of Ex. 2009, an email dated December 21, 2015
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The second page of Ex. 2009 is a screenshot of a confidential Patent
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`Owner presentation reflecting details of the development timeline and
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`technical details of Patent Owner’s camera designs. Patent Owner’s
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`technology development timeline, as well as the corresponding specific
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`technical details of particular milestones in the development timeline,
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`reflect historical milestones in Patent Owner’s technology development
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`as well as Patent Owner’s future plans to develop its technology as of
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`the date of Ex. 2009 (December 2015). Public disclosure of such
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`information would irreparably harm Patent Owner.
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`Highlighted portions of Ex. 2010
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The cell phone number (beginning with “+972”) appearing on pages 2
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`and 3 is the personal cell phone number of a Patent Owner employee
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`and has been redacted in both public and “board and parties” only
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`versions of Ex. 2010. Public disclosure of that information would harm
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`Corephotonics as well as the Corephotonics employee in question.
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`Good cause exists to keep that information sealed per the Board’s
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`guidance on filing documents containing non-useful personal
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`confidential information. See https://www.uspto.gov/patents/ptab/ptab-
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`e2e-frequently-asked-questions (Question G7).
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`• Patent Owner believes that the substantive portions of Ex. 2010 are
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`subject to an active Confidentiality Agreement to which Patent Owner
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`and Petitioner have been parties since 2012. Petitioner has informed
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`Patent Owner it believes the entirety of Ex. 2010 is subject to the
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`Confidentiality Agreement. Out of an abundance of caution and to
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`avoid breaching the Confidentiality Agreement, Patent Owner proposes
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`that the highlighted material in Ex. 2010 be sealed. To the extent
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`Petitioner believes there are additional reasons why the highlighted
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`portion should be sealed, Patent Owner expects Petitioner to advise the
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`Board of those reasons as appropriate.
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`Certain highlighted portions of Ex. 2013, the Declaration of Eran Kali
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The highlighted portions on pages 4 and 5 reflect the identities of
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`licensees to Patent Owner’s technology and whose licenses to Patent
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`Owner’s technology is not public information. The highlighted portions
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`also reflect the confidential terms of licenses reached by Patent Owner
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`with its licensees. Patent Owner believes the public disclosure of that
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`material would harm to the interests of both Patent Owner and its
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`licensees, including because Patent Owner’s business involves
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`licensing its technology to its customers.
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`• The highlighted portions on pages 8 and 9 (in paragraph 25) contain
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`discussion of and quotations from Ex. 2010, which both Patent Owner
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`and Petitioner believe is subject to an active Confidentiality Agreement
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`to which Patent Owner and Petitioner have been parties since 2012. Out
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`of an abundance of caution and to avoid breaching the Confidentiality
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`Agreement, Patent Owner proposes that the highlighted material be
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`sealed. To the extent Petitioner believes there are additional reasons
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`why the highlighted portion should be sealed, Patent Owner expects
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`Petitioner to advise the Board of those reasons as appropriate.
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`• The highlighted portions on page 9 (in paragraph 26, middle of the
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`paragraph) reflect
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`the precise
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`technical
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`information regarding
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`Corephotonics’ telephoto lens design that was provided to Petitioner at
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`an in-person meeting during the Summer of 2013 between Petitioner
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`and Patent Owner. Public disclosure of these specific technical details,
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`as well as time manner in which they were disclosed to Petitioner,
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`would cause Patent Owner commercial harm.
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`• The highlighted portions on page 10 (in paragraph 29) reflect an action
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`performed by Patent Owner pursuant to the signed Technology
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`Evaluation Agreement (Ex. 2021), which the Board has ordered sealed
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`in its entirety. The highlighted portions also contain specific details
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`about the technical data provided by Patent Owner to Petitioner, the
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`disclosure of which would harm Patent Owner.
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`Certain highlighted portions of Ex. 2018
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The other highlighted portions of Ex. 2018 reflect the technical
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`parameters and details of Patent Owner’s image processing algorithms
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`as well as the hardware used by Patent Owner to produce technical
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`samples of its image processing algorithms. Public disclosure of those
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`details would irreparably harm Patent Owner’s interest.
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`Certain highlighted portions of Ex. 2019
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The highlighted portion of Ex. 2019 on page 1 beginning with https://...
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`is a hyperlink to a shared folder hosted by Dropbox, which was
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`provided to Petitioner by Patent Owner on a confidential basis. The
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`shared folder contains a technical samples produced by Patent Owner
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`in response to requests and comments made by Petitioner’s employees.
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`The highlighted portion of Ex. 2019 on pages 1 and 2, in the section
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`beginning with “Please note the following:…”, reflects the technical
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`parameters and details of Patent Owner’s process in producing the
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`technological samples hosted at the shared Dropbox folder mentioned
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`earlier in Ex. 2019. Public disclosure of the hyperlink (containing the
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`technical samples) and the details about the technical process with
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`which Patent Owner created those technical samples would irreparably
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`harm Patent Owner’s interests.
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`Certain highlighted portions of Ex. 2020
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The highlighted portions of Ex. 2020 in the body of the emails in the
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`email chain from pages 2 through 8 of Ex. 2020 reflects (1) Patent
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`Owner’s responses to Petitioner’s requests for technical samples
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`reflecting Patent Owner’s image processing algorithms, (2) details
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`about the technical process with which Patent Owner produced or
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`intended to produce technical samples at Petitioner’s request. The
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`highlighted hyperlink on page 7 of Ex. 2020 is a hyperlink to a shared
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`folder hosted by Dropbox containing Patent Owner’s technical
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`samples, which was provided to Petitioner by Patent Owner on a
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`confidential basis. Public disclosure of the hyperlink (containing the
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`technical samples) and the details about the technical process with
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`which Patent Owner created those technical samples would irreparably
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`harm Patent Owner’s interests.
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`Certain
`and 2023
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`highlighted
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`portions
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`of Exs.
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`2011,
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`2012,
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`2022,
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`Certain highlighted portions of Petitioner’s Reply dated May 7, 2021
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`• The highlighted portions of page 23 and 24 marked with red boxes
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`reflect quotation from Ex. 2010, which the parties believe are subject
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`to an active Confidentiality Agreement to which Patent Owner and
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`Petitioner have been parties since 2012. Petitioner has informed Patent
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`Owner that it believes that the entirety of Ex. 2010 is subject to the
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`Confidentiality Agreement. At Petitioner’s request and out of an
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`abundance of caution, and to avoid breaching the Confidentiality
`
`Agreement, Patent Owner proposes that marked material here be
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`sealed.
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`Certain highlighted portions of APPL-1037, a transcript of the April 29,
`2021 deposition of Dr. John C. Hart
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`• The highlighted portions on pages 153 through 160, and 203, reflect
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`technical details of the material exchanged between Patent Owner and
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`Petitioner pursuant to an agreement (Ex. 2021) which the Board has
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`ordered sealed in its entirety. Public disclosure of the specific details
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`(e.g., the files, types of files, features shown in those files) of the
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`information provided pursuant to that agreement would harm Patent
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`Owner’s interests.
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`Certain portions of APPL-1038, the Declaration of Dr. Fredo Durand in
`support of Petitioner’s Reply briefs in IPR2020-00905 and IPR2020-
`00906 marked for redaction by red boxes1
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`• Certain names, email addresses and parts of email addresses, and other
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`contact information of Petitioner’s employees have been proposed for
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`redaction at Petitioner’s request. Patent Owner understands that
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`Petitioner will advise the Board of the reasons supporting sealing of
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`that information.
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`• The portion of page 32 (in paragraph 58, not including the names of the
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`individuals in the first sentence) and page 37 (in paragraph 67) marked
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`with red boxes reflects information about the material exchanged
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`between Patent Owner and Petitioner pursuant to an agreement (Ex.
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`2021) which the Board has ordered sealed in its entirety. Public
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`disclosure of the specific details (e.g., the files, types of files, features
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`1 The version of this document filed here was provided to Patent Owner by Petitioner
`prior to the filing of this revised Motion, and contains Petitioner’s yellow
`highlighting. For clarity, the portions of this document which Patent Owner and
`Petitioner seek to file under seal are marked with red-colored boxes.
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`shown in those files) of the information provided pursuant to that
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`agreement would harm Patent Owner’s interests.
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`• The portion of pages 36 and 37 (in paragraph 66) marked with red boxes
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`reflects information from and Petitioner’s expert’s discussion of Ex.
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`2010, which the parties believe is subject to an active Confidentiality
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`Agreement to which Patent Owner and Petitioner have been parties
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`since 2012. At Petitioner’s request and out of an abundance of caution,
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`and to avoid breaching the Confidentiality Agreement, Patent Owner
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`proposes that the highlighted material be sealed.
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`• The portion of page 40 marked with red boxes (in paragraph 73) reflects
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`the identity of three of Corephotonics’s licensees, two of whom have
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`not been publicly identified as licensees. The public disclosure of the
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`identities of those three licensees, in conjunction with the rest of the
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`paragraph, would reveal highly sensitive, non-public information such
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`as the terms of Corephotonics’s licenses and the identities of its non-
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`public licensees.
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`For the foregoing reasons, Patent Owner requests that this revised motion to
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`file under seal be granted.
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`Respectfully submitted,
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`Dated: July 13, 2021
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`
`
` / Neil A. Rubin /
`Neil A. Rubin
`Reg. No. 67,030
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
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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 July
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`13, 2021, by filing this document through the Patent Trial and Appeal Board End to
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`End System as well as delivering a copy via electronic mail upon the following
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`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: July 13, 2021
`
` / Neil A. Rubin /
`
`
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`
`
`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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