`Paper No. 66
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
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`JOINT REQUEST TO KEEP SEPARATE
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and the Board’s
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`February 29, 2024 authorization, Patent Owner Corephotonics, Ltd. and
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`Petitioner Apple Inc. (collectively, “the Parties”) jointly request to file the
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`confidential settlement agreement—as referenced in the Joint Motion to
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`Terminate Proceeding, filed March 6, 2024, and designated as Confidential
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`Exhibit 2204—as business confidential information which shall be kept
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`separate from the file of the involved patent. The terms of the agreement
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`require the Parties to treat the agreement as confidential information and
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`prohibits disclosure to third parties. In view of the terms of the agreement, and
`
`
`
`
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`the Parties’ joint request to file it confidentially, the settlement agreement has
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`been filed for access by the “Parties and Board Only.”
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`The Parties consider the confidential settlement agreement (Exhibit
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`2204) to contain highly sensitive business confidential information that would
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`substantially harm their business interests if publicly disclosed. Accordingly,
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`the Parties further jointly request that the Board order that in the event a person
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`or entity makes a written request, as stated in 37 C.F.R. §42.74(c)(1)‒(2), for
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`access to the agreement, that any such written request be served upon the
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`Parties on the day the written request is provided to the Board and that the
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`Parties be given the opportunity to respond to the request. Without limitation,
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`the identification of specific natural persons and the recitation of banking
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`information and monetary terms that the Board has not allowed the Parties to
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`redact, all constitute circumstances warranting further assurances that the
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`confidential settlement agreement will not be disclosed without each Party
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`having notice and opportunity to respond.
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`2
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`Dated: March 15, 2024
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`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`nrubin@raklaw.com
`
`Attorneys for Patent Owner,
`COREPHOTONICS, LTD.
`
`
`
`
`
`
`
` /David W. OBrien/
`David W. O’Brien (Reg. No. 40,107)
`HAYNES AND BOONE, LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone: 512-867-8400
`david.obrien.ipr@haynesboone.com
`
`Attorneys for Petitioner,
`APPLE INC.
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`3
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`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`CERTIFICATE OF SERVICE
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`I hereby certify that “Joint Request to Keep Separate” was served on March
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`15, 2024 by email sent to:
`
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`98 San Jacinto Blvd., Suite 1500
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
`Andrew S. Ehmke
`Jordan Maucotel
`Stephanie N. Sivinski
`HAYNES AND BOONE, LLP
`2801 N. Harwood St., Suite 2300
`Dallas, TX 75201
`Telephone: 214-651-5000
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: stephanie.sivinski.ipr@haynesboone.com
`
` /Neil A. Rubin/
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