`Direct: +1 212.351.2339
`Fax: +1 212.817.9539
`BRosenthal@gibsondunn.com
`
`September 8, 2020
`
`VIA E-MAIL
`
`Joseph R. Re
`Stephen C. Jensen
`Perry D. Oldham
`Stephen W. Larson
`Knobbe, Martens, Olson & Bear LLP
`2040 Main Street
`Irvine, CA 92614
`
`Re: Masimo Corporation et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.)
`
`Dear Counsel:
`
`We write regarding a petition for inter partes review (IPR) being filed with the Patent Trial
`and Appeal Board (PTAB) to address claims of U.S. Patent No. 8,457,703. The table below
`lists grounds asserted by Apple in an IPR petition challenging claims of this patent, along
`with the implicated claims against which each ground is asserted. We write to inform you
`that Apple hereby stipulates that in the event the PTAB institutes an inter partes review
`including a ground listed in the table against the corresponding claims listed in the table for
`that ground (“Instituted Ground”), Apple will not assert that Instituted Ground against the
`corresponding claims listed in the table for that ground in the above captioned litigation
`(8:20-cv-00048).
`
`Patent
`No.
`8,457,703
`
`Claims
`
`Proceeding
`No.
`IPR2020-01523 9-10, 12-14, 20,
`22-24
`11, 21
`1-7, 15-18
`9-10, 12-14, 20,
`22-24
`
`Grounds
`
`Diab in view of Amano
`
`Diab in view of Amano and Edgar
`Diab in view of Amano and Turcott
`Diab in view of the General
`Knowledge of a POSITA (GK-
`POSITA)
`
`1
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`APPLE 1032
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`September 8, 2020
`Page 2
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`Patent
`No.
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`Proceeding
`No.
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`
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`Claims
`
`Grounds
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`11, 21
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`1-7, 15-18
`
`9-10, 12-14, 20,
`22-24
`1-3, 15-17
`
`Diab in view of GK-POSITA and
`Edgar
`Diab in view of GK-POSITA and
`Turcott
`Amano
`
`Amano in view of Turcott
`
`
`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of these
`claims based on the Instituted Grounds. Rather, consistent with Congressional intent,
`through this stipulation, Apple expresses its intention to have only the PTAB address the
`Instituted Grounds of invalidity of these claims. But, for the sake of clarity and to avoid any
`doubt, if the PTAB declines to institute any of the grounds identified herein, Apple reserves
`the right to assert such grounds in this litigation. Additionally, even in the event of
`institution, Apple reserves its rights to continue to assert all grounds other than Instituted
`Grounds.
`
`
`
`
`
`Sincerely,
`
`Brian Rosenthal
`
`
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`2
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`September 8, 2020
`Page 3
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`
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`Appendix – Prior Art References Used in the Listed Grounds
`
`
`Reference Name Details
`Amano
`U.S. Patent No. 6,293,915
`Edgar
`U.S. Patent No. 6,393,311
`Turcott
`U.S. Patent No. 6,527,729
`Diab
`U.S. Patent No. 5,632,272
`
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`3
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