`Direct: +1 212.351.2339
`Fax: +1 212.817.9539
`BRosenthal@gibsondunn.com
`
`August 31, 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 claim 15 of U.S. Patent No. 6,771,994. The table
`below lists grounds asserted by Apple in an IPR petition challenging claim 15 of this patent.
`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 claim 15 (“Instituted
`Ground”), Apple will not assert that Instituted Ground against claim 15 as listed in the table
`for that ground in the above captioned litigation (8:20-cv-00048).
`
`Patent
`No.
`6,771,994
`
`Proceeding
`No.
`IPR2020-01526 15
`15
`15
`15
`
`Claim
`
`Grounds
`
`Diab in view of Benjamin and Melby
`Webster in view of Melby
`Fine
`Fine in view of Benjamin and Melby
`
`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
`
`1
`
`APPLE 1032
`
`
`
`
`
`
`August 31, 2020
`Page 2
`
`
`
`
`institution, Apple reserves its rights to continue to assert all grounds other than Instituted
`Grounds.
`
`
`
`
`
`Sincerely,
`
`Brian Rosenthal
`
`
`
`
`
`
`2
`
`
`
`
`
`
`August 31, 2020
`Page 3
`
`
`
`Appendix – Prior Art References Used in the Listed Grounds
`
`
`Reference Name Details
`Diab
`U.S. Patent No. 5,638,818
`Benjamin
`U.S. Patent No. 4,015,595
`Melby
`U.S. Patent No. 5,254,388
`Webster
`Design of Pulse Oximeters, J.G. Webster; Institution of Physics
`Publishing, 1997
`WO Pub. No. 1996/41566
`
`Fine
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
