`Direct: +1 212.351.2339
`Fax: +1 212.817.9539
`BRosenthal@gibsondunn.com
`
`September 30, 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. 10,624,564. 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).
`
`Claims
`Patent No. Proceeding No.
`10,624,564
`IPR2020-01713 1-10 and 13-30
`
`11
`
`12
`
`1-10 and 13-30
`
`Grounds
`Aizawa in view of Ohsaki and
`Goldsmith
`Aizawa in view of Ohsaki,
`Goldsmith, and Sherman
`Aizawa in view of Ohsaki,
`Goldsmith, and Rantala
`Aizawa in view of Ohsaki,
`Goldsmith, and Ali
`
`1
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`APPLE 1032
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`September 30, 2020
`Page 2
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`Patent No. Proceeding No.
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`Claims
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`11
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`12
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`Grounds
`Aizawa in view of Ohsaki,
`Goldsmith, Ali, and Sherman
`Aizawa in view of Ohsaki,
`Goldsmith, Ali, and Rantala
`
`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 30, 2020
`Page 3
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`Appendix – Prior Art References Used in the Listed Grounds
`
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`Reference Name Details
`Aizawa
`U.S. Pub. No. 2002/0188210
`Ohsaki
`U.S. Pub. No. 2001/0056243
`Goldsmith
`U.S. Pub. No. 2007/0093786
`Rantala
`U.S. Patent No. 6.912,413
`Ali
`U.S. Patent No. 6,584,336
`Sherman
`U.S. Patent No. 4,941,236
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`3
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