`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 petitions for inter partes review (IPR) being filed with the Patent Trial
`and Appeal Board (PTAB) to address claims of U.S. Patent No. 10,631,765. The table below
`lists grounds asserted by Apple in IPR petitions 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.
`10,631,765
`IPR2020-01714 1-8, 10-13, 15-16,
`20-29
`9
`
`14
`
`Grounds
`Mendelson-799 in view of Ohsaki,
`Schulz, and Mendelson-2006
`Mendelson-799 in view of Ohsaki,
`Schulz, Mendelson-2006, and
`Bergey
`Mendelson-799 in view of Ohsaki,
`Schulz, Mendelson-2006, and
`Goldsmith
`
`1
`
`APPLE 1032
`
`
`
`
`
`
`September 30, 2020
`Page 2
`
`
`
`
`
`Patent No. Proceeding No.
`
`
`
`Claims
`17-19
`
`Grounds
`Mendelson-799 in view of Ohsaki,
`Schulz, Mendelson-2006, and
`Aizawa
`IPR2020-01715 1-8, 10-13, 15-29 Aizawa in view of Inokawa, Ohsaki,
`and Mendelson-2006
`Aizawa in view of Inokawa, Ohsaki,
`Mendelson-2006, and Bergey
`Aizawa in view of Inokawa, Ohsaki,
`Mendelson-2006, and Goldsmith
`
`
`
`
`
`
`
`
`
`
`
`9
`
`14
`
`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
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`September 30, 2020
`Page 3
`
`
`
`Appendix – Prior Art References Used in the Listed Grounds
`
`
`Reference Name Details
`Mendelson-799
`U.S. Patent No. 6,801,799
`Ohsaki
`U.S. Pub. No. 2001/0056243
`Schulz
`U.S. Pub. No. 2004/0054291
`Mendelson-2006
`“A Wearable Reflectance Pulse Oximeter for Remote Physiological
`Monitoring,” Y. Mendelson, et al.; Proceedings of the 28th IEEE
`EMBS Annual International Conference, 2006; pp. 912-915
`U.S. Patent No. 3,789,601
`U.S. Pub. No. 2007/0093786
`U.S. Pub. No. 2002/0188210
`JP 2006-296564
`
`Bergey
`Goldsmith
`Aizawa
`Inokawa
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
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