`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Counsel,
`
`Daniel Kiang <Daniel.Kiang@knobbe.com>
`Monday, February 13, 2023 4:46 PM
`Nicholas Stephens
`PTAB Inbound; AppleIPR745-1; IPR50095-0045IP1; Kim Leung
`RE: Request for Discovery - IPR2022-01291
`
`We disagree with your assertion that a conference call with the Board would be premature. As we noted below, the
`parties already met and conferred on this discovery months ago. We are simply renewing our request as the Board
`permitted.
`
`Your original email on February 8 sought only an identification of the evidence, which we promptly provided. You did
`not request information about how that information would be useful until this morning. Again, we promptly provided
`that information by directing you to specific pages of briefing in the ITC and the ITC’s Initial Determination showing how
`that evidence was already used. We discern no basis for Apple to demand further categorization of each piece of
`evidence by purpose (e.g., copying, commercial success, etc.) as a prerequisite to a conference call with the Board, nor
`do we see how an exhaustive categorization would even be possible given that the information remains under ITC
`protective order. Indeed, Apple did not previously request such an itemization when we last conferred with the Board
`regarding this discovery. The public briefing demonstrates that the evidence exists and that Masimo relied on it to show
`nonobviousness.
`
`Contrary to your assertion, we have already completed a meet and confer process in good faith. Indeed, we have
`answered all your questions and are not aware of any additional pending questions. We also offered Apple a time to
`discuss any additional questions you may have, but Apple ignored that request and did not propose another
`time. Accordingly, we understand that the meet and confer process is complete. However, Apple has not responded to
`Masimo’s question regarding whether Apple would object to evidence from the ITC as hearsay and whether it would
`make the identified Apple witnesses available for deposition if Apple were to so object. Please set forth your position on
`that issue before the call with the Board.
`
`We also disagree with your changes to the final paragraph of the proposed email to the Board. We will be emailing the
`Board as follows:
`
`Dear Board,
`
`Pursuant to Paper 9 in IPR2022‐01291, Patent Owner respectfully renews its request for authorization to file a
`motion for additional discovery under 37 C.F.R. § 42.51(b)(2) in IPR2022‐01291 and IPR2022‐01465 (and
`potentially IPR2022‐01466, if instituted). Patent Owner seeks information relevant to objective indicia of
`nonobviousness and reasonable expectation of success that was previously produced and relied on in a related
`ITC proceeding between the parties. The requested information is covered by an ITC protective order and is not
`publicly available.
`
`Patent Owner has conferred with Petitioner regarding this request. Petitioner has indicated opposition of the
`motion, pending receipt of clarifying details for items identified as targets for discovery, most notably an
`indication of the basis for Masimo’s belief that the item will be “useful” with respect to Garmin factor 1, and
`specifically what contention each requested item is believed to be favorable to proving (e.g., alleged copying,
`commercial success, nexus, etc.). Petitioner contends that a call with the Board is premature. Patent Owner
`disagrees with Petitioner’s contention. Patent Owner has already provided Petitioner with a specific list of
`
`1
`
`APPLE 1034
`Apple v. Masimo
`IPR2022-01291
`
`
`
`evidence sought and has already directed Petitioner to specific pages within the public ITC briefing and ITC Initial
`Determination citing the requested evidence to demonstrate nonobviousness of the ’745 Patent claims.
`
`
`The parties are available for a conference call between Tuesday and Friday this week, between 12pm‐5pm
`Eastern.
`
`
`
`Best regards,
`Daniel
`
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Monday, February 13, 2023 1:49 PM
`To: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <Leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`
`
`Counsel,
`
`
`Your draft email to the Board mischaracterizes our interaction, as Masimo has not engaged in and completed a meet
`and confer process in good faith with Apple on this issue. Rather, Masimo offered an initial request that lacked even a
`list of items, which Masimo apparently possessed. And, in offering in response to a request for more information, detail
`regarding the target of its discovery, Masimo still omitted information necessary for Apple to make an informed decision
`on whether to oppose the solicited motion for discovery.
`
`
`Most notably, at the close of business on Wednesday, February 8th, we received for the first time an itemized list of
`documents that Masimo would seek through discovery, each recognized by Masimo as covered by the ITC protective
`order and not publicly available. This morning, just two business days after receiving the list, we ask for an indication of
`the basis for Masimo’s apparent belief that the item will be “useful” with respect to Garmin factor 1, and specifically
`what contention each requested item is believed to be favorable to proving (e.g., alleged copying, commercial success,
`nexus, etc.). To which, we receive your reply.
`
`
`Apple remains without sufficient information to assess whether Masimo’s discovery request is justified under the PTAB
`rules and jurisprudence governing motions to discover. To be clear, without more from Masimo, Apple must therefore
`oppose the request for authorization to file a discovery motion. A call with the Board would therefore be premature and
`a waste of Board resources at this time.
`
`If reaching out to the Board, Apple asks Masimo to change the final paragraph as follows:
`
`
`“Patent Owner and Petitioner are meeting and conferring regarding this request. Petitioner has indicated
`opposition of the motion, pending receipt of clarifying details for items identified as targets for discovery, most
`notably an indication of the basis for Masimo’s belief that the item will be “useful” with respect to Garmin factor
`1, and specifically what contention each requested item is believed to be favorable to proving (e.g., alleged
`
`2
`
`
`
`copying, commercial success, nexus, etc.). Petitioner believes a call is premature at this point, but Patent Owner
`and Petitioner are each available for a conference call between Tuesday and Friday this week.”
`
`
`
`Best regards,
`Nick
`
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`
`From: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Sent: Monday, February 13, 2023 12:29 PM
`To: Nicholas Stephens <nstephens@fr.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <Leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`Counsel,
`
`
`We see no reason to further delay a conference call with the Board. We already met and conferred regarding this
`discovery prior to institution. The Board also stated in its September 28, 2022 order that “Patent Owner may renew its
`request [to file a motion for additional discovery] at a later time.” IPR2022‐01291, Paper 9 at 3. The Institution Decision
`also noted that “the preliminary record [regarding objective indicia] before us does not appear complete on the matter”
`and that “[t]he parties may further address objective indicia of nonobviousness during trial.” IPR2022‐01291, Institution
`Decision at 15 n.10. Thus, the Board is already anticipating Masimo will renew its request and is expecting the parties to
`further address objective indicia.
`
`In your February 8 email, you requested that Masimo identify the information it is seeking before you would schedule a
`call between the parties. We responded to your email on the same day with a specific list of items we are seeking. Five
`days later, you are now asking for additional information about how that evidence would be “useful” before you will let
`us know of your availability for a call. As you know, Masimo already extensively briefed objective evidence of
`nonobviousness and reasonable expectation of success in the ITC. The ITC Initial Determination found the ’745 Patent
`claims valid. You may review the public ITC briefing and the ITC Initial Determination to see how that information was
`used. The relevant page numbers were already cited in our February 8 email. Masimo’s public opening and reply ITC
`briefs were provided as Exhibits 2011 and 2051, respectively. The public Initial Determination is too large to send by
`email, but you may download it from the ITC’s Electronic Document Information System (EDIS) at Doc. ID 789795. If you
`have any further questions, we are available for a call today between 2pm‐6pm Eastern.
`
`
`Please let us know of your availability for a call with the Board this week by no later than 5pm Eastern today. If you do
`not provide us with your availability by then, we will propose the times listed in the draft email below:
`
`
`Dear Board,
`
`
`Pursuant to Paper 9 in IPR2022‐01291, Patent Owner respectfully renews its request for authorization to file a
`motion for additional discovery under 37 C.F.R. § 42.51(b)(2) in IPR2022‐01291 and IPR2022‐01465 (and
`potentially IPR2022‐01466, if instituted). Patent Owner seeks information relevant to objective indicia of
`nonobviousness and reasonable expectation of success that was previously produced and relied on in a related
`ITC proceeding between the parties. The requested information is covered by an ITC protective order and is not
`publicly available.
`
`
`Patent Owner has conferred with Petitioner regarding this request. Petitioner has not indicated whether it will
`consent or oppose the motion. Patent Owner is available for a conference call between Tuesday and Friday this
`week, between 12pm‐5pm Eastern.
`
`3
`
`
`
`
`Best regards,
`Daniel
`
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Monday, February 13, 2023 6:41 AM
`To: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <Leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`
`
`Daniel,
`
`
`The Board’s precedential decision in Garmin Int’l v. Cuozzo Speed Techs. LLC, IPR2012‐00001, Paper 26 (PTAB March 5,
`2013) sets forth a set of factors that the Board considers when weighing a motion for additional discovery. The first
`factor requires “more than a possibility and mere allegation” that something “useful” will be obtained from additional
`discovery. Id., at 6. Under Garmin, “ [u]seful’ … does not mean merely ‘relevant’ and/or ‘admissible’’’ but instead
`“means favorable in substantive value to a contention of the party moving for discovery.” Id., at 7 (emphasis added).
`
`
`Beyond the broad assertion that Masimo’s request relates to secondary considerations and reasonable expectation of
`success, the utility of the requested information identified in your email below remains unclear. We do not fully
`understand why Masimo believes each of the items listed below would allegedly be “useful” under Garmin. Accordingly,
`for each requested item, would you please let us know the basis for Masimo’s apparent belief that the item will be
`“useful” with respect to Garmin factor 1, and specifically what contention each requested item is believed to be
`favorable to proving (e.g., alleged copying, commercial success, nexus, etc.)?
`
`
`As indicated last week, we hope to quickly advance the conferral process, but we believe a Board call would be
`premature at the moment. Further explanation on the above items will help us to better consider the request and
`formulate a position on the same.
`
`
`Best regards,
`Nick
`
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`
`From: Nicholas Stephens
`Sent: Friday, February 10, 2023 9:49 PM
`To: 'Daniel Kiang' <Daniel.Kiang@knobbe.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`4
`
`
`
`Daniel,
`
`
`Thank you for your email. We have been considering the list that you provided on Wednesday, but as you know, the
`identified items appear to encompass a significant number of confidential documents from the ITC proceeding. We are
`in the process of conferring with our client and I expect to get back to you with further information on Monday.
`
`
`Best regards,
`Nick
`
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`
`From: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Sent: Friday, February 10, 2023 1:27 PM
`To: Nicholas Stephens <nstephens@fr.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <Leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`Counsel,
`
`
`Please let us know your position on the issues below by the end of today. Please also let us know your availability for a
`conference call with the Board next week regarding Masimo’s motion for additional discovery. We are generally
`available for a conference call with the Board Tuesday through Friday next week between 9am‐2pm Pacific/12pm‐5pm
`Eastern.
`
`
`Best regards,
`Daniel
`
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`From: Daniel Kiang
`Sent: Wednesday, February 8, 2023 4:11 PM
`To: Nicholas Stephens <nstephens@fr.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <Leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`Nick,
`
`
`Thank you for your email. Masimo is seeking the following documents:
` Unredacted versions of the parties’ opening and reply ITC post‐hearing briefs
` Unredacted version of the January 10, 2023 Final Initial Determination on Violation of Section 337
`
`ITC hearing testimony transcripts for Stephen Waydo, Paul Mannheimer, Vivek Venugopal, Brian Land, and
`Daniel McGavock
`ITC deposition testimony for Stephen Waydo (CX‐0299C), Paul Mannheimer (CX‐0289C), Tao Shui (CX‐0295C),
`Mathieu Charbonneau‐Lefort (CX‐0283C), and Aditya Dua (CX‐0285C)
`
`
`
`5
`
`
`
`
`
` The following ITC hearing exhibits:
`o CX‐0006C, CX‐0007C, CX‐0092C, CX‐0094C, CX‐0096C, CX‐0097C, CX‐0125C, CX‐0126C, CX‐0127C, CX‐
`0132C, CX‐0133C, CX‐0134C, CX‐0175C, CX‐0177C, CX‐0185C, CX‐1539C, CX‐1615C, CX‐1643C, CX‐1646C,
`CX‐1647C, CX‐1711C, CX‐1771C, CX‐1789C, CX‐1790C, CX‐1793C, CX‐1800C, RX‐0396C
`In addition to the above exhibits, any other exhibits or fact witness testimony that were cited in the following
`pages of these ITC filings, including where the citations may have been redacted in the public filings:
`o Masimo’s Corrected Initial Post‐Hearing Brief at 165‐175, 219‐220, 230, 233‐234
`o Masimo’s Reply Post‐Hearing Brief at 85‐90, 94‐96, 125, 128‐129, and 132‐133
`o Final Initial Determination at 149‐156, 218‐220, 228‐231
`
`
`
`To be clear, Masimo does not intend to seek discovery beyond the evidentiary record in the ITC investigation. The only
`exception would be if Apple were to object to any evidence from the ITC proceeding as hearsay on the basis that it was
`testimony provided in another proceeding outside of this IPR. If Apple were to object to the evidence on that basis,
`Masimo would also request that Apple make Mssrs. Waydo, Mannheimer, Venugopal, Land, Shui, Charbonneau‐Lefort,
`and Dua available for deposition. We believe the parties can avoid the need for additional depositions of Apple
`employees by agreeing that the parties will not object to any evidence from the ITC as hearsay on the basis that it was
`provided in the ITC proceeding. Please let us know if you will agree to that proposal.
`
`
`Finally, our original email was sent before the Board instituted the related IPR2022‐01465. We also intend that the
`motion for discovery would be applicable to that IPR (as well as IPR2022‐01466, if that IPR is instituted).
`
`
`Best regards,
`Daniel
`
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Wednesday, February 8, 2023 9:10 AM
`To: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>; IPR50095‐0045IP1
`<IPR50095‐0045IP1@fr.com>; Kim Leung <Leung@fr.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`
`
`Hi Daniel,
`
`
`We believe it would be useful to work toward a call between the parties, but before engaging by telephone, it would be
`helpful if you could clarify specifically what information Masimo seeks through this discovery request.
`
`
`The email states that “Masimo seeks information relevant to objective indicia of non‐obviousness and reasonable
`expectation of success, including evidence identified in the publicly available materials of the related ITC proceeding but
`which is not otherwise publicly available.” The “including” language leaves the request open‐ended. It was unclear to
`us whether Masimo seeks additional information beyond “evidence identified in the publicly available [ITC] materials” or
`whether you intended to expand the scope of the request beyond that which Masimo previously requested in the fall of
`2022. The publicly available ITC record is also quite extensive, and it is unclear what specific materials from the ITC
`record, or what specific evidence within such materials, Masimo seeks through discovery.
`
`6
`
`
`
`
`
`We would appreciate your best efforts to specifically and exhaustively identify the information that Masimo seeks to
`discover. We’re hoping that this won’t create much delay, as we’re interested in moving quickly toward a call with this
`information in hand.
`
`
`Best regards,
`Nick
`
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Tuesday, February 07, 2023 7:09 PM
`To: Daniel Kiang <Daniel.Kiang@knobbe.com>; IPR50095‐0045IP1 <IPR50095‐0045IP1@fr.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`Hi Daniel,
`
`
`As a brief follow‐up to my email from yesterday, we are continuing to confer with our client on this issue. We expect to
`reply with additional information by tomorrow (Wednesday) or Thursday latest.
`
`
`Best regards,
`Nick
`
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Monday, February 06, 2023 8:15 AM
`To: Daniel Kiang <Daniel.Kiang@knobbe.com>; IPR50095‐0045IP1 <IPR50095‐0045IP1@fr.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>
`Subject: RE: Request for Discovery ‐ IPR2022‐01291
`
`
`Daniel,
`
`
`We are in receipt of your email. We are conferring with our client regarding the request and will respond in substance
`by tomorrow.
`
`
`Best regards,
`Nick
`
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`
`From: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Sent: Friday, February 03, 2023 2:54 PM
`To: IPR50095‐0045IP1 <IPR50095‐0045IP1@fr.com>
`Cc: PTAB Inbound <PTABInbound@fr.com>; AppleIPR745‐1 <AppleIPR745‐1@knobbe.com>
`Subject: Request for Discovery ‐ IPR2022‐01291
`
`7
`
`
`
`
`
`
`
`[This email originated outside of F&R.]
`
`
`
`Counsel,
`
`
`Pursuant to the Board’s September 28, 2022 order, Masimo intends to renew its request to file a motion for additional
`discovery under 37 C.F.R. § 42.51(b)(2) in IPR2022‐01291. Masimo seeks information relevant to objective indicia of
`non‐obviousness and reasonable expectation of success, including evidence identified in the publicly available materials
`of the related ITC proceeding but which is not otherwise publicly available. Please let us know if Apple intends to
`oppose the motion. Please also let us know of your availability next week for a proposed conference call with the
`Board. We are available on Tuesday through Friday next week (2/7‐2/10) between 9am and 2pm Pacific.
`
`
`Best regards,
`Daniel
`
`
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender
`by reply email and destroy all copies of the original message.
`
`
`
`***************************************************************************************************
`*************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential
`and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the
`intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
`***************************************************************************************************
`*************************
`
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender
`by reply email and destroy all copies of the original message.
`
`
`
`***************************************************************************************************
`*************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential
`and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the
`intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
`***************************************************************************************************
`*************************
`
`
`8
`
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender
`by reply email and destroy all copies of the original message.
`
`
`
`***************************************************************************************************
`*************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential
`and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the
`intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
`***************************************************************************************************
`*************************
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender
`by reply email and destroy all copies of the original message.
`
`9
`
`
`
`Nicholas Stephens
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Daniel Kiang <Daniel.Kiang@knobbe.com>
`Monday, February 13, 2023 4:49 PM
`'Trials@USPTO.GOV'
`IPR50095-0045IP1; AppleIPR745-1; AppleIPR745-3; AppleIPR745-4; IPR50095-0045IP3;
`IPR50095-0045IP4
`IPR2022-01291, -01465 (and potentially -01466) - Request for Authorization to File
`Motion for Additional Discovery
`
`[This email originated outside of F&R.]
`
`
`Dear Board,
`
`
`Pursuant to Paper 9 in IPR2022‐01291, Patent Owner respectfully renews its request for authorization to file a motion
`for additional discovery under 37 C.F.R. § 42.51(b)(2) in IPR2022‐01291 and IPR2022‐01465 (and potentially IPR2022‐
`01466, if instituted). Patent Owner seeks information relevant to objective indicia of nonobviousness and reasonable
`expectation of success that was previously produced and relied on in a related ITC proceeding between the parties. The
`requested information is covered by an ITC protective order and is not publicly available.
`
`
`Patent Owner has conferred with Petitioner regarding this request. Petitioner has indicated opposition of the motion,
`pending receipt of clarifying details for items identified as targets for discovery, most notably an indication of the basis
`for Masimo’s belief that the item will be “useful” with respect to Garmin factor 1, and specifically what contention each
`requested item is believed to be favorable to proving (e.g., alleged copying, commercial success, nexus, etc.). Petitioner
`contends that a call with the Board is premature. Patent Owner disagrees with Petitioner’s contention. Patent Owner
`has already provided Petitioner with a specific list of evidence sought and has already directed Petitioner to specific
`pages within the public ITC briefing and ITC Initial Determination citing the requested evidence to demonstrate
`nonobviousness of the ’745 Patent claims.
`
`
`The parties are available for a conference call between Tuesday and Friday this week, between 12pm‐5pm
`Eastern. Petitioner’s counsel is copied on this email.
`
`
`Best regards,
`Daniel
`
`
`Daniel Kiang
`Partner
`949-721-5205 Direct
`Knobbe Martens
`
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender
`by reply email and destroy all copies of the original message.
`
`1
`
`10
`
`