From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Nicholas Stephens
`IPR50095-0046IP1; Ted Cannon; AppleIPR127-1; Trials
`RE: IPR2022-01299 - Request for Clarification re Sealed Exhibits
`Thursday, February 9, 2023 12:22:02 PM
`
`Counsel,
`
`From the Board –
`
`The parties are authorized to jointly file a copy of the agreement proposed in Petitioner’s February 8 email.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Wednesday, February 8, 2023 6:42 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR50095-0046IP1 <IPR50095-0046IP1@fr.com>; Ted Cannon <Ted.Cannon@knobbe.com>; AppleIPR127-1 <AppleIPR127-1@knobbe.com>
`Subject: IPR2022-01299 - Request for Clarification re Sealed Exhibits
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
`
`
`
`Honorable Board,
`
`Petitioner respectfully requests clarification as to the state of the record in the subject proceeding. The Board instituted trial on February 1, 2023,
`and pursuant to 37 CFR 42.64(b)(1), the parties are afforded ten business days from institution to file objections to evidence submitted during the
`pre-institution phase of the proceeding. Here, the deadline for filing objections to evidence submitted pre-institution would apparently fall on
`February 15, 2023.
`
`Patent Owner filed a set of exhibits with its POPR under seal, which are said to contain confidential information, and which were made accessible
`only to the Patent Owner and the Board (“confidential exhibits”). Patent Owner also filed a Renewed Motion to Seal on November 22, 2022, and
`briefing on the Renewed Motion was completed in January. However, while the Renewed Motion is pending, Petitioner has not been served the
`sealed exhibits, nor has Petitioner been provided access to the sealed exhibits to assess whether they may have objectionable material in them.
`
`In view of the present circumstances, Petitioner seeks clarification as to how Petitioner may fairly evaluate the sealed exhibits for objectionable
`material and file any objections in a timely manner.
`
`The parties have conferred by email and Masimo offered the following proposal:
`
`
`“With respect to the sealed exhibits, Masimo would agree (1) to waive the requirement to file objections to the sealed exhibits within 10
`business days of institution and to allow Apple to file, within five business days of service of Masimo’s Patent Owner Response, objections
`to any sealed exhibits Masimo relies on in its POR and (2) that any sealed exhibits that Masimo does not rely on in its POR will be deemed
`to be withdrawn from the record.”
`
`
`Apple believes Masimo’s proposal is reasonable and would agree to abide by the proposal if authorized by the Board. Alternatively, to the extent
`that entry of a protective order triggers a requirement for service of the confidential information upon Petitioner to gain entry of the same into
`the record, 37 CFR 42.64(b)(1) permits five business days for consideration and filing of objections by Petitioner.
`
`To the extent the Board believes a call would be helpful, the parties will provide their availability.
`
`Best Regards,
`Nick
`
`Counsel for Petitioner Apple Inc.
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
`

`

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