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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
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`v.
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`MASIMO CORPORATION,
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`Patent Owner
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`Case IPR2022-01299
`U.S. Patent 7,761,127
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`JOINT AGREEMENT REGARDING PROCEDURE FOR OBJECTING TO
`SEALED EXHIBITS FILED PRE-INSTITUTION
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`The Board instituted trial in the present proceeding on February 1, 2023. See
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`Paper 21. 37 C.F.R. § 42.64(b)(1) provides that “[a]ny objection to evidence
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`submitted during a preliminary proceeding must be filed within ten business days of
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`the institution of the trial” and “[o]nce a trial has been instituted, any objection must
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`be filed within five business days of service of evidence to which the objection is
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`directed.”
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`Patent Owner (Masimo Corp.) filed a number of confidential exhibits with its
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`Preliminary Response. The confidential exhibits were filed under seal and have
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`remained under seal pending resolution of Patent Owner’s Renewed Motion to Seal
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`and for Entry of a Protective Order, which was filed on November 22, 2022.
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`Petitioner (Apple Inc.) has not yet been served the confidential exhibits, nor has
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`Petitioner been provided access to the sealed exhibits.
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`In view of the present circumstances, the parties conferred by email on
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`February 7-8 and agreed to a proposal by Masimo as follows:
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`(1) Masimo will waive the requirement to file objections to the sealed
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`exhibits within 10 business days of institution and to allow Apple to file,
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`within five business days of service of Masimo’s Patent Owner Response,
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`objections to any sealed exhibits Masimo relies on in its POR, and
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`(2) any sealed exhibits that Masimo does not rely on in its Patent Owner’s
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`Response will be deemed to be withdrawn from the record.
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`1
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`Petitioner emailed the Board on February 8, 2023 to request clarification
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`regarding Petitioner’s ability to offer timely objections to the confidential exhibits
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`that remain inaccessible to Petitioner. See EX3002. Petitioner’s email referenced
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`agreement to the above proposal, and the Board on February 9, 2023 authorized the
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`parties to jointly file a copy of the agreement. Id. The parties jointly file this paper
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`pursuant to the Board’s authorization.
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`Dated: 02/13/2023
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`Dated: 02/13/2023
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`Respectfully submitted,
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`/Nicholas W. Stephens/
`Nicholas Stephens, Reg. No. 74,320
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`Fish & Richardson P.C.
`Attorney for Petitioner Apple Inc.
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`/Ted M. Cannon/
`Ted M. Cannon, Reg. No. 55,036
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`Knobbe, Martens, Olson & Bear, LLP
`Attorney for Patent Owner Masimo Corp.
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`(Control No. IPR2022-01299)
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`Case No. IPR2022-01299
`Attorney Docket No: 50095-0046IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on
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`February 13, 2023, a complete and entire copy of this Joint Agreement Regarding
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`Procedure for Objecting to Sealed Exhibits Filed Pre-Institution was provided by
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`email to the Patent Owner by serving the email correspondence addresses of record
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`as follows:
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`Irfan A. Lateef (Reg. No. 51,922)
`Ted M. Cannon (Reg. No. 55,036)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614 Tel.: (949) 760-0404
`Fax: (949) 760-9502
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`E-mail: AppleIPR127-1@knobbe.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
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