From:
`To:
`Cc:
`Subject:
`Date:
`
`Ted Cannon
`Trials
`IPR50095-0046IP1; AppleIPR127-1
`IPR2022-01299 - Apple v. Masimo - withdrawal of and request to expunge confidential documents
`Friday, February 24, 2023 3:05:59 PM
`
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`
`Dear Board:
`
`Pursuant to the Board’s February 17, 2023 Order (Paper 27), Patent Owner Masimo has filed a
`revised protective order removing the prosecution bar provision of paragraph 4.B. In addition
`to not entering the proposed prosecution bar in the February 17, 2023 Order, the Board in its
`Institution Decision declined to consider Masimo’s objective evidence of non-obviousness
`based on the Board’s finding that such evidence “is not sufficiently developed on the present
`record” and the Board’s “understanding of the claim terms.” Inst. Dec. (Paper 21) at 35 n.9.
`Almost all of the confidential information Masimo has filed is directed to the objective
`evidence of non-obviousness.
`
`In view of these circumstances, Masimo withdraws its filed confidential information and
`requests expungement of its confidential exhibits and confidential POPR. See Consolidated
`Trial Practice Guide at 20 (“If a motion for a protective order is not granted, the party
`submitting the confidential information will have the opportunity to have the submitted
`information expunged from the record.”)
`
`Counsel for the parties have conferred by email and Apple does not oppose Masimo’s
`request. If the Board desires to have a conference call, counsel for the parties are available
`for such a call between 1:00 pm and 5:00 pm ET on Monday, February 27, Thursday, March 2,
`or Friday, March 3.
`
`The confidential documents Masimo withdraws and requests to be expunged are: the
`confidential version of the POPR (Paper 9), the confidential versions of Exhibits 2002, 2051,
`and 2081, and Exhibits 2003, 2004, 2006, 2007, 2009, 2010, 2012-2021, 2027, 2028, 2031-
`2033, 2057, 2058, and 2082. If the Board desires, Masimo will file a formal withdrawal and
`request for expungement of these documents.
`
`Respectfully,
`
`Ted Cannon
`Counsel for Patent Owner
`
`IPR2022-01299
`Ex. 3003
`
`

`

`Ted M. Cannon
`Partner
`Ted.Cannon@knobbe.com
`949-721-2897 Direct
`Knobbe Martens
`2040 Main St., 14th Fl.
`Irvine, CA 92614
`www.knobbe.com/ted-cannon
`
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