Trials
`Daniel Kiang; Trials
`IPR50095-0046IP1; IPR50095-0045IP1; IPR50095-0045IP3; AppleIPR745-1; AppleIPR745-3; AppleIPR127-1
`RE: IPR2022-01291, -01465, -01299 | Preservation of record and extension of time to file motion to expunge
`confidential information
`Thursday, March 7, 2024 8:10:41 AM
`
`From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Counsel,
`
`From the Board –
`
`As applied to each of IPR2022-01299, IPR2022-01291, and IPR2022-01465:
`
`(1) the record will be preserved with confidential information remaining under seal through the end
`of any appeals; and
`(2) the deadline to file a motion to expunge confidential information is extended to:
`(a) if no Notice of Appeal to the Federal Circuit is filed, then 45 days after the deadline for
`filing such a Notice; or
`(b) if a Notice of Appeal to the Federal Circuit is filed, then 45 days after the case is returned
`to the USPTO post-mandate.
`
`The Board will add a copy of this e-mail communication to the record of each proceeding as an
`Exhibit.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Daniel Kiang <Daniel.Kiang@knobbe.com>
`Sent: Wednesday, March 6, 2024 1:42 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR50095-0046IP1 <IPR50095-0046IP1@fr.com>; IPR50095-0045IP1 <IPR50095-
`0045IP1@fr.com>; IPR50095-0045IP3 <IPR50095-0045IP3@fr.com>; AppleIPR745-1 <AppleIPR745-
`1@knobbe.com>; AppleIPR745-3 <AppleIPR745-3@knobbe.com>; AppleIPR127-1 <AppleIPR127-
`1@knobbe.com>
`Subject: RE: IPR2022-01291, -01465, -01299 | Preservation of record and extension of time to file
`motion to expunge confidential information
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`Exhibit 3008
`
`

`

`I write regarding clarification of the Board’s February 15, 2024 email in IPR2022-01299 and the
`preservation of confidential information in IPR2022-01299, IPR2022-01291, and IPR2022-01465.
`The briefs and exhibits in these three IPRs contain Apple’s and Masimo’s confidential information.
`Confidential information that is subject to a protective order will ordinarily become public “45 days
`after final judgment in a trial” unless a motion to expunge is filed. Consolidated Trial Practice Guide
`(Nov. 2019) at 22. The deadline to file a notice of appeal after an IPR is 63 days after the date of the
`final Board decision. 37 C.F.R. § 90.3(a)(1). Masimo is currently evaluating its options regarding
`appeal.
`
`In IPR2022-01299, the Board recently stated in an email that “confidential information will remain
`undisturbed pending any appeal, after which time, a party may file a motion to expunge the
`information from the record prior to the information becoming public.” Could the Board please
`confirm our understanding of the Board’s email to mean that in IPR2022-01299: (1) the record will
`be preserved with confidential information remaining under seal through the end of any appeals and
`(2) the deadline to file a motion to expunge confidential information will be extended until 45 days
`after all appeal rights have been exhausted and the case is returned to the USPTO post-mandate?
`
`Assuming our understanding is correct, the parties have already conferred and would like to jointly
`request the same preservation of the record and extension to file a motion to expunge confidential
`information in IPR2022-01291 and IPR2022-01465. The parties do not believe that a formal motion
`is necessary, but if the Board desires, the parties are willing to file a joint motion requesting such
`relief. The parties can also provide their availability for a teleconference with the Board if requested.
`
`Petitioner’s counsel is copied on this email.
`
`Best regards,
`Daniel
`
`Daniel Kiang
`Partner
`Daniel.Kiang@knobbe.com
`949-721-5205 Direct
`Knobbe Martens
`2040 Main St., 14th Fl.
`Irvine, CA 92614
`www.knobbe.com/daniel-kiang
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, February 15, 2024 6:15 AM
`To: Ted Cannon <Ted.Cannon@knobbe.com>; Trials <Trials@USPTO.GOV>; AXF-PTAB <AXF-
`PTAB@fr.com>
`Cc: IPR50095-0046IP1 <IPR50095-0046IP1@fr.com>; AppleIPR127-1 <AppleIPR127-
`1@knobbe.com>; nstephens@fr.com; patrick@fr.com; dsmith@fr.com; pking@fr.com; 2ial
`<2ial@knobbe.com>; 2Jzk <2Jzk@knobbe.com>; 2Jup <2Jup@knobbe.com>; 2Jgh
`<2Jgh@knobbe.com>
`Subject: RE: IPR2022-01299 - Request for conference call, if necessary, regarding sealing of
`
`

`

`documents
`
`Counsel,
`
`From the Board –
`
`Public and Board and Parties Only versions of the oral hearing transcript have been entered as
`Papers 67 and 63, respectively. No formal motion to seal Paper 63 and Exhibit 1063 is required.
` According to our Consolidated Trial Practice Guide (“CPTG”), “[c]onfidential information that is
`subject to a protective order ordinarily would become public 45 days after denial of a petition to
`institute a trial or 45 days after final judgment in a trial.” CPTG, 21–22. As such, confidential
`information will remain undisturbed pending any appeal, after which time, a party may file a motion
`to expunge the information from the record prior to the information becoming public. Id. at 22.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Ted Cannon <Ted.Cannon@knobbe.com>
`Sent: Thursday, February 8, 2024 1:40 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR50095-0046IP1 <IPR50095-0046IP1@fr.com>; AppleIPR127-1 <AppleIPR127-1@knobbe.com>
`Subject: IPR2022-01299 - Request for conference call, if necessary, regarding sealing of documents
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board:
`
` I
`
` write to request a conference call, if necessary, to request the following: (1) that the portion
`of the oral hearing transcript for the closed session of the oral hearing (Paper 63 at 44-61) be
`sealed and immediately re-designated in P-TACTS as accessible to the Board and parties only
`and (2) that the confidential version of Apple’s demonstrative exhibits (Exhibit 1063) remain
`sealed and accessible to the Board and parties only. Further information about each request
`is provided below.
`
`Oral Hearing Transcript. The oral hearing was divided into a non-confidential portion (see
`Paper 63 at 1-44) and a confidential portion (see id. at 44-61). The confidential portion refers
`to confidential exhibits that have been sealed. However, it appears the oral hearing transcript
`(Paper 63) was inadvertently issued as a single document accessible to the public. Masimo
`requests sealing of the confidential portion. If a formal motion to seal is required, Masimo
`
`

`

`requests immediate re-designation of the confidential portion as accessible to the Board and
`parties only pending resolution of the motion.
`
`Apple’s Demonstrative Exhibits. Apple filed confidential and non-confidential versions of
`Exhibit 1063, Apple’s demonstrative exhibits. The confidential version is currently accessible
`to the Board and parties only but was not expressly addressed in the granted motions to seal.
`Because the confidential version includes information contained in confidential exhibits that
`have been sealed, Masimo requests that the confidential version remain sealed.
`
`Counsel for the parties have conferred and Apple does not oppose these requests. Should the
`Board desire a conference call, counsel for the parties are available between 1:00 pm and 5:00
`pm ET on February 9, 12, or 13. If necessary, Masimo is willing to file a formal motion to seal.
`
`Respectfully,
`
`Ted Cannon
`Counsel for Masimo
`
`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
`
`
`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and
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`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.
`
`