From:
`To:
`Cc:
`Subject:
`Date:
`
`Ted Cannon
`Trials
`IPR50095-0046IP1; AppleIPR127-1
`IPR2022-01299 - request for conference call re motion to strike and sur-reply declaration
`Friday, September 8, 2023 8:53:34 PM
`
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`
`Dear Board,
`
`I write on behalf of Patent Owner Masimo to request a conference call to seek Board
`authorization to file (1) a motion to strike the argument in Section IV.A of Petitioner’s Reply
`beginning with “Equally problematic” at the bottom of page 16 through the end of that
`section, Exhibits 1050-1054, and Paragraphs 32-52 of Exhibit 1055 and (2) a sur-reply expert
`declaration responsive to those portions of the Petitioner’s Reply and Exhibits 1050-1055.
`Masimo believes that those evidence and arguments are “new evidence or argument in reply
`that [Apple] could have presented earlier, e.g. to make out a prima facie case of
`unpatentability.” Consolidated Trial Practice Guide at 73. Accordingly, Masimo believes
`striking those evidence and arguments and allowing a responsive expert declaration are
`warranted. Apple disagrees and opposes Masimo’s requests, believing that the evidence and
`arguments are properly responsive to Masimo’s Patent Owner Response. Rather than
`including substantive argument in this email, the parties will articulate their positions on the
`conference call.
`
`Counsel for the parties have conferred about this issue. Masimo’s counsel emailed Apple’s
`counsel about Masimo’s intent to seek the requested relief on September 7, 2023 (one week,
`or four business days, after Apple filed its Reply), and counsel for the parties conferred
`telephonically today, September 8, 2023. Counsel for the parties are available for a
`conference call with the Board on Wednesday, September 13, 2023 from 11:00 am to 2:00 pm
`ET and Thursday, September 14, 2023 from 11:00 am to 3:00 pm ET. If the Board desires
`other options, the parties will confer and provide additional windows of availability. Masimo
`plans to have a court reporter on the conference call.
`
`Apple’s counsel are copied on this email.
`
`Respectfully,
`
`Ted Cannon
`Counsel for Patent Owner
`
`Ted M. Cannon
`
`IPR2022-01299
`Ex. 3004
`
`

`

`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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