`Direct: +1 212.351.2339
`Fax: +1 212.817.9539
`BRosenthal@gibsondunn.com
`
`September 30, 2020
`
`VIA E-MAIL
`
`Joseph R. Re
`Stephen C. Jensen
`Perry D. Oldham
`Stephen W. Larson
`Knobbe, Martens, Olson & Bear LLP
`2040 Main Street
`Irvine, CA 92614
`
`Re: Masimo Corporation et al. v. Apple Inc., Case No. 8:20-cv-00048 (C.D. Cal.)
`
`Dear Counsel:
`
`We write regarding a petition for inter partes review (IPR) being filed with the Patent Trial
`and Appeal Board (PTAB) to address claims of U.S. Patent No. 10,702,194. The table below
`lists grounds asserted by Apple in an IPR petition challenging claims of this patent, along
`with the implicated claims against which each ground is asserted. We write to inform you
`that Apple hereby stipulates that in the event the PTAB institutes an inter partes review
`including a ground listed in the table against the corresponding claims listed in the table for
`that ground (“Instituted Ground”), Apple will not assert that Instituted Ground against the
`corresponding claims listed in the table for that ground in the above captioned litigation
`(8:20-cv-00048).
`
`Claims
`Patent No. Proceeding No.
`10,702,194
`IPR2020-01716 1-18, 20, 22-30
`
`19, 21
`
`Grounds
`Aizawa, in view of Mendelson-2003,
`Ohsaki, and Mendelson-2006
`Aizawa, in view of Mendelson-2003,
`Ohsaki, Mendelson-2006, and Beyer
`
`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of these
`claims based on the Instituted Grounds. Rather, consistent with Congressional intent,
`through this stipulation, Apple expresses its intention to have only the PTAB address the
`Instituted Grounds of invalidity of these claims. But, for the sake of clarity and to avoid any
`doubt, if the PTAB declines to institute any of the grounds identified herein, Apple reserves
`the right to assert such grounds in this litigation. Additionally, even in the event of
`
`APPLE 1032
`
`
`
`
`
`
`September 30, 2020
`Page 2
`
`
`
`
`institution, Apple reserves its rights to continue to assert all grounds other than Instituted
`Grounds.
`
`Sincerely,
`
`Brian Rosenthal
`
`
`
`
`
`
`
`
`
`
`
`
`September 30, 2020
`Page 3
`
`
`
`Appendix – Prior Art References Used in the Listed Grounds
`
`
`Reference Name Details
`Aizawa
`U.S. Pub. No. 2002/0188210
`Mendelson-2003
`“Measurement Site and Photodetector Size Considerations in
`Optimizing Power Consumption of a Wearable Reflectance Pulse
`Oximeter,” Y. Mendelson, et al.; Proceedings of the 25th IEEE
`EMBS Annual International Conference, 2003; pp. 3016-3019
`U.S. Pub. No. 2001/0056243
`“A Wearable Reflectance Pulse Oximeter for Remote Physiological
`Monitoring,” Y. Mendelson, et al.; Proceedings of the 28th IEEE
`EMBS Annual International Conference, 2006; pp. 912-915
`U.S. Pat. No. 7,031,728
`
`Ohsaki
`Mendelson-2006
`
`Beyer
`
`
`
`
`
`
`
`
`
`
`
`
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