Case 1:13-cv-00919-JLH Document 485-1 Filed 04/24/23 Page 1 of 2 PageID #: 50987
`Case 1:13-cv-00919-JLH Document 485-1 Filed 04/24/23 Page 1 of 2 PagelD #: 50987
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`EXHIBIT A
`EXHIBIT A
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`Case 1:13-cv-00919-JLH Document 485-1 Filed 04/24/23 Page 2 of 2 PageID #: 50988
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`PROPOSED STIPULATION: INTER PARTES REVIEW DETERMINATIONS
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`U.S. Patent No. 7,917,843 (“’843 Patent”) was the subject of a proceeding at the Patent
`Office called inter partes review, also referred to as “IPR.” An IPR permits a petitioner to request
`cancellation of patent claims as unpatentable on the basis of prior art consisting of patents or
`printed publications. Specifically:
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`● On December 2, 2013, Google filed an IPR arguing that the Asserted Claims of the
`’843 Patent were unpatentable on four grounds: (1) because they are obvious in light
`of U.S. Patent No. 5,859,636, also referred to as the “Pandit” reference, (2) because
`they are obvious in light of U.S. Patent No. 5,946,647, also referred to as the “Miller”
`reference, (3) because they are obvious in light of U.S. Patent No. 5,644,735, also
`referred to as the “Luciw” reference, (4) because they are obvious in light of the April
`1998 issue of the SIGCHI Bulletin, also referred to as LiveDoc/DropZones.
`
`● On June 11, 2014, the Patent Office made the following rulings as part of instituting
`IPR: (1) it ruled that Google had demonstrated a reasonable likelihood of prevailing on
`the obviousness ground of unpatentability based on Pandit, (2) it ruled that Google had
`not demonstrated a reasonable likelihood that it would prevail with respect to any of
`claims 1-44 in a § 103(a) challenge over Miller, (3) it ruled that Google has not
`demonstrated a reasonable likelihood that it would prevail with respect to any of claims
`1-7, 10-29, and 32-44 in a § 103(a) challenge over Luciw, (4) it ruled that Google had
`not demonstrated a reasonable likelihood that it would prevail with respect to any of
`claims 1-44 in a §103(a) challenge over LiveDoc/DropZones.
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`● On June 9, 2015, the Patent Office issued a Final Written Decision in the IPR, holding
`that the Asserted Claims of the ’843 Patent were unpatentable in light of Pandit.
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`● On August 10, 2016, the United States Court of Appeals for the Federal Circuit, also
`known as the “Federal Circuit,” held that Google did not prove unpatentability in light
`of Pandit.
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`The litigation in this court was stayed and therefore became inactive on February 24,
`2014, in order to allow for final resolution of the IPR. The case restarted on October 23, 2018
`after the IPR proceedings were completed.
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