`Date:
`Friday, February 25, 2022 at 1:26:13 PM Pacific Standard Time
`From:
`Trials
`To:
`Parham Hendifar, Trials
`CC:
`Nathan Lowenstein, Kenneth Weatherwax, Vinson Lin, Philip Graves, David Holt,
`Tiffany.miller@dlapiper.com, Jim.heintz@dlapiper.com, IPR50095-0015IP1, Karl Renner
`
`Counsel,
`
`The Board agrees with the parties’ request to limit the Petition in IPR2021-00144. The parties shall
`memorialize their agreement in writing and file the agreement as a Paper in the docket of the proceeding.
`The parties should state in the agreement that they are filing the agreement with the Board’s authorization.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`
`From: Parham Hendifar <hendifar@lowensteinweatherwax.com>
`Sent: Thursday, February 24, 2022 1:10 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>; Kenneth Weatherwax
`<weatherwax@lowensteinweatherwax.com>; Vinson Lin <Lin@lowensteinweatherwax.com>; Philip Graves
`<philipg@hbsslaw.com>; David Holt <DTH@fr.com>; Tiffany.miller@dlapiper.com; Jim.heintz@dlapiper.com;
`IPR50095-0015IP1 <IPR50095-0015IP1@fr.com>; Karl Renner <renner@fr.com>
`Subject: IPR2021-00144 Joint Request to Limit the Pe88on
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding,
`clicking on links, or opening agachments.
`
`
`Dear Honorable Board,
`
`The Par8es jointly write to request that the Board limit the Pe88on and the proceeding in IPR2021-00144 to
`
`Page 1 of 2
`
`Neonode Smartphone LLC, Exhibit 2037
`Page 2037 - 1
`IPR2021-00144, Samsung Elecs. Co. Ltd. et al. v. Neonode Smartphone LLC
`
`
`
`grounds 2A, 2B, 2C and 2D stated in the Pe88on or, in the alterna8ve, authorize the par8es to file a joint
`mo8on to limit the Pe88on and the proceeding to grounds 2A, 2B, 2C and 2D stated in the Pe88on. This
`request is pursuant to Pe88oners’ statement in their rehearing request that “Pe88oners hereby withdraw
`Grounds 1A-1E and 3 and s8pulate not to pursue these grounds in any proceeding that is ins8tuted from this
`rehearing request.” Paper 25 at 1 n. 1.
`
`The request is further pursuant to the par8es’ s8pula8on that: (1) the Pe88on will be limited to grounds 2A,
`2B, 2C and 2D as stated in the Pe88on, and grounds 1A-1E, and 3 shall be excluded from this proceeding
`(“excluded grounds”); (2) Patent Owner shall not pursue any decision by the Board on the excluded grounds;
`(3) any ques8on by Patent Owner for Pe88oner’s expert at deposi8on that is unrelated to grounds 2A-2D
`shall be subject to a relevance/scope objec8on, and the proper mo8on to exclude, if necessary; and (4)
`Patent Owner shall not otherwise present arguments in this proceeding as to the excluded grounds for any
`reason unrelated to grounds 2A-2D.
`
`Should the Board wish to have a call with the par8es, the par8es are generally available for a call with the
`Board on Thursday 2/24, Friday 2/25 and Tuesday 3/1.
`
`Regards,
`
`Parham Hendifar | Lowenstein & Weatherwax LLP
`1880 Century Park East., Suite 815, Los Angeles, CA 90067
`Office: 310.307.4510
`
`
`Page 2 of 2
`
`Neonode Smartphone LLC, Exhibit 2037
`Page 2037 - 2
`IPR2021-00144, Samsung Elecs. Co. Ltd. et al. v. Neonode Smartphone LLC
`
`