`401 B Street
`Suite 1700
`San Diego, California 92101-4297
`www.dlapiper.com
`
`Tiffany Miller
`tiffany.miller@dlapiper.com
`T 619.699.3445
`F 619.764.6745
`
`November 6, 2020
`VIA E-MAIL
`
`Philip J. Graves
`301 North Lake Ave.
`Ste. 920
`Pasadena, CA 91101
`philipg@hbsslaw.com
`
`Re:
`
`Samsung Electronics Co., Ltd. v. Neonode Smartphone LLC, Case No. 6:20-cv-00507
`
`Dear Mr. Graves:
`
`We write regarding the petitions for inter partes review (IPR) filed against the patents in suit, US Patent
`Nos. 8,095,879 and 8,812,993, in the captioned litigation. We write to inform you that the Samsung
`defendants hereby stipulate that if the Patent Trial and Appeal Board (PTAB) institutes one or more of the
`IPR petitions on the grounds presented (a table of which is reproduced below), then the Samsung
`Defendants, including Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc.(“Samsung”), will not pursue those same instituted grounds or grounds sharing the same primary
`reference in the above-captioned litigation.
`
`Patent No.
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,095,879
`8,812,993
`8,812,993
`8,812,993
`8,812,993
`8,812,993
`8,812,993
`8,812,993
`8,812,993
`
` Claims
` 1, 14, 15, 16, 17
` 2, 3, 4, 5
` 3
` 6, 13
` 12
` 1, 2, 4, 5, 14-17
` 3
` 6, 13
` 12
` 1, 14, 15
`1-3, 7-8
`4
`5
`6
`1-3, 7-8
`4
`5
`6
`
` Prior art Basis of Ground
` Ren, Tanaka
` Ren, Tanaka, Hirayama307
` Ren, Tanaka, Hirayama307, Hirayama878
` Ren, Tanaka, Allard
` Ren, Tanaka, Henckel
` Hirayama307, Ren
` Hirayama307, Ren, Hirayama878
` Hirayama307, Ren, Allard
` Hirayama307, Ren, Henckel
` Jermyn
` Hisatomi, Ren
` Hisatomi, Ren, Allard 656
` Hisatomi, Ren, Tanaka
` Hisatomi, Ren, Kodama
` Hansen, Gillespie
` Hansen, Gillespie, Allard 656
` Hansen, Gillespie, Tanaka
` Hansen, Gillespie, Kodama
`
`WEST\292191589.1
`
`1
`
`APPLE 1042
`
`
`
`Philip J. Graves
`November 6, 2020
`Page Two
`
`In so stipulating, Samsung seeks to avoid multiple proceedings addressing the validity of the patents in
`suit based on the same grounds. Rather, consistent with Congressional intent, Samsung wishes the
`patentability of these patents over those grounds to be addressed at the Board. But, for the sake of
`clarity and to avoid any doubt, if the PTAB declines institution of one or more IPRs, Samsung reserves
`the right to pursue all grounds in this litigation.
`
`Sincerely,
`
`Tiffany Miller
`
`TM:db
`
`cc:
`
`Counsel of Record
`
`WEST\292191589.1
`
`2
`
`
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