`1221 McKinney Street
`Suite 2800
`Houston, TX 77010
`713 654 5300 main
`713 652 0109 fax
`
`
`Benjamin C. Elacqua
`Principal
`Elacqua@fr.com
`713 654 5324 direct
`
`
`
`
`
`
`
`
`
`February 5, 2021
`
`VIA E-MAIL
`
`John J. Edmonds
`jedmonds@ip-lit.com
`Edmonds & Schlather PLLC
`2501 Saltus Street
`Houston, TX 77003
`
`Re:
`
`GUI Global Products, Ltd D/B/A Gwee v. Apple Inc., Civil Action No. 4:20-cv-02652
`(S.D. Tex.)
`
`
`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. 10,259,021. The table below lists
`grounds asserted by Apple Inc. (“Apple”) in an IPR petition challenging claims of this patent,
`along with the implicated claims against which the grounds are asserted. We write to inform you
`that Apple hereby stipulates that in the event the PTAB institutes an inter partes review
`including the grounds listed in the table against the corresponding claims listed in the table for
`those grounds (“Instituted Grounds”), Apple will not assert the Instituted Grounds against the
`corresponding claims listed in the table for those grounds in the above-captioned litigation (4:20-
`cv-02652).
`
`Ground
`Claims
`Patent No. Proceeding No.
`10,259,021
`IPR2021-00471 1, 4-7, 10, 14-16, 19 Obvious (§ 103) over Gundlach in view
`of Lee
`Obvious (§ 103) over Gundlach in view
`of Lee and Nishikawa
`Obvious (§ 103) over Gundlach in view
`of Lee and Rosener
`Obvious (§ 103) over Gundlach in view
`of Lee and Brown
`Obvious (§ 103) over Gundlach in view
`of Lee and Mak-Fan
`
`10,259,021
`
`IPR2021-00471 4, 14
`
`10,259,021
`
`IPR2021-00471 10
`
`10,259,021
`
`IPR2021-00471 2, 12
`
`10,259,021
`
`IPR2021-00471 8, 9, 17
`
`
`
`1
`
`APPLE 1109
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`
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`February 5, 2021
`Page 2
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`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of these
`claims based on the Instituted Grounds. Rather, 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 the above-
`captioned litigation (4:20-cv-02652). Additionally, even in the event of institution, Apple
`reserves its rights to continue to assert all grounds other than the Instituted Grounds.
`
`
`
`
`
`
`
`
`
`
`Sincerely,
`
`
`
`
`
`
`
`
`
`
`cc: Counsel of record
`
`
`
`
`
`
`
`
`
`__________________
`Benjamin C. Elacqua
`Fish & Richardson P.C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
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`
`
`February 5, 2021
`Page 3
`
`
`
`
`Appendix – Prior Art References Used in the Listed Grounds
`
`
`Details
`U.S. Patent Application Publication No. 2008/0132293 to Gundlach, et al.
`U.S. Patent No. 7,548,040 to Lee, et al.
`U.S. Patent Application Publication No. 2007/0145255 to Nishikawa, et al.
`U.S. Patent Application Publication No. 2008/0076489 to Rosener, et al.
`U.S. Patent No. 7,631,811 to Brown
`U.S. Patent Application Publication No. 2008/0012706 to Mak-Fan, et al.
`
`Reference Name
`Gundlach
`Lee
`Nishikawa
`Rosener
`Brown
`Mak-Fan
`
`
`
`
`3
`
`
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