`910 LOUISIANA
`HOUSTON, TEXAS
`77002-4995
`
`TEL +1 713.229.1234
`FAX +1 713.229.1522
`BakerBotts.com
`
`
`
`AUSTIN
`BEIJING
`BRUSSELS
`DALLAS
`DUBAI
`HONG KONG
`HOUSTON
`
`
`LONDON
`MOSCOW
`NEW YORK
`PALO ALTO
`RIO DE JANEIRO
`RIYADH
`WASHINGTON
`
`
`
`Roger Fulghum
`TEL: 713.229.1707
`FAX: 713.229.2707
`roger.fulghum@bakerbotts.com
`
`
`
`
`
`
`VIA EMAIL
`
`September 16, 2021
`
`Jason D. Cassady
`Bailey A. Blaies
`Alexander A. Waldrop
`Christopher S. Stewart
`Xu Zhou
`Caldwell Cassidy Curry P.C.
`2121 N. Pearl St., Suite 1200
`Dallas, TX 75201
`
`T. John Ward, Jr.
`Claire Abernathy Henry
`Ward, Smith & Hill, PLLC
`1507 Bill Owens Parkway
`Longview, TX 75604
`
`Re:
`
`Neo Wireless LLC v. Dell Technologies Inc. and Dell Inc., Case No.
`6:21-cv-0024 (WDTX)
`
`
`Dear Counsel:
`
`We write regarding a petition for inter partes review (IPR) being filed with the Patent Trial
`and Appeal Board (PTAB) to address the claims of U.S. Patent No. 8,467,366 (“’366 Patent). The
`table below lists grounds asserted by Dell Technologies Inc. and Dell Inc. (“Dell”) in an IPR
`petition (IPR2021-01480) challenging the ’366 Patent, along with the implicated claims against
`which the grounds are asserted. I write to inform you that Dell hereby stipulates that if the PTAB
`institutes an IPR based on Petitioner’s IPR Petition (IPR2021-01480) for the ’366 Patent,
`Petitioner will not assert any 35 U.S.C. § 102 or § 103 invalidity ground in this co-pending
`litigation (6:21-cv-0024) based on any of the primary or secondary references asserted in
`Petitioner’s IPR Petition. The primary or secondary references are listed in the second table
`below.
`Ground
`
`35 U.S.C. § 103 Combination
`
`Claims
`
`A1
`
`A2
`
`A3
`
`B1
`
`B2
`
`1-4, 6-12, 14-20, 22-24
`
`Ma and TR
`
`5, 21
`
`13
`
`Ma, TR and Soliman
`
`Ma, TR and Li
`
`1-4, 6-12, 14-20, 22-24
`
`Ma and Jung
`
`5, 21
`
`Ma, Jung and Soliman
`
`Active 67240381.1
`
`DELL 1013
`
`1
`
`
`
`- 2 -
`
`September 16, 2021
`
`Ground
`
`Claims
`
`35 U.S.C. § 103 Combination
`
`B3
`
`13
`
`Ma, Jung and Li
`
`Reference
`
`Ma
`(US20040001429)
`
`TR
`(ETSI TR 101 146 V3.0.0
`entitled “Universal Mobile
`Telecommunications System
`UMTS); UMTS Terrestrial
`Radio Access (UTRA);
`Concept evaluation (UMTS
`30.06 version 3.0.0)” (1997-
`12))
`
`Li
`(US20020159422)
`
`Jung
`(US20040114504)
`
`Soliman
`(US6101179)
`
`Date
`
`Published 2004-01-01, filed
`2003-04-04, claiming priority
`to U.S. provisional application
`No. 60/391,624 filed 2002-06-
`27
`
`Prior Art At least Under
`
`102(a)&(e)
`
`Published 1997-12
`
`102(b)
`
`Published 2002-10-31
`
`Filed 2003-10-23
`
`Issued 2000-08-08
`
`102(b)
`
`102(e)
`
`102(b)
`
`
`
`
`
`
`
`
`
`
`
`For the sake of clarity and to avoid any doubt, if the PTAB declines to institute any of the
`grounds identified herein, Dell reserves the right to assert such grounds in the litigation. Dell also
`reserves its rights to continue to assert all grounds other than the Instituted Grounds in the event
`of institution.
`
`Through this stipulation, Dell seeks to avoid multiple proceedings addressing the validity
`of the challenged claims based on the same primary or secondary references as listed
`above. Rather, through this stipulation, Dell expresses its intention to have only the PTAB address
`the Instituted Grounds of invalidity of these claims.
`
`
`Active 67240381.1
`
`2
`
`
`
`
`
`
`
`
`- 3 -
`
`September 16, 2021
`
`Sincerely,
`
`Roger Fulghum
`
`
`Active 67240381.1
`
`3
`
`
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