October 15, 2021
`
`Ryan J. Schletzbaum
`
`2555 Grand Blvd.
`Kansas City, Missouri 64108
`t 816.474.6550
`d 816.559.2693
`f 816.421.5547
`rschletzbaum@shb.com
`
`VIA E-MAIL
`
`Christopher Michael Barkley
`James Eamonn Sherry
`McCathem PLLC
`523 West 6th Street, Suite 830
`Los Angeles, CA 90014
`
`Arnold Shokouhi
`McCathern Mooty Grinke, LLP
`3710 Rawlins, Suite 1600
`Dallas, TX 75219
`
`Re:
`
`LoganTree LP. v. Apple Inc., Case No. 6:21-cv-00397 (W.D. Tex.)
`
`Dear Counsel:
`
`I write regarding a petition for inter partes review (IPR) being filed today with the
`Patent Trial and Appeal Board (PTAB) to address claims of U.S. Patent No. 6,059,576.
`The table below lists grounds asserted by Apple Inc. (“Apple”) in the IPR2022-00037
`petition challenging claims of this patent, along with the implicated claims against which
`the grounds are asserted. I write to inform you that Apple hereby stipulates that in the
`event the PTAB institutes an inter partes review based on the petition being filed today in
`IPR2022-00037 and including the grounds listed in the table below against the
`corresponding claims listed in the table for those grounds (“Instituted Grounds”), Apple
`will not assert in the above-captioned litigation (6:21-cv-00397) the Instituted Grounds
`against the corresponding claims listed in the table for those grounds, and will not assert in
`the above-captioned litigation (6:21-cv-00397) any ground of invalidity that utilizes, as a
`primary reference, U.S. Patent No. 4,962,469 (“Ono”) against the claims listed in the table.
`
`Patent No. Proceeding No.
`Claims
`6,059,576
`IPR2022-00037 1, 3-5, 8, 10, 20,
`25, 30, 39, 41,
`42, 61-65
`
`Ground
`Obvious (§ 103) over Ono in view
`of Hutchings
`
`ATLANTA | BOSTON | CHICAGO | DENVER | HOUSTON | KANSAS CITY | LO NDON | LOS ANGELES | MIAMI | NEW YORK |
`
`ORANGE COUNTY | PHILADELPHIA | SAN FRANCISCO | SEATTLE | ST. LOUIS | TAMPA | W ASHINGTON, D.C.
`
`APPLE 1005
`
`1
`
`
`
`Ryan J. Schletzbaum
`
`2555 Grand Blvd.
`Kansas City, Missouri 64108
`t 816.474.6550
`d 816.559.2693
`f 816.421.5547
`rschletzbaum@shb.com
`
`VIA E-MAIL
`
`Christopher Michael Barkley
`James Eamonn Sherry
`McCathem PLLC
`523 West 6th Street, Suite 830
`Los Angeles, CA 90014
`
`Arnold Shokouhi
`McCathern Mooty Grinke, LLP
`3710 Rawlins, Suite 1600
`Dallas, TX 75219
`
`Re:
`
`LoganTree LP. v. Apple Inc., Case No. 6:21-cv-00397 (W.D. Tex.)
`
`Dear Counsel:
`
`I write regarding a petition for inter partes review (IPR) being filed today with the
`Patent Trial and Appeal Board (PTAB) to address claims of U.S. Patent No. 6,059,576.
`The table below lists grounds asserted by Apple Inc. (“Apple”) in the IPR2022-00037
`petition challenging claims of this patent, along with the implicated claims against which
`the grounds are asserted. I write to inform you that Apple hereby stipulates that in the
`event the PTAB institutes an inter partes review based on the petition being filed today in
`IPR2022-00037 and including the grounds listed in the table below against the
`corresponding claims listed in the table for those grounds (“Instituted Grounds”), Apple
`will not assert in the above-captioned litigation (6:21-cv-00397) the Instituted Grounds
`against the corresponding claims listed in the table for those grounds, and will not assert in
`the above-captioned litigation (6:21-cv-00397) any ground of invalidity that utilizes, as a
`primary reference, U.S. Patent No. 4,962,469 (“Ono”) against the claims listed in the table.
`
`Patent No. Proceeding No.
`Claims
`6,059,576
`IPR2022-00037 1, 3-5, 8, 10, 20,
`25, 30, 39, 41,
`42, 61-65
`
`Ground
`Obvious (§ 103) over Ono in view
`of Hutchings
`
`ATLANTA | BOSTON | CHICAGO | DENVER | HOUSTON | KANSAS CITY | LO NDON | LOS ANGELES | MIAMI | NEW YORK |
`
`ORANGE COUNTY | PHILADELPHIA | SAN FRANCISCO | SEATTLE | ST. LOUIS | TAMPA | W ASHINGTON, D.C.
`
`APPLE 1005
`
`1
`
`
`
`October 15, 2021
`Page 2
`
`Patent No. Proceeding No.
`
`Claims
`
`Ground
`
`6,059,576
`
`6,059,576
`
`IPR2022-00037 1, 3-5, 8-11, 20,
`25, 30, 36, 39-
`42, 61-65
`
`IPR2022-00037 1-5, 8, 10, 20,
`25, 30, 31, 39,
`41, 42, 45-47,
`49, 61-65
`
`6,059,576
`
`IPR2022-00037 48, 50, 51
`
`6,059,576
`
`6,059,576
`
`IPR2022-00037 1, 3-5, 8, 10, 20,
`25, 30, 39, 41,
`42, 61-65, 144,
`147
`
`IPR2022-00037 1-5, 8-11, 20,
`25, 30-32, 36,
`39-42, 45-47,
`49, 61-65, 144,
`147
`
`6,059,576
`
`IPR2022-00037 48, 50, 51
`
`6,059,576
`
`IPR2022-00037 1-5, 8-11, 20,
`25, 30, 31, 36,
`39-42, 45-47,
`49, 61-65
`
`6,059,576
`
`IPR2022-00037 48, 50, 51
`
`Obvious (§ 103) over Ono in view
`of Hutchings and Amano
`
`Obvious (§ 103) over Ono in view
`of Hutchings and Conlan
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Conlan, and
`Hickman
`
`Obvious (§ 103) over Ono in view
`of Hutchings and Kaufman
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Amano, Conlan, and
`Kaufman
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Amano, Conlan,
`Kaufman, and Hickman
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Amano, and Conlan
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Amano, Conlan, and
`Hickman
`
`
`
`ATLANTA | BOSTON | CHICAGO | DENVER | HOUSTON | KANSAS CITY | LO NDON | LOS ANGELES | MIAMI | NEW YORK |
`
`ORANGE COUNTY | PHILADELPHIA | SAN FRANCISCO | SEATTLE | ST. LOUIS | TAMPA| W ASHINGTON, D.C.
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`October 15, 2021
`Page 3
`
`Patent No. Proceeding No.
`
`Claims
`
`Ground
`
`6,059,576
`
`6,059,576
`
`IPR2022-00037 1, 3-5, 8-11, 20,
`25, 30, 36, 39-
`42, 61-65, 144,
`147
`
`IPR2022-00037 1-5, 8, 10, 20,
`25, 30, 31, 39,
`41, 42, 45-47,
`49, 61-65, 144,
`147
`
`6,059,576
`
`IPR2022-00037 48, 50, 51
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Amano, and
`Kaufman
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Conlan, and
`Kaufman
`
`Obvious (§ 103) over Ono in view
`of Hutchings, Conlan, Kaufman,
`and Hickman
`
`In so stipulating, consistent with the precedentially designated Fintiv decision,
`Apple seeks to avoid multiple proceedings addressing the validity of the challenged claims
`based on the same grounds. Rather, Apple wishes the patentability of these claims over
`the Instituted Grounds or grounds in which Ono is the primary reference to be addressed
`at the PTAB. But, for the sake of clarity and to avoid any doubt, if the PTAB declines to
`institute the IPR2022-00037 petition, Apple reserves the right to assert any such grounds
`in the above-captioned litigation (6:21-cv-00397). Apple also reserves its rights to
`continue to assert, in the event of institution, grounds other than the Instituted Grounds or
`grounds in which Ono is the primary reference.
`
`
`
`
`
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`
`
`
`
`
`
`ATLANTA | BOSTON | CHICAGO | DENVER | HOUSTON | KANSAS CITY | LO NDON | LOS ANGELES | MIAMI | NEW YORK |
`
`ORANGE COUNTY | PHILADELPHIA | SAN FRANCISCO | SEATTLE | ST. LOUIS | TAMPA| W ASHINGTON, D.C.
`
`3
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`October 15, 2021
`Page 4
`
`Sincerely,
`
`
`
`
`
`Ryan Schletzbaum
`Attorney for Defendant
`Apple Inc.
`
`
`
`
`
`
`
`
`
`
`
`cc: Counsel of record
`
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`
`
`ATLANTA | BOSTON | CHICAGO | DENVER | HOUSTON | KANSAS CITY | LO NDON | LOS ANGELES | MIAMI | NEW YORK |
`
`ORANGE COUNTY | PHILADELPHIA | SAN FRANCISCO | SEATTLE | ST. LOUIS | TAMPA| W ASHINGTON, D.C.
`
`4
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`October 15, 2021
`Page 5
`
`Appendix A – List of Prior Art References
`
`
`Reference Name Details
`
`Ono
`
`U.S. Patent No. 4,962,469
`
`Hutchings
`
`U.S. Patent No. 5,899,963
`
`Amano
`
`Conlan
`
`Hickman
`
`Kaufman
`
`U.S. Patent No. 5,941,837
`
`U.S. Patent No. 5,573,013
`
`U.S. Patent No. 6,059,692
`
`U.S. Patent No. 5,857,939
`
`
`
`ATLANTA | BOSTON | CHICAGO | DENVER | HOUSTON | KANSAS CITY | LO NDON | LOS ANGELES | MIAMI | NEW YORK |
`
`ORANGE COUNTY | PHILADELPHIA | SAN FRANCISCO | SEATTLE | ST. LOUIS | TAMPA| W ASHINGTON, D.C.
`
`5
`
`
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