`312.881.5954
`mpieja@goldmanismail.com
`
`SENT VIA E-MAIL
`
`May 19, 2022
`
`Reza Mirzaie, Paul A. Kroeger, Philip X. Wang, James N. Pickens, Minna Chan, Christian Conkle
`Russ August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`
`Re:
`
`XR Communications, LLC v. Apple Inc., Case No. 6:21-cv-00620 (W.D. Tex.)
`
`Dear Counsel:
`
`Apple Inc. (“Apple”) has filed an inter partes review (IPR) petition (IPR2022-00367) with the Patent Trial
`and Appeal Board (PTAB) to address the validity of claims 8-14 of U.S. Patent No. 10,715,235. The
`tables in attached Appendix A list all the grounds, challenged claims, and references asserted in
`IPR2022-00367.
`
`I write to inform you that Apple hereby stipulates that:
`if the PTAB institutes IPR2022-00367 based on the grounds and claims listed in the tables in
`•
`Appendix A, Apple will not pursue in the District Court the specific grounds raised in IPR2022-
`00367 against claims 8-14.
`
`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of the challenged
`claims based on the same 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 the denied grounds in the litigation. Apple also reserves its rights to continue
`to assert grounds other than the Instituted Grounds.
`
`Sincerely,
`
`Michael Pieja
`Attorney for Apple Inc.
`
`Chicago 200 South Wacker, 22nd Floor, Chicago, IL 60606
`Dallas 7557 Rambler Road, Suite 1450, Dallas, TX 75231
`Santa Monica 100 Wilshire Boulevard, Suite 1760, Santa Monica, CA 90401
`
` goldmanismail.com
`
`1
`
`APPLE 1033
`Apple et al. v. XR Commc'ns
`IPR2022-00367
`
`
`
`May 19, 2022
`Page 2
`
`Appendix A – Grounds and Prior Art References Used in IPR2022-00367
`
`
`Ground
`
`1
`
`2
`
`Claim(s)
`
`8-12
`
`13, 14
`
`35 U.S.C. § 103
`
`Burke
`
`Burke in view of Shull
`
`List of References
`
`
`Reference Name Details
`Burke
`U.S. Patent No. 7,155,231
`Shull
`U.S. Patent No. 6,006,077
`
`
`
`
`
`
`
`
`2
`
`
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