`
`VIA E-MAIL
`
`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. HP Inc., et al., Case No. 6:21-cv-00694 (W.D. Tex.)
`
`Dear Counsel:
`
`HP Inc. (“HP”) 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 HP hereby stipulates that:
`
`if the PTAB institutes IPR2022-00367 based on the grounds and claims listed in the
`tables in Appendix A, HP will not pursue in the District Court the specific grounds raised
`in IPR2022-00367 against claims 8-14.
`
`In so stipulating, HP seeks to avoid multiple proceedings addressing the validity of the
`challenged claims based on the same grounds. Rather, through this stipulation, HP 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, HP reserves the right to assert the denied grounds in the
`litigation. HP also reserves its rights to continue to assert grounds other than the Instituted
`Grounds.
`
`Sincerely,
`
`Aamir Kazi
`
`cc: Counsel of record
`
`1
`
`APPLE 1034
`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
`
`Claim(s)
`
`35 U.S.C. § 103
`
`1
`
`2
`
`8-12
`
`13, 14
`
`Burke
`
`Burke in view of Shull
`
`List of References
`
`Reference Name Details
`
`Burke
`
`Shull
`
`U.S. Patent No. 7,155,231
`
`U.S. Patent No. 6,006,077
`
`2
`
`
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