`&STRAWN
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`LLP
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`North America Europe Asia
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`
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`January 14, 2022
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`VIA E-MAIL (BRIAN.MICHALEK@SAUL.COM)
`Saul Ewing Arnstein & Lehr LLP
`Brian R. Michalek
`161 N. Clark St., Suite 4200
`Chicago, IL 60601
`
`200 Park Avenue
`New York, NY 10166
`T +1 212 294 6700
`F +1 212 294 4700
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`KRISHNAN PADMANABHAN
`212-294-3564
`kpadmanabhan@winston.com
`
`Re:
`
`BillJCo LLC v. Cisco Systems Inc., Case No. 2:21-cv-00181-JRG (E.D. Tex.) (Lead Case);
`BillJCo, LLC v. Hewlett Packard Enterprise Company et al.,
`Case No. 2:21-cv-002183-JRG (E.D. Tex.) (Member Case);
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-00528 (W.D. Tex.)
`
`
`
`Dear Counsel:
`
`On behalf of Defendants Cisco Systems, Inc., Hewlett Packard Enterprise Company, Aruba
`Networks, LLC, , and Apple Inc. (collectively “Defendants”) in the above-referenced cases (“the
`Litigation”), we write regarding a petition for inter partes review (“IPR”) that Defendants intend to file
`with the Patent Trial and Appeal Board (“PTAB”) to address claims 1, 10, 11, and 12 of U.S. Patent No.
`8,761,804 (the “Petition”).
`We write to inform you that Defendants, as real parties-in-interest (“RPIs”) in the Petition, hereby
`stipulate that in the event the PTAB institutes an IPR based on the Petition, Defendants will not seek
`resolution in the Litigation of any ground of invalidity pursued in the instituted Petition.
`By so stipulating, Defendants seek to avoid multiple proceedings addressing the validity of claims
`1, 10, 11, and 12 of U.S. Patent No. 8,761,804 based on the instituted grounds in the Petition. Defendants
`request that the patentability of these claims over the grounds presented in the Petition to be addressed at
`the PTAB. For the sake of clarity and to avoid any doubt, if the PTAB declines to institute an IPR based
`on the Petition, Defendants reserve the right to pursue the non-instituted grounds from the denied Petition
`in the Litigation. Additionally, even in the event of institution, each Defendant reserves its right in the
`Litigation to rely on any prior art and prior art combinations other than the instituted grounds in the
`Petition.
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`Very truly yours,
`
`~
`
`Krishnan Padmanabhan
`
`
`
`Exhibit 1022
`IPR2022-00426
`Page 1 of 1
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