`
`VIA E-MAIL
`
`Fish & Richardson P.C.
`1180 Peachtree Street, NE
`21st Floor
`Atlanta, GA 30309
`
`404 892 5005 main
`404 892 5002 fax
`
`Aamir A. Kazi
`Principal
`kazi@fr.com
`404-724-2811 direct
`
`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 (IPR2022-01155) with the Patent
`Trial and Appeal Board (PTAB) to address the validity of claims 1-7, 15, and 16 of U.S. Patent
`No. 10,715,235. The tables in attached Appendix A list all the grounds, challenged claims, and
`references asserted in IPR2022-01155.
`
`HP had previously stipulated that:
`•
`if the PTAB institutes IPR2022-01155 based on the grounds and claims listed in the
`tables in Appendix A, HP will not pursue in the District Court any ground asserted in
`IPR2022-01155 or any other ground using U.S. Patent No. 6,031,877 (“Saunders”) as a
`primary reference against claims 1-7, 15, and 16.
`if the PTAB institutes IPR2022-00367 based on the grounds and claims listed in the
`tables in Appendix B, HP will not pursue in the District Court the specific grounds raised
`in IPR2022-00367 against claims 8-14.
`
`•
`
`I write to inform you that HP hereby further stipulates that:
`•
`if the PTAB institutes IPR2022-01155 based on the grounds and claims listed in the
`tables in Appendix A, HP will not pursue in the District Court any ground using U.S.
`Patent No. 6,006,077 (“Shull”) or Saunders against claims 1-16.
`
`In so stipulating, HP seeks to minimize the overlap of issues and avoid multiple proceedings
`addressing the validity of the challenged claims based on grounds involving Saunders or Shull.
`Rather, through this stipulation, HP expresses its intention to have only the PTAB address the
`Instituted Grounds of invalidity of claims 1-7, 15, and 16. But, for the sake of clarity and to
`avoid any doubt, if the PTAB declines to institute IPR2022-01155, HP reserves the right to assert
`the denied grounds and any other grounds not raised in IPR2022-00367 in the litigation.
`
`APPLE 1045
`Apple et al. v. XR Commc'ns
`IPR2022-01155
`
`1
`
`
`
`November 21, 2022
`Page 2
`
`Sincerely,
`
`Aamir A. Kazi
`
`cc: Counsel of record
`
`2
`
`
`
`
`
`
`
`
`November 21, 2022
`Page 3
`
`Appendix A – Grounds and Prior Art References Used in IPR2022-01155
`
`
`Ground
`
`Claim(s)
`
`35 U.S.C. § 103
`
`1
`
`2
`
`1-5, 15, 16
`
`Saunders in view of Hottinen
`
`6, 7
`
`Saunders in view of Hottinen and Shull
`
`
`List of References
`
`
`Reference Name Details
`
`Saunders
`
`Hottinen
`
`Shull
`
`
`
`
`U.S. Patent No. 6,031,877
`
`PCT Application Publication No. WO 02/47286
`
`U.S. Patent No. 6,006,077
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`November 21, 2022
`Page 4
`
`Appendix B – 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
`
`
`
`
`
`
`
`
`4
`
`
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