`Stipulation
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______
`
`
`TREND MICRO, INC.,
`Petitioner
`
`
`v.
`
`TAASERA LICENSING LLC,
`Patent Owner.
`______
`Case No.(cid:3031) IPR2023-00801
`Patent No. 8,327,441
`
`STIPULATION
`
`
`
`
`
`
`Filed on behalf of Trend Micro
`By: Robert M. Hansen
`Matthew J. Anderson
`Scott B. Amankwatia
`The Marbury Law Group, PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`Tel: (703) 391-2900
`Fax: (703) 391-2901
`
`
`
`
`
`
`
`IPR2023-00801
`Stipulation
`
`STIPULATION
`
`As evidenced by Patent Owner’s Exhibit 2002 and attachments A-C hereto,
`
`Trend Micro Incorporated has not pursued (and no longer can elect to pursue) any
`
`invalidity ground in the Related Litigation based on any of the prior art references
`
`asserted in the petition in this IPR.
`
`Exhibit 2002 is cited by Patent Owner in its Preliminary Response (Paper 6
`
`at p. 26). Attachment A is a true and correct copy of the District Court’s Order
`
`Focusing Patent Claims and Prior art to Reduce Costs filed in 2:22-md-03042-JRG
`
`in the Eastern District of Texas (the “Related Litigation”). Attachment B is a true
`
`and correct copy of the Preliminary Election of Asserted Claims served by Patent
`
`Owner on counsel for Trend Micro Incorporated in the Related
`
`Litigation. Attachment C is a true and correct copy of the Preliminary Election of
`
`Prior Art served by Trend Micro Incorporated on counsel for Patent Owner in the
`
`Related Litigation.
`
`To memorialize the impact of its invalidity elections in the Related
`
`Litigation, Petitioner stipulates that, if the Board institutes trial in this IPR,
`
`Petitioner will not pursue, in the Related Litigation, the specific grounds asserted
`
`in the IPR petition, nor any ground based on any prior art reference asserted in the
`
`IPR petition. Cf. Sand Revolution II, LLC v. Continental Intermodal Group –
`
`Trucking LLC, IPR2019-01393, Paper 24 at 11-12 (PTAB June 16, 2020)
`
`(Informative) (Board finding that Petitioner’s stipulation—“that it will not pursue,
`
`in district court, the ‘same grounds’ presented in the Petition in this case”—
`
`
`
`“mitigates to some degree the concerns of duplicative efforts between the district
`
`court and the Board, as well as concerns of potentially conflicting decisions.”)
`
`IPR2023-00801
`Stipulation
`
`Respectfully submitted,
`The Marbury Law Group, PLLC
`
`_____________________________
`Robert M. Hansen, Reg. No. 43,656
`Scott B. Amankwatia, Reg. No. 78,226
`Matthew J. Anderson, Reg. No. 78,257
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`Date: November 6, 2023
`
`
`The Marbury Law Group, PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`Tel: (703) 391-2900
`
`
`
`
`
`
`
`
`IPR2023-00801
`Stipulation
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned
`
`STIPULATIONS FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`8,327,441, was served in its entirety on November 6, 2023, to Opposing
`
`Counsel via email:
`
`plambrianakos@fabricantllp.com
`
`vrubino@fabricantllp.com
`
` ffabricant@fabricantllp.com
`
` jmercadante@fabricantllp.com
`
`
`
`
`
`
`
`
`Robert M. Hansen
`Attorney for Petitioner
`
`
`
`
`
`
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