`Partner
`+1.650.843.7278
` al exander.stein@morganlewis.com
`
`December 18, 2023
`
`VIA EMAIL
`
`Eric Robert Carr
`
`ecarr@wsltrial.com
`Williams Simons & Landis PLLC
`
`Michael James Fagan, Jr.
`mfagan@wsltrial.com
`Williams Simons & Landis PLLC
`
`John Wittenzellner
`johnw@wsltrial.com
`Williams Simons & Landis PLLC
`
`Fred Irvin Williams
`fwilliams@wsltrial.com
`Williams Simons & Landis PLLC
`
`Re: DynaPass IP Holdings LLC v. Amazon.com, Inc., Case No. 2:23-cv-00063-JRG-
`RSP (E.D. Tex.)
`
`Dear Counsel:
`
`I write regarding the above-captioned litigation (the “District Court Case”), and the
`related petition for inter partes review (IPR) in IPR2024-00283 that was filed today
`against certain claims of U.S. Patent No. 6,993,658.
`
`Petitioner Amazon.com, Inc. hereby stipulates that if the Patent Trial and Appeal
`Board (PTAB) institutes an IPR based on the grounds identified below, then it will (i) not
`pursue the grounds identified below in the District Court Case, (ii) not pursue any other
`ground that reasonably could have been raised during the IPR (should it be instituted) in
`the District Court Case, and (iii) not pursue any other ground that was raised or reasonably
`could have been raised during the Unified Patents, LLC v. Dynapass IP Holdings LLC,
`IPR2023-00425, Paper 1 (PTAB Jan. 6, 2023) (“Unified IPR”) proceeding in the District
`Court Case.
`
`The grounds presented in the IPR petition are reproduced below for convenience:
`
`Ground
`1
`
`Prior Art
`Veneklase in view of Jonsson and
`Sormunen
`
`Statutory
`Basis
`§103
`
`Claims Challenged
`from ’658 Patent
`7
`
`Morgan, Lewis & Bockius LLP
`
`1400 Page Mill Road
`Palo, Alto, CA
`United States
`
`+1.650.843.4000
`+1.650.843.4001
`
`Amazon.com Exhibit 1010 - Page 1
`Amazon.com, Inc. v. DynaPass IP Holdings LLC
`IPR2024-00283 - U.S. Patent No. 6,993,658
`
`
`
`December 18, 2023
`Page 2
`
`Ground
`2
`3
`4
`
`Prior Art
`Veneklase in view of Jonsson, Sormunen,
`and Kaufman
`Kew in view of Sormunen
`Kew in view of Sormunen and Kaufman
`
`Statutory
`Basis
`§103
`§103
`§103
`
`Claims Challenged
`from ’658 Patent
`2
`7
`2
`
`In so stipulating, Petitioner Amazon.com, Inc. seeks to avoid multiple proceedings
`challenging the same claims on the same grounds. Consistent with Congressional intent,
`through this stipulation, Petitioner Amazon.com, Inc. expresses its intentions to have only
`the PTAB address the patentability of the challenged claims identified above on the
`grounds identified above. However, if the PTAB declines institution as to any grounds,
`then Petitioner Amazon.com, Inc. reserves the right to pursue any non-instituted grounds,
`including any grounds that were raised or that reasonably could have been raised in the
`Unified IPR, in the District Court Case.
`
`This stipulation is not intended, and should not be construed, to limit Petitioner
`Amazon.com, Inc.’s abilities to assert invalidity or unenforceability of U.S. Patent No.
`6,993,658 in the District Court Case on any other ground not covered by this stipulation
`(e.g., indefiniteness, written-description issues, enablement, unenforceability issues,
`ineligible subject matter, or invalidity on grounds that reasonably could not have been
`raised during the IPR if instituted).
`
`Sincerely,
`
`/Alexander B. Stein/
`Alexander B. Stein
`
`Amazon.com Exhibit 1010 - Page 2
`Amazon.com, Inc. v. DynaPass IP Holdings LLC
`IPR2024-00283 - U.S. Patent No. 6,993,658
`
`
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