`Partner
`+1.650.843.7519
` d ion.bregman@morganlewis.com
`
`December 14, 2023
`
`VIA EMAIL
`
`Alexander Gasser
`agasser@skiermontderby.com
`Skiermont Derby LLP
`
`John Lord
`jlord@skiermontderby.com
`Skiermont Derby LLP
`
`Paul Skiermont
`pskiermont@skiermontderby.com
`Skiermont Derby LLP
`
`Jaime Olin
`jolin@skiermontderby.com
`Skiermont Derby LLP
`
`Ryan Hargrave
`rhargrave@skiermontderby.com
`Skiermont Derby LLP
`
`Re:
`Entangled Media, LLC v. Dropbox, Inc., Case No. 5:23-cv-03264-PCP (N.D. Cal.)
`Dear Counsel:
`I write regarding the above-captioned litigation (the “District Court Case”), and the
`related petition for inter partes review (IPR) in IPR2024-00285 that was filed today
`against certain claims of U.S. Patent No. 8,484,260.
`Petitioner Dropbox, Inc. (“Dropbox”) 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, and (ii) not pursue
`any other ground that reasonably could have been raised during the IPR (should it be
`instituted) in the District Court Case.
`The grounds presented in the IPR petition are reproduced below for convenience:
`Ground
`Prior Art
`Statutory Basis Claims Challenged from U.S.
`Patent No. 8,296,338
`1 and 4-8
`2 and 3
`1-8
`
`§ 103
`§ 103
`§ 103
`
`1
`2
`3
`
`Havewala, Adams
`Havewala, Adams, Saridakis
`Havewala, Adams, Saridakis,
`Rothman
`
`Morgan, Lewis & Bockius LLP
`
`1400 Page Mill Road
`Palo Alto, CA
`United States
`
`+1.650.843.4000
`+1.650.843.4001
`
`Dropbox Exhibit 1009 - Page 1
`Dropbox, Inc. v. Entangled Media, LLC
`IPR2024-00285 - U.S. Patent No. 8,484,260
`
`
`
`December 14, 2023
`Page 2
`
`In so stipulating, Dropbox seeks to avoid multiple proceedings challenging the
`same claims on the same grounds. Consistent with Congressional intent, through this
`stipulation, Dropbox 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 Dropbox reserves the
`right to pursue any non-instituted grounds in the District Court Case.
`
`This stipulation is not intended, and should not be construed, to limit Dropbox’s
`abilities to assert invalidity or unenforceability of U.S. Patent No. 8,484,260 in the District
`Court Case on any other ground not covered by this stipulation (e.g., indefiniteness,
`written-description issues, enablement, unenforceability issues, invalidity on grounds that
`reasonably could not have been raised during the IPR if instituted).
`
`Sincerely,
`
` / Dion M. Bregman /
` Dion M. Bregman
`
`Dropbox Exhibit 1009 - Page 2
`Dropbox, Inc. v. Entangled Media, LLC
`IPR2024-00285 - U.S. Patent No. 8,484,260
`
`
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