`FOR THE WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`Case No. 2:23-cv-00712
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`JURY TRIAL DEMANDED
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`))))))))))
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`IMMERSION CORPORATION,
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`Plaintiff,
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`v.
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`VALVE CORPORATION,
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`Defendant.
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`PRELIMINARY INFRINGEMENT CONTENTIONS OF PLAINTIFF IMMERSION
`CORPORATION TO DEFENDANT VALVE CORPORATION
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`Plaintiff Immersion Corporation (“Immersion”) hereby provides
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`its Preliminary
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`Infringement Contentions to Defendant Valve Corporation. (“Valve”) as to U.S. Patent Nos.
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`7,336,260 (the “’260 Patent”), 8,749,507 (the “’507 patent”), 9,430,042 (the “’042 patent”),
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`9,116,546 (the “’546 Patent”), 10,627,907 (the “’907 Patent”), 10,665,067 (the “’067 Patent”), and
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`11,175,738 (the “’738 Patent”) (collectively, “the Asserted Patents”). This disclosure is without
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`any concession, agreement, admission, or waiver of any ultimate determination of relevance,
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`admissibility, or discoverability of particular information for any purpose, and without waiver of
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`any attorney-client, work product or other privilege or immunity. Immersion makes this disclosure
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`based on its present information, without the benefit of discovery. Moreover, to the extent the
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`Court construes the claims of any of the asserted patents, additional arguments and/or information
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`may be relevant in light of any such construction. Immersion, therefore, reserves the right to
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`supplement and/or amend this disclosure at any time in view of the Court’s construction, in view
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`of any new information learned during fact and expert discovery, or for any other reason
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`1
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`Valve Exhibit 1078
`Valve v. Immersion
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`permissible under the Federal and Local Rules, or any other applicable rules or Order in the above-
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`captioned matter, including the Court’s ruling on Valve’s pending motion to dismiss. (Dkt. 37).
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`Local Patent Rule 120(a) “Asserted Claims”
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`Immersion identifies the following claims (together the “Asserted Claims”) from each
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`patent in suit that Immersion alleges are infringed by Valve and the statutory subsection of 35
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`U.S.C. § 271 asserted:
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`’260 Patent: Claims 1, 2, 5, 6, 7; 35 U.S.C. § 271(a), (b), and (f)
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`’507 Patent: Claims 1-8; 35 U.S.C. § 271(a), (b), and (f)
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`’042 Patent: Claims 1, 2, 3, 7, 8, 9, 10, 11, 13, 14, 15, 16, 18, 19; 35 U.S.C. § 271(a), (b),
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`and (f)
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`’546 Patent: Claims 1, 2, 3, 5, 6, 7; 35 U.S.C. § 271(a), (b), and (f)
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`’907 Patent: Claims 1-20; 35 U.S.C. § 271(a), (b), and (f)
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`’067 Patent: Claims 1, 2, 3, 5, 6, 7, 8, 11, 12, 15, 17-21; 35 U.S.C. § 271 (a), (b), and (f)
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`’738 Patent: Claims 1, 2, 3, 6, 14, 15, 19; 35 U.S.C. § 271 (a), (b), and (f)
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`Local Patent Rule 120(b) “Accused Device”
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`Immersion identifies the following apparatus, product, device, process, method, act or
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`instrumentality Accused Instrumentalities made, imported, offered for sale, and/or sold by Valve.
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`As explained in Immersion’s Complaint, Valve makes, uses, sells, offers for sale, and/or imports
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`handheld as well as augmented reality and virtual reality (“AR/VR”) video game systems such as
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`the Steam Deck and Valve Index. These video game systems integrate multiple game engines
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`including, for example and without limitation, Steam VR and Steam Input, as well as game titles
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`by Valve through its Steam platform, including for example and without limitation, Half-Life:
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`Alyx, MoonDust: Knuckles Tech Demo, Counter-Strike: Global Offensive, STAR WARS Jedi:
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`Survivor, War Thunder, Apex Legends, Call of Duty®: Black Ops III, Call of Duty®: Modern
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`Warfare II, Warframe, Marvel’s Guardians of the Galaxy, Grand Theft Auto V, and any other
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`game titles sold on the Steam platform that incorporate haptic capabilities. “Accused Handheld
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`Instrumentalities” means the Valve Steam Deck and the corresponding software (including Steam)
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`and game titles that provide examples of infringement of the Asserted Claims. “Accused VR
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`Instrumentalities” means the Valve Index (including the headset and controllers) and the
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`corresponding software (including SteamVR), and game titles that provide examples of
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`infringement of the Asserted Claims.
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`’260 Patent: For the identified claims above, the Accused Instrumentalities for the ’260
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`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
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`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
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`chart for the ’260 Patent.
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`’507 Patent: For claims 1-3, the Accused Instrumentalities for the ’507 Patent are the
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`Accused Handheld Instrumentalities and the Accused VR Instrumentalities. For claims 4-8, the
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`Accused Instrumentalities are the Accused Handheld Instrumentalities. Immersion further
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`identifies certain game titles that provide non-limiting examples of infringement of the Asserted
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`Claims in the corresponding claim chart for the ’507 Patent.
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`’042 Patent: For the identified claims above, the Accused Instrumentalities for the ’042
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`Patent are the Accused Handheld Instrumentalities. Immersion further identifies certain game titles
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`that provide non-limiting examples of infringement of the Asserted Claims in the corresponding
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`claim chart for the ’042 Patent.
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`’546 Patent: For the identified claims above, the Accused Instrumentalities for the ’546
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`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
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`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
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`chart for the ’546 Patent.
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`’907 Patent: For the identified claims above, the Accused Instrumentalities for the ’907
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`Patent are the Accused Handheld Instrumentalities. Immersion further identifies certain game titles
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`that provide non-limiting examples of infringement of the Asserted Claims in the corresponding
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`claim chart for the ’907 Patent.
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`’067 Patent: For the identified claims above, the Accused Instrumentalities for the ’067
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`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
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`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
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`chart for the ’067 Patent.
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`’738 Patent: For the identified claims above, the Accused Instrumentalities for the ’738
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`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
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`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
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`chart for the ’738 Patent.
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`Local Patent Rule 120(c) “Claim Charts”
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`Immersion hereby incorporates by reference the Complaint filed in the above-captioned
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`matter, and any amended pleadings that may be filed by Immersion in this matter. The enclosed
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`charts disclose where each element of each Asserted Claim is found within each Accused Device
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`to the extent such information is presently known to Immersion and without the benefit of
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`discovery. Immersion reserves the right to provide further details regarding Valve’s infringement
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`as discovery is provided by Valve.
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`Ex. A ’260 Patent
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`Ex. B ’507 Patent
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`4
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`Ex. C ’042 Patent
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`Ex. D ’546 Patent
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`Ex. E ’907 Patent
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`Ex. F ’067 Patent
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`Ex. G ’738 Patent
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`Local Patent Rule 120(d) Indirect & Joint Infringement
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`Immersion alleges that all of the Asserted Claims are infringed directly or indirectly by
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`Valve in violation of 35 U.S.C. § 271, et seq., including 35 U.S.C. § 271(a), (b), and (f).
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`Valve directly infringes the Asserted Claims as detailed in Exhibits A-G.
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`Valve indirectly infringes the Asserted Claims to the extent Valve’s users are direct
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`infringers of the Asserted Claims as referenced in Exhibits A-G, and their acts of direct
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`infringement are use of the Accused Instrumentalities in an infringing manner as described in
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`Exhibits A-G. With knowledge of infringement of the Asserted Claims going back to at least the
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`filing of the Complaint in the above-captioned matter, Valve has taken and continues to take active
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`steps to induce infringement of the Asserted Claims by its users. Such active steps include, but
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`are not limited to, making and selling the Accused Instrumentalities, encouraging third parties to
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`develop infringing features for the Accused Instrumentalities, providing its users with instructions
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`on use of the accused features of each Accused Instrumentality.
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`In addition, Valve infringes by supplying or causing to be supplied in or from the United
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`States all or a substantial portion of the components of the Accused Instrumentalities, including
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`software, in such manner as to actively induce the combination of such components outside of the
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`United States in a manner that would infringe the patent if such combination occurred within the
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`United States. Valve further also causes to be supplied in or from the United States components of
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`the Accused Instrumentalities especially made for use in the Accused Instrumentalities, including
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`without limitation software, that are not staple articles of commerce suitable for substantial
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`noninfringing use, knowing that such component is so made or adapted and intending that such
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`component will be combined outside of the United States in a manner that would infringe the
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`patent if such combination occurred within the United States.
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`Local Patent Rule 120(e) Literal Infringement & Doctrine of Equivalents
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`Immersion identifies all the Asserted Claims as literally infringed. Immersion further
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`identifies the following claims as also infringed under the doctrine of equivalents: ’738 Patent,
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`Claim 1; ’738 Patent, Claim 15. Immersion reserves the right to provide further details regarding
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`Valve’s infringement under the doctrine of equivalents as discovery is provided by Valve.
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`Local Patent Rule 120(f) Priority Date
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`Immersion presently asserts the following priority dates for all asserted claims of the
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`Asserted Patents:
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`’260 Patent – November 1, 2001
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`’507 Patent – November 26, 2003
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`’042 Patent – December 27, 2006
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`’546 Patent – August 29, 2012
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`’907 Patent – December 23, 2014
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`’067 Patent – June 15, 2018
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`’738 Patent – December 13, 2016
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`Immersion reserves the right to supplement and/or amend this disclosure in view of the
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`Court’s construction, new information learned during fact and expert discovery, or for any other
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`reason permissible under the Federal and Local Rules.
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`6
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`Date: October 20, 2023
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`Respectfully submitted,
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`FOLIO LAW GROUP PLLC
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`/s/ Stefan Szpajda
`Stefan Szpajda, WA Bar No. 50106
`Cristofer I. Leffler, WA Bar No. 35020
`David Schumann, CA Bar No. 223936
`C. Maclain Wells, CA Bar No. 221609 (pro hac vice)
`Sam Kim, CA Bar No. 282582
`Palani P. Rathinasamy, CA Bar No. 269852
`Cliff Win, Jr., CA Bar No. 270517
`1200 Westlake Ave. N., Suite 809
`Seattle, WA 98109
`Tel: (206) 880-1802
`Email: stefan@foliolaw.com
`cris.leffler@foliolaw.com
`david.schumann@foliolaw.com
`maclain@foliolaw.com
`sam.kim@foliolaw.com
`palani@foliolaw.com
`cliff.win@foliolaw.com
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`Joseph M. Abraham, TX Bar No. 24088879
`Timothy F. Dewberry, TX Bar No. 24090074
`Folio Law Group PLLC
`13492 Research Blvd., Suite 120, No. 177
`Austin, TX 78750
`Tel: (737) 234-0201
`Email: joseph.abraham@foliolaw.com
`timothy.dewberry@foliolaw.com
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`Attorneys for Immersion Corporation
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`CERTIFICATE OF SERVICE
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`The undersigned counsel hereby certifies that on October 20, 2023, a true and correct
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`copy of the foregoing was served on all counsel of record via email.
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`/s/ Stefan Szpajda
`Stefan Szpajda
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