`
`300 North LaSalle
`Chicago, IL 60654
`United States
`
`+1 312 862 2000
`
`www.kirkland.com
`
`March 27, 2024
`
`
`
`
`
`Facsimile:
`+1 312 862 2200
`
`
`
`Jay Emerick
`To Call Writer Directly:
`+1 312 862 3772
`jay.emerick@kirkland.com
`
`
`
`VIA ELECTRONIC MAIL
`
`Brian Rosenthal
`Gibson Dunn
`200 Park Avenue,
`New York, NY 10166
`brosenthal@gibsondunn.com
`
`
`
`
`Re: SharkNinja Operating LLC et al. v. Dyson, Inc. et al., No. 1:23-cv-12372-
`ADB (D. Mass.)
`
`Dear Brian:
`
`I write regarding the petition for inter partes review (IPR) that is being filed against one
`of the asserted patents, U.S. Patent No. 10,327,607 (the “’607 patent”). Dyson, Inc. and Dyson
`Technology Limited (together, “Dyson”) hereby stipulates that, if the Patent Trial and Appeal
`Board (“PTAB”) institutes the IPR petition on the grounds presented (a table of which is
`included below), then Dyson will not pursue those same instituted grounds against the same
`patent claims in the above-captioned litigation, 1:23-cv-12372.
`
`In so stipulating, Dyson seeks to avoid multiple proceedings addressing the validity of the
`’607 patent based on the same grounds. Rather, consistent with Congressional intent, Dyson
`wishes the patentability of this patent over those grounds to be addressed at the PTAB. But, for
`the sake of clarity and to avoid any doubt, if the PTAB declines institution of the IPR or later
`vacates institution of the IPR, Dyson reserves the right to pursue the grounds of that IPR in this
`litigation.
`
`The IPR petition relies on the following prior art references:
`• Liddell (U.K. Patent Publication GB2,399,780A)
`• Organ (U.K. Patent Publication GB2,372,434A)
`• Simpson (U.S. Patent No. 1,940,609)
`
`Austin Bay Area Beijing Boston Brussels Dallas Hong Kong Houston London Los Angeles Miami Munich New York Paris Riyadh Salt Lake City Shanghai Washington, D.C.
`
`
`
`Dyson Ex1029
`Page 1
`
`
`
`Brian Rosenthal
`March 27, 2024
`Page 2
`
`• Dyson DC14 Owner’s Manual
`• Lim (U.S. Patent Publication US2004/0237482A1)
`• Soler (U.S. Patent 5,267,371)
`
`The IPR grounds are as follows:
`
`Grounds
`
`Claims
`
`Basis
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`1, 3-4, 6-13 §102; Liddell
`
`1, 3-13
`
`§103; Liddell alone or combined with Organ
`
`10
`
`14
`
`§103; Liddell combined with Organ and DC14Manual
`
`§103; Liddell combined with Lim; and Liddell combined with
`
`Organ and Lim
`
`1-4, 6-13
`
`§103; Simpson combined with Liddell
`
`1-13
`
`10
`
`§103; Simpson combined with Liddell and Organ
`
`§103; Simpson combined with Liddell and DC14Manual; and
`
`Simpson combined with Liddell, Organ, and DC14Manual
`
`14
`
`§103; Simpson combined with Liddell and Lim; Simpson
`
`combined with Liddell, Organ, and Lim
`
`1-4, 6-9,
`
`§103; Soler combined with Liddell
`
`11-13
`
`4-5
`
`§103; Soler combined with Liddell and Organ
`
`Dyson Ex1029
`Page 2
`
`
`
`Brian Rosenthal
`March 27, 2024
`Page 3
`
`
`
`
`
`
`11
`
`14
`
`§103; Soler combined with Liddell and Lim
`
`
`
`Sincerely,
`
`
`/s/ Jay Emerick
`Jay Emerick
`
`
`
`Dyson Ex1029
`Page 3
`
`
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