`
`Fish & Richardson P.C.
`1000 Maine Avenue, S.W.
`Suite 1000
`Washington, DC 20024
`202 783 5070 main
`202 783 2331 fax
`
`Thad Kodish
`Principal
`tkodish@fr.com
`+1 404-724-2792 direct
`
`
`
`
`
`
`June 18, 2024
`
`
`VIA E-MAIL
`
`Russ August & Kabat
`12424 Wilshire Boulevard
`12th Floor
`Los Angeles, CA 90025
`Phone: 310-826-7474
`
`Parker Bunt & Ainsworth
`100 E Ferguson
`Suite 418
`Tyler, TX 75702
`Phone: 903-531-3535
`
`
`Re:
`
`Headwater Research LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:23-cv-
`00641 (E.D. Tex.)
`
`
`Dear Counsel:
`
`Samsung Electronics Co., Ltd. (“Samsung”) has filed an inter partes review (IPR) petition
`(IPR2024-01051) with the Patent Trial and Appeal Board (PTAB) to address the validity of
`claims 1-30 of U.S. Patent No. 8,639,811 (“the ’811 Patent”). The tables in attached Appendix
`A list all grounds, challenged claims, and references asserted in IPR2024-01051.
`
` I
`
` write to inform you that Samsung hereby stipulates that, if the PTAB institutes IPR2024-01051,
`Samsung agrees not to pursue the same grounds (listed in Appendix A below) in the district court
`litigation. Apple, Inc. v. SEVEN Networks, LLC, IPR2020-00156, Paper 10 at 19 (June 15,
`2020); see also Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC,
`IPR2019-01393, Paper 24 at 12 (June 16, 2020).
`
`
`
`Sincerely,
`
`
`
`
`Thad Kodish
`
`Attorney for Samsung Electronics Co., Ltd.
`
`
`
`
`
`SAMSUNG 1016
`
`1
`
`
`
`
`Page 2
`
`
`
`
`
`
`
`Appendix A – Grounds and Prior Art References Used in IPR2024-01051
`
`
`Ground
`
`Claim(s)
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`1F
`
`1G
`
`1H
`
`1I
`
`1J
`
`2
`
`1, 3, 6, 8-11, 14, 19-20
`
`2
`
`4, 13, 21, 23, 25
`
`17
`
`22
`
`5
`
`7
`
`18
`
`12, 15-16, 26-27, 29-30
`
`28
`
`1, 24
`
`§103
`
`Rao
`
`Rao-Panpaliya
`
`Rao-Jones
`
`Rao-Jones-Jajoo
`
`Rao-Jones-Cole
`
`Rao-Montemurro
`
`Rao-Akhtar
`
`Rao-Ramesh
`
`Rao-Freund
`
`Rao-Freund-Bedi
`
`Rao-Pregont-Jones
`
`
`List of References
`
`
`Reference Name Details
`Rao
`U.S. Pat. App. Pub. No. 2006/0039354
`
`Panpaliya
`
`U.S. Pat. No. 8,400,491
`
`Jones
`
`Jajoo
`
`Cole
`
`U.S. Pat. No. 8,285,850
`
`U.S. Pat. App. Pub. No. 2008/0162981
`
`U.S. Pat. App. Pub. No. 2008/0080458
`
`Montemurro
`
`U.S. Pat. App. Pub. No. 2009/0207817
`
`2
`
`
`
`
`
`
`
`
`Page 3
`
`Reference Name Details
`Akhtar
`U.S. Pat. App. Pub. No. 2009/0185527
`
`Ramesh
`
`Freund
`
`Bedi
`
`Pregont
`
`U.S. Pat. App. Pub. No. 2009/0228951
`
`U.S. Pat. No. 5,987,611
`
`U.S. Pat. App. Pub. No. 2010/0281154
`
`U.S. Pat. App. Pub. No 2007/0032230
`
`
`
`
`
`
`
`3
`
`
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