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`Fish & Richardson P.C.
`1221 McKinney Street
`Suite 2800
`Houston, TX 77010
`713 654 5300 main
`713 652 0109 fax
`
`
`Benjamin C. Elacqua
`Principal
`Elacqua@fr.com
`713 654 5324 direct
`
`June 11, 2020
`
`
`VIA E-MAIL
`
`Samuel F. Baxter
`Jennifer Truelove
`MCKOOL SMITH, P.C.
`104 East Houston, Suite 300
`Marshall, Texas 75670
`
`
`Re:
`
`Seven Networks, LLC v. Apple Inc.,
`Case No. 2:19-cv-115 (E.D. Tex.)
`
`Dear Counsel:
`
`We write regarding the pending petitions for inter partes review (IPR) filed against U.S. Patent Nos.
`9,438,550; 9,516,127; 9,648,557; 9,712,476; 9,769,176; 10,091,734; 10,135,771; and 10,039,029.
`We write to inform you that Apple hereby stipulates that if the Patent Trial and Appeal Board
`(PTAB) institutes one or more of the IPR petitions on the exact same grounds presented (a table of
`which is reproduced below), then Apple will not pursue those same instituted grounds in the above-
`captioned litigation, 2:19-cv-115.
`
`While this stipulation applies to the grounds identified in the noted proceedings, for convenient
`reference, below we list those grounds:
`
`
`Patent No. Proceeding No.
`9,438,550
`IPR2020-00425
`9,516,127
`IPR2020-00254
`
`Claims
`1-40
`1-23
`24, 26, 28-33,
`36-42, 44, 46-50
`25, 34, 43
`
`27, 35, 45
`
`Basis
`§103: Fiatal, Prabu, and Bernard
`§103: Giaretta, Backholm, and Pathak
`§103: Backholm and Aleksic and/or Kim
`
`§103: Backholm and Kim or Backholm,
`Aleksic, and Kim
`§103: Backholm, (Aleksic and/or Kim), and
`Hackborn
`
`1
`
`Exhibit 1045
`Apple v. Seven Networks
`IPR2020-00235
`
`
`
`
`
`
`
`
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`
`
`June 11, 2020
`Page 2
`
`Patent No. Proceeding No.
`IPR2020-00255
`
`Basis
`§103: Chueh, Backholm, and Srinivasan
`§103: Chueh, Jiang, and Kim
`
`§103: Chueh, Jiang, Kim, and Hackborn
`§103: Chueh, Jiang, Kim, and Backholm
`
`Claims
`1-23
`24-26, 28, 29,
`32-34, 36, 37,
`40-44, 46, 47, 50
`27, 35, 45
`30-31, 38-39,
`48-49
`§103: White and Falardeau
`1-27
`§103: White, Falardeau, and Chitrapu
`6, 19
`§103: White, Falardeau, and Li
`7, 20
`§103: White, Falardeau, and Zehavi
`8, 9, 21, 22
`§103: White, Falardeau, and Shell
`11, 24
`§103: White, Falardeau, and Konicek
`28
`§103: Stephenson and Allen
`1-12 and 33-44
`13-18 and 23-28 §103: Santamaria, Suarez, and Boynton
`1-9, 11-22, 24-
`§103: Yared and Lefeber
`26
`10, 23
`1-9, 11-22, 24-
`26
`§103: Yared, Wills, and Cook
`10, 23
`IPR2020-00235 1-3, 5-11, 13, 14 §103: Douglis, Van Milligan, Sharp
`1-14
`§103: Douglis, Van Milligan, Sharp, and Lee
`1-30
`§103: Stephenson and Allen
`1-4, 6-15, 17-24 §103: Luna and Chan
`5, 16
`§103: Luna, Chan, and Jiang
`1-5, 8-16, 19-24 §103: Sundarrajan, Douglis, and
`Muthusrinivasan
`§103: Sundarrajan, Douglis, Muthusrinivasan,
`and Einarsson
`
`§103: Yared, Lefeber, and Cook
`§103: Yared and Wills
`
`IPR2020-00180
`
`IPR2020-00279
`IPR2020-00707
`IPR2020-00506
`
`IPR2020-00266
`IPR2020-00285
`
`6-8, 17-19
`
`9,648,557
`
`9,712,476
`
`9,769,176
`
`10,091,734
`
`10,135,771
`10,039,029
`
`
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`
`
`2
`
`
`
`
`
`
`
`
`
`
`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of the patents in
`suit based on the exact same grounds. Rather, consistent with Congressional intent, through this
`stipulation, Apple expresses its intention to have only the PTAB address the patentability of these
`patents in view of the identified grounds. But, for the sake of clarity and to avoid any doubt, if the
`PTAB declines institution of one or more IPRs, Apple reserves the right to pursue the grounds of
`those IPRs in this litigation. Additionally, Apple reserves its rights to continue to assert all other
`grounds identified in its Notice Regarding Prior Art Reduction (Dkt. No. 125), including any
`comprised of references included in the above-listed grounds.
`
`
`
`
`
`June 11, 2020
`Page 3
`
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`
`
`Sincerely,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` __________________
`
`Benjamin C. Elacqua
`
`Fish & Richardson P.C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`cc: Counsel of record
`
`
`
`
`3
`
`
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