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Case 2:20-cv-00295-JRG Document 40 Filed 03/08/21 Page 1 of 6 PageID #: 605
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 2:20-cv-00295-JRG
`
`JURY TRIAL DEMANDED
`
`v.
`
`ACQIS LLC,
`
` Plaintiff,
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., ET
`AL.
`
` Defendants.
`
`
`
`
`
`
`
`DEFENDANTS’ STIPULATION OF INVALIDITY CONTENTIONS
`
`Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively referred to herein as “Samsung” or “Defendants”), submit this stipulation of
`
`invalidity contentions.
`
`On March 8, 2021, Samsung is filing petition numbers IPR2021-00604, IPR2021-00605,
`
`IPR2021-00606, IPR2021-00607, and IPR2021-00608 with the Patent Trial and Appeal Board
`
`requesting inter parties review of U.S. Patent Nos. 9,703,750 (“’750 patent”), 9,529,768 (“’768
`
`patent”), 8,977,797 (“’797 patent”), RE45,140 (“’140 patent”), and RE44,654 (“’654 patent”).
`
`The Petitions assert the following grounds of invalidity:
`
`Patent No.
`
`IPR Petition
`No.
`IPR2021-00604 U.S. Patent No.
`9,703,750
`
`
`IPR Ground
`
`Claims
`
`1
`
`2
`
`1-7, 10, 11, 21-
`24, 31-35, 37,
`39, 44-50
`
`25, 27
`
`1
`
`Grounds of
`Unpatentability
`U.S. Provisional
`Application
`60/083,886
`(“Chu’886”),
`U.S. Patent
`6,345,330
`(“Chu’330”)
`
`Chu’886,
`
`
`
`Samsung
`Ex. 1020 - Page 1
`
`

`

`Case 2:20-cv-00295-JRG Document 40 Filed 03/08/21 Page 2 of 6 PageID #: 606
`
`IPR Petition
`No.
`
`Patent No.
`
`IPR Ground
`
`Claims
`
`3
`
`4
`
`1
`
`2
`
`3
`
`4
`
`1
`
`2
`
`3
`
`4
`
`1
`
`2
`
`1
`
`2
`
`IPR2021-00605 U.S. Patent No.
`9,529,768
`
`
`
`IPR2021-00606 U.S. Patent No.
`8,977,797
`
`IPR2021-00607 U.S. Reissued
`Patent No.
`RE45,140
`
`IPR2021-00608 U.S. Reissued
`Patent No.
`RE44,654
`
`
`
`
`2
`
`1-7, 10, 11, 21-
`24, 31-35, 37,
`39, 44-50
`
`25, 27
`
`1-6, 13-19, 21,
`22, 25, 33, 35-37
`39 and 40
`
`1-6, 13-19, 21,
`22, 25, 33, and
`35-37
`39 and 40
`
`4, 7-9, 14, 17,
`27, 30, 33, 34,
`36, 38
`16
`
`4, 7-9, 14, 17,
`33, 34, 36, 38
`16
`
`14-38
`
`14, 15, 17-23,
`25-31, 34-38
`20, 21, 23, 24,
`26, 27, 35 and
`36
`22 and 25
`
`Grounds of
`Unpatentability
`Chu’330, U.S.
`Patent No
`6,216,185
`(“Chu’185”)
`U.S. Patent No.
`8,253,750
`(“Huang”) and
`Chu’330
`Huang,
`Chu’330.
`Chu’185
`Chu’886,
`Chu’330
`Chu’886,
`Chu’330,
`Chu’185
`Huang, Chu’330
`
`Huang,
`Chu’330,
`Chu’185
`Chu’886,
`Chu’330
`
`Chu’886,
`Chu’330,
`Chu’185
`Huang, Chu’330
`
`Huang,
`Chu’330,
`Chu’185
`Chu’886,
`Chu’330
`Huang, Chu’330
`
`Chu’886,
`Chu’330
`
`Chu’886,
`Chu’330, U.S.
`Patent No
`6,643,777
`
`Samsung
`Ex. 1020 - Page 2
`
`

`

`Case 2:20-cv-00295-JRG Document 40 Filed 03/08/21 Page 3 of 6 PageID #: 607
`
`IPR Petition
`No.
`
`Patent No.
`
`IPR Ground
`
`Claims
`
`3
`
`4
`
`5
`
`28
`
`20, 21, 23, 24,
`26-28, 35 and 36
`22 and 25
`
`Grounds of
`Unpatentability
`(Chu’777)
`Chu’886,
`Chu’330,
`Chu’415
`Huang, Chu’330
`
`Huang,
`Chu’330,
`Chu’777
`
`Defendants hereby stipulate that:
`
`
`
`if the Patent Trial and Appeal Board (PTAB) institutes IPR on IPR2021-00604,
`
`then Defendants will not pursue in this case the specific grounds identified above
`
`in connection with the ’750 patent and claims as originally issued on the instituted
`
`inter parties review petition, or on any other ground for which the PTAB
`
`institutes, that was raised or could have reasonably been raised in the IPR (i.e.,
`
`any ground that could have reasonably been raised under §§ 102 or 103 on the
`
`basis of prior art patents or printed publications);
`
`
`
`if the Patent Trial and Appeal Board (PTAB) institutes IPR on IPR2021-00605,
`
`then Defendants will not pursue in this case the specific grounds identified above
`
`in connection with the ’768 patent and claims as originally issued on the instituted
`
`inter parties review petition, or on any other ground for which the PTAB
`
`institutes, that was raised or could have reasonably been raised in the IPR (i.e.,
`
`any ground that could have been reasonably raised under §§ 102 or 103 on the
`
`basis of prior art patents or printed publications);
`
`
`
`if the Patent Trial and Appeal Board (PTAB) institutes IPR on IPR2021-00606,
`
`then Defendants will not pursue in this case the specific grounds identified above
`
`3
`
`
`
`
`
`Samsung
`Ex. 1020 - Page 3
`
`

`

`Case 2:20-cv-00295-JRG Document 40 Filed 03/08/21 Page 4 of 6 PageID #: 608
`
`in connection with the ’797 patent and claims as originally issued on the instituted
`
`inter parties review petition, or on any other ground for which the PTAB
`
`institutes, that was raised or could have reasonably been raised in the IPR (i.e.,
`
`any ground that could have been reasonably raised under §§ 102 or 103 on the
`
`basis of prior art patents or printed publications);
`
`
`
`if the Patent Trial and Appeal Board (PTAB) institutes IPR on IPR2021-00607,
`
`then Defendants will not pursue in this case the specific grounds identified above
`
`in connection with the ’140 patent and claims as originally issued on the instituted
`
`inter parties review petition, or on any other ground for which the PTAB
`
`institutes, that was raised or could have reasonably been raised in the IPR (i.e.,
`
`any ground that could have reasonably been raised under §§ 102 or 103 on the
`
`basis of prior art patents or printed publications); and
`
`
`
`if the Patent Trial and Appeal Board (PTAB) institutes IPR on IPR2021-00608,
`
`then Defendants will not pursue in this case the specific grounds identified above
`
`in connection with the ’654 patent and claims as originally issued on the instituted
`
`inter parties review petition, or on any other ground for which the PTAB
`
`institutes, that was raised or could have reasonably been raised in the IPR (i.e.,
`
`any ground that could have reasonably been raised under §§ 102 or 103 on the
`
`basis of prior art patents or printed publications).
`
`
`
`This stipulation is not intended, and should not be construed, to limit Defendants’ ability
`
`to assert invalidity of the asserted claims of the’750 patent, ’768 patent, ’797 patent,’140 patent,
`
`and ’654 patent in this case on any other ground, regardless of whether inter parties review is
`
`instituted.
`
`
`
`4
`
`Samsung
`Ex. 1020 - Page 4
`
`

`

`Case 2:20-cv-00295-JRG Document 40 Filed 03/08/21 Page 5 of 6 PageID #: 609
`
`Dated: March 8, 2021
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Melissa R. Smith
`
`Mark D. Fowler (pro hac vice)
`Alan Limbach (pro hac vice)
`Aaron Wainscoat (pro hac vice)
`Erik R. Fuehrer (Admitted 5/24/12)
`Monica DeLazzari (pro hac vice)
`
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`Tel: 650.833.2000
`Fax: 650.833.2001
`mark.fowler@us.dlapiper.com
`alan.limbach@us.dlapiper.com
`aaron.wainscoat@usdlapiper.com
`erik.fuehrer@us.dlapiper.com
`monica.delazzari@us.dlapiper.com
`
`Aaron Fountain
`Texas Bar No. 24050619
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Tel: 512.457.7190
`Fax: 512.457.7001
`aaron.fountain@us.dlapiper.com
`
`Melissa R. Smith
`Texas Bar No. 24001351
`GILLAM & SMITH, LLP
`303 S. Washington Avenue
`Marshall, TX 75670
`Tel: 903.934.8450
`Fax: 903.934.9257
`melissa@gillamsmithlaw.com
`
`ATTORNEYS FOR DEFENDANTS
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`
`
`
`
`
`
`
`5
`
`Samsung
`Ex. 1020 - Page 5
`
`

`

`Case 2:20-cv-00295-JRG Document 40 Filed 03/08/21 Page 6 of 6 PageID #: 610
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that counsel of record who are deemed to have consented to electronic
`
`service are being served with a copy of this document via the Court’s CM/ECF system per Local
`
`Rule CV-5(a)(3) on this 8th day of March, 2021.
`
`/s/ Melissa R. Smith
`
`
`
`
`
`
`
`6
`
`
`
`
`
`Samsung
`Ex. 1020 - Page 6
`
`

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