Case 2:20-cv-00295-JRG Document 41 Filed 03/17/21 Page 1 of 6 PageID #: 611
`
`
`
`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’ SUPPLEMENTAL 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 17, 2021, Samsung is filing petition numbers IPR2021-00666, IPR2021-
`
`00667, IPR2021-00668, IPR2021-00669, and IPR2021-00670 with the Patent Trial and Appeal
`
`Board requesting inter partes review of U.S. Patent Nos. 9,529,768 (“’768 patent”), 8,977,797
`
`(“’797 patent”), 9,703,750 (“’750 patent”), RE44,654 (“’654 patent”), and RE45,140 (“’140
`
`patent”). The Petitions assert the following grounds of invalidity:
`
`Patent No.
`
`IPR Petition
`No.
`IPR2021-00666 U.S. Patent No.
`9,529,768
`(“’768 patent”)
`
`
`IPR Ground
`
`Claims
`
`1
`
`2
`
`3
`
`1-9, 13-25, 27-
`33, 35, 39
`
`34, 36-38, 40
`
`10-12
`
`1
`
`Grounds of
`Unpatentability
`US 6,690,676
`(“Gulick”) and US
`5,822,571
`(“Goodrum”)
`Gulick, Goodrum,
`and US 6,389,029
`(“McAlear”)
`US 6,041,372
`
`
`
`
`SAMSUNG
`EX 1020, PAGE 1
`
`
`
`
`
`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’ SUPPLEMENTAL 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 17, 2021, Samsung is filing petition numbers IPR2021-00666, IPR2021-
`
`00667, IPR2021-00668, IPR2021-00669, and IPR2021-00670 with the Patent Trial and Appeal
`
`Board requesting inter partes review of U.S. Patent Nos. 9,529,768 (“’768 patent”), 8,977,797
`
`(“’797 patent”), 9,703,750 (“’750 patent”), RE44,654 (“’654 patent”), and RE45,140 (“’140
`
`patent”). The Petitions assert the following grounds of invalidity:
`
`Patent No.
`
`IPR Petition
`No.
`IPR2021-00666 U.S. Patent No.
`9,529,768
`(“’768 patent”)
`
`
`IPR Ground
`
`Claims
`
`1
`
`2
`
`3
`
`1-9, 13-25, 27-
`33, 35, 39
`
`34, 36-38, 40
`
`10-12
`
`1
`
`Grounds of
`Unpatentability
`US 6,690,676
`(“Gulick”) and US
`5,822,571
`(“Goodrum”)
`Gulick, Goodrum,
`and US 6,389,029
`(“McAlear”)
`US 6,041,372
`
`
`
`
`SAMSUNG
`EX 1020, PAGE 1
`
`
`
`Case 2:20-cv-00295-JRG Document 41 Filed 03/17/21 Page 2 of 6 PageID #: 612
`
`IPR Petition
`No.
`
`Patent No.
`
`IPR Ground
`
`Claims
`
`Grounds of
`Unpatentability
`(“Hart”),
`Goodrum, and
`McAlear
`Gulick, Goodrum,
`and US 6,600,747
`(“Sauber”)
`Gulick and
`Goodrum
`Gulick, Goodrum,
`McAlear
`Heart and
`Goodrum
`Hart, Gulick,
`Goodrum,
`McAlear
`Gulick, Goodrum,
`McAlear, and
`Sauber
`Gulick and
`Goodrum
`
`
`
`
`
`
`IPR2021-00667 U.S. Patent No.
`8,977,797
`(“’797 patent”)
`
`
`IPR2021-00668 U.S. Patent No.
`9,703,750
`(“’750 patent”)
`
`
`IPR2021-00669 U.S. Reissued
`Patent No.
`RE44,654
`(“’654 patent”)
`
`
`IPR2021-00670 U.S. Reissued
`Patent No.
`RE45,140
`(“’140 patent”)
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`1
`
`2
`
`3
`
`4
`
`1
`
`2
`
`3
`
`26
`
`4-6, 14-17, 21-
`23, 36-38
`27-31, 33, 34
`
`7-9, 18-20
`
`1-3, 10-13
`
`32, 35
`
`1-3, 5, 6, 10, 11,
`14-23, 25-28,
`31-34, 44, 45
`12, 13, 35-43
`
`51
`
`29-30
`
`17-20
`
`20-22
`
`14-16, 26-27,
`35-36
`23-25, 28-34
`
`Gulick, Goodrum,
`and Sauber
`4, 7-9, 24, 46-50 Gulick, Goodrum,
`and McAlear
`Gulick, Goodrum,
`McAlear, and
`Sauber
`Hart, Goodrum,
`and McAlear
`Gulick and
`Goodrum
`Gulick, Goodrum,
`and McAlear
`Hart and Goodrum
`
`Hart, Goodrum,
`and McAlear
`Gulick and
`Goodrum
`Gulick, Goodrum,
`and Sauber
`Gulick, Goodrum,
`and McAlear
`
`30-33, 35
`
`14, 16, 17, 38
`
`18-20, 22-26,
`28, 29, 34, 36,
`
`2
`
`SAMSUNG
`EX 1020, PAGE 2
`
`
`
`Case 2:20-cv-00295-JRG Document 41 Filed 03/17/21 Page 3 of 6 PageID #: 613
`
`IPR Petition
`No.
`
`Patent No.
`
`IPR Ground
`
`Claims
`
`4
`
`37
`15, 21, 27
`
`Grounds of
`Unpatentability
`
`Gulick, Goodrum,
`Sauber, and
`McAlear
`
`Defendants hereby stipulate that:
`
`•
`
`if the Patent Trial and Appeal Board (PTAB) institutes IPR on IPR2021-00666,
`
`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 partes 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 IPR2021-00667,
`
`then Defendants will not pursue in this case the specific grounds identified above
`
`in connection with the ’797 patent and claims as originally issued on the instituted
`
`inter partes 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 IPR2021-00668,
`
`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 partes review petition, or on any other ground for which the PTAB
`
`3
`
`
`
`
`
`
`
`
`SAMSUNG
`EX 1020, PAGE 3
`
`
`
`Case 2:20-cv-00295-JRG Document 41 Filed 03/17/21 Page 4 of 6 PageID #: 614
`
`
`
`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 IPR2021-00669,
`
`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 partes 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 IPR2021-00670,
`
`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 partes 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 supplemental stipulation is not intended, and should not be construed, to limit
`
`Defendants’ ability to assert invalidity of the asserted claims of the’768 patent, ’797 patent, ’750
`
`patent,’654 patent, and ’140 patent in this case on any other ground, regardless of whether inter
`
`partes review is instituted.
`
`
`
`
`
`
`4
`
`SAMSUNG
`EX 1020, PAGE 4
`
`
`
`Case 2:20-cv-00295-JRG Document 41 Filed 03/17/21 Page 5 of 6 PageID #: 615
`
`
`
`
`
`Dated: March 17, 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 41 Filed 03/17/21 Page 6 of 6 PageID #: 616
`
`
`
`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 17th day of March, 2021.
`
`/s/ Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`SAMSUNG
`EX 1020, PAGE 6
`
`
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