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`December 12, 2022
`
`VIA E-MAIL
`
`J. Stephen Ravel
`Kelly Hart & Hallman LLP
`303 Colorado St., Suite 2000
`Austin, TX 78701
`Phone: (512) 495-6400
`
`
`Re:
`
`Spacetime3D, Inc. v. Apple Inc., Case No. 6:22-cv-00149 (W.D. Tex.)
`
`
`Dear Counsel:
`
`Apple Inc. (“Apple”) has filed an inter partes review (IPR) petition (IPR2023-00343) with the
`Patent Trial and Appeal Board (PTAB) to address the validity of claims 1-19 of U.S. Patent No.
`9,304,654. The tables in attached Appendix A list all the grounds, challenged claims, and
`references asserted in IPR2023-00343.
`
` I
`
` write to inform you that Apple hereby stipulates that if the PTAB institutes IPR2023-00343
`based on the grounds and claims listed in the tables in Appendix A, Apple will not pursue in the
`District Court the specific grounds raised in IPR2023-00343 against claims 1-19 of U.S. Patent
`No. 9,304,654. See Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper No. 24 (PTAB June 16, 2020).
`
`In so stipulating, Apple seeks to avoid multiple proceedings addressing the validity of the
`challenged claims based on the same grounds. Rather, through this stipulation, Apple expresses
`its intention to have only the PTAB address the Instituted Grounds of invalidity of these
`claims. But, for the sake of clarity and to avoid any doubt, if the PTAB declines to institute any
`of the grounds identified herein, Apple reserves the right to assert the denied grounds in the
`litigation. Apple also reserves its rights to continue to assert grounds other than the Instituted
`Grounds.
`
`
`
`Sincerely,
`
`/s/Brian Rosenthal
`
`Attorney for Apple Inc.
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`cc: Counsel of record
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`APPLE 1026
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`1
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`December 12, 2022
`Page 2
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`Appendix A – Grounds and Prior Art References Used in IPR2023-00343
`
`
`Ground
`1A
`1B
`2A
`2B
`
`‘654 Patent Claims
`1-5, 7-8, 10-13, 15-17, 19
`6, 9, 14, 18
`1-5, 7-8, 10-13, 15-17, 19
`6, 9, 14, 18
`
`Basis for Rejection
`Anthony in view of Hanggie
`Anthony in view of Hanggie and Matthews
`Hanggie in view of Anthony
`Hanggie in view of Anthony and Matthews
`
`List of References
`
`
`Reference Name Details
`Anthony
`US Patent Pub. No. 2005/0091596
`Hanggie
`US Patent Pub. No. 2005/0088447
`Matthews
`US Patent Pub. No. 2006/0107229
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`2
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