Arnold & Porter nsupa
`
`jin.park@arnoldporter.com
`
`December 17, 2025
`
`VIA E-MAIL (AHEALY @SUSMANGODFREY.COM)
`
`Andres Healy, Esq.
`Susman Godfrey L.L.P.
`401 Union Street
`
`Suite 3000
`
`Seattle, WA 98101
`
`Re: Zophonos Inc. v. Samsung Electronics America, Inc. et al,
`Case No. 2:25-cv-00752-JRG (E.D. Tex.)
`
`Dear Mr. Healy:
`
`We write regarding IPR2026-00083, in which Petitioners Samsung Electronics
`Co., Ltd., and Samsung Electronics America, Inc. (together “Samsung”), challenge the
`patentability of claims 1-20 of U.S. Patent No. 10,656,906 (“the 906 patent”). Samsung
`hereby stipulates that, if the Director of the Patent and Trademark Office (“Director”™)
`permits Samsung to file this stipulation as an exhibit in the IPR proceeding prior to
`issuing his decision on institution and, thereafter, institutes this IPR petition on the
`grounds presented therein, then Samsung will not pursue in the above-captioned litigation
`(1) any grounds that were raised or reasonably could have been raised in the IPR, and (ii)
`combinations of the prior art asserted in this IPR with unpublished system prior art. See
`Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)
`(precedential as to § II.A); Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205,
`Paper 19 (PTAB March 28, 2025).
`
`For the sake of clarity and to avoid any doubt, if the Director does not permit
`Samsung to file this stipulation as an exhibit in the IPR proceeding prior to his decision
`on institution, declines institution, or later vacates institution of this IPR, Samsung
`reserves the right to pursue in this litigation (i) any ground that was raised or reasonably
`could have been raised in the IPR, and/or (ii) combinations of the prior art asserted in this
`IPR with unpublished system prior art. This stipulation is not intended, and should not be
`construed, to limit Samsung’s ability to assert invalidity of the asserted claims of the *906
`patent on any other ground, regardless of whether IPR is instituted.
`
`Arnold & Porter Kaye Scholer LLP Samsung v. Zophonos
`601 Massachusetts Ave, NW | Washington, DC 20001-3743 | www.arnoldporter.com |PR2026-00083
`Exhibit 1023 Exhibit 1023
`Page 01 of 02
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`Arnold &Porter
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`Andres Healy, Esq.
`December 17, 2025
`Page 2
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`Sincerely,
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`/s/ Jin-Suk Park
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`Jin-Suk Park
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`Exhibit 1023
`Page 02 of 02
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