Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 1 of 233 PageID #: 12625
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`VB ASSETS, LLC,
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`Plaintiff,
`
`v.
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`AMAZON.COM SERVICES LLC,
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`Defendant.
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`REDACTED PUBLIC VERSION
`
`C.A. No. 1:19-cv-01410-MN
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`DECLARATION OF JEFFREY A. WARE IN SUPPORT OF DEFENDANTS’
`OPPOSITION TO MOTIONS FOR AN ONGOING ROYALTY, PRE- AND POST-
`JUDGMENT INTEREST, AND ENHANCED DAMAGES
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`{01972845;v1 }
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 2 of 233 PageID #: 12626
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`I, Jeffrey A. Ware, hereby declare as follows:
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`1.
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`I am a licensed attorney admitted in the States of Washington and California. I am
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`of counsel with the law firm of Fenwick & West LLP, counsel of record for Defendant
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`Amazon.com Services LLC (“Amazon”) in this matter. I have personal knowledge of the facts set
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`forth in this declaration submitted in support of Amazon Opposition to Motions for an Ongoing
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`Royalty, Pre- And Post-Judgment Interest, and Enhanced Damages and, if called upon to do so,
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`could and would testify competently as to the matters set forth herein.
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`2.
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`Attached as Exhibit 1 is a true and correct copy of excerpts from the Deposition of
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`Nathaniel Polish, Ph.D., taken on December 16, 2022.
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`3.
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`Attached as Exhibit 2 is a true and correct copy of the cover pleading to
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`Defendants’ Preliminary Invalidity Contentions, served December 11, 2020.
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`4.
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`Attached as Exhibit 3 is a true and correct copy of an email chain containing
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`correspondence between myself and counsel for VB Assets dated May 12 and May 13, 2022.
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`5.
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`Attached as Exhibit 4 is a true and correct copy of email correspondence from Ian
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`Liston, counsel for VB Assets, dated June 3, 2022.
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`6.
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`Attached as Exhibit 5 is a true and correct copy of an email chain containing
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`correspondence from Ryan Smith, counsel for VB Assets, dated October 19, 2023.
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`7.
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`Attached as Exhibit 6 is a true and correct copy of the table of contents from the
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`Opening Expert Report of Dr. Michael T. Johnson, served on August 15, 2022.
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`8.
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`Attached as Exhibit 7 is a true and correct copy of excerpts from the Opening
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`Expert Report of Nathaniel Polish, Ph.D.
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`9.
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`Attached as Exhibit 8 is a true and correct copy of the LinkedIn profile of Kelly
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`Vanee, available at https://www.linkedin.com/in/kvanee/ (last visited January 1, 2024).
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`{01972845;v1 }
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`1
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 3 of 233 PageID #: 12627
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`
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`I declare under penalty of perjury under the laws of the United States of America that the
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`foregoing is true and correct, and that this declaration was executed on this 3rd day of January,
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`2024, in Port Chester, New York.
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`
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`/s/ Jeffrey A. Ware
`Jeffrey A. Ware
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`{01972845;v1 }
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`2
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 4 of 233 PageID #: 12628
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`CERTIFICATE OF SERVICE
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`I hereby certify that on 3rd day of January, 2024, the attached DECLARATION OF
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`
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`JEFFREY A. WARE IN SUPPORT OF DEFENDANTS’ OPPOSITION TO MOTIONS
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`FOR AN ONGOING ROYALTY, PRE- AND POST-JUDGMENT INTEREST, AND
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`ENHANCED DAMAGES was served upon the below-named counsel of record at the address
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`and in the manner indicated:
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`
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`Neal C. Belgam, Esquire
`SMITH KATZENSTEIN & JENKINS LLP
`1000 West Street, Suite 1501
`Wilmington, DE 19801
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`
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`Ryan S. Benyamin, Esquire
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071-2027
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`
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`James C. Yoon, Esquire
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
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`
`
`Brad Tennis, Esquire
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1700 K Street NW, Fifth Floor
`Washington, DC 20006-3814
`
`
`Mikaela E. Evans-Aziz, Esquire
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`One Market Plaza
`Spear Tower, Suite 3300
`San Francisco, CA 94105-1126
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Steven J. Balick
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`Steven J. Balick
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 5 of 233 PageID #: 12629
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`Exhibit 1
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`FILED UNDER SEAL
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`

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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 6 of 233 PageID #: 12630
`HIGHLY CONFIDENTIAL
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` U N I T E D S T A T E S D I S T R I C T C O U R T
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` F O R T H E D I S T R I C T O F D E L A W A R E
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` V B A S S E T S , L L C . , )
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` P l a i n t i f f , )
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` ) C a s e N o .
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` v s . ) 1 : 1 9 - c v - 0 1 4 1 0 - M N
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` _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ )
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` * * * * H I G H L Y C O N F I D E N T I A L * * * *
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` C O N T I N U E D R E M O T E V I D E O T A P E D D E P O S I T I O N O F
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` D R . N A T H A N I E L P O L I S H
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` N e w Y o r k , N e w Y o r k
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` F r i d a y , D e c e m b e r 1 6 , 2 0 2 2
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` R e p o r t e d B y :
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` C A T H I I R I S H , R P R , C R R , C L V S
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`Page 238
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`Veritext Legal Solutions
`866 299-5127
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 7 of 233 PageID #: 12631
`HIGHLY CONFIDENTIAL
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`25
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` 3:56 p.m.)
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` THE VIDEOGRAPHER: We're back on
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` the record. The time is 3:56.
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` BY MR. SALMASTLIAN:
`
` Q. Welcome back, Dr. Polish. Can 03:56:56
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` you please turn to paragraph 670 of your
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` rebuttal report?
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` A. Okay.
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` Q. Do you see the sentence in
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` paragraph 670 where you say, "For 03:57:32
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` instance, Amazon may have had access to
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` VoiceBox's technology in the 2011 time
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` frame...and again in 2017"?
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` A. Yes.
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` Q. You don't provide any opinion 03:57:47
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` that Amazon actually copied any VoiceBox
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` technology; right?
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` MR. CARLSON: Objection, form.
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` THE WITNESS: Right. I think
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` what I say is that Amazon was exposed 03:58:28
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` to the technology, had access to the
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` technology. I don't have -- I don't
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` have evidence of actual copying. I
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` haven't looked at their code to see if
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` something was copied but what I'm 03:58:48
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`Page 410
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 8 of 233 PageID #: 12632
`HIGHLY CONFIDENTIAL
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`1
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` merely talking about here is that the
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` information was available -- certain
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` information was available to certain
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` people at certain times.
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` BY MR. SALMASTLIAN: 03:58:58
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` Q. And you also in the sentence, you
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` said Amazon may have had access, not that
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` they actually did have access; right?
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` A. I think what I identify is
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` certain people at Amazon who had access to 03:59:18
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` certain information. I don't -- I don't
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` know what would constitute Amazon itself
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` having access. I identify in my
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` subsequent paragraphs people at Amazon who
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` had access to information that was 03:59:46
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` presented by VoiceBox.
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` Q. Understood. Thanks for that
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` clarification.
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` So in paragraph 670 when you say
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` Amazon may have had access to VoiceBox 03:59:58
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` technology, you're referring to
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` conversations and presentations; right?
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` A. (Witness perusing document.)
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` So what I talk about is
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` information provided at presentations, 04:01:16
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`Page 411
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 9 of 233 PageID #: 12633
`HIGHLY CONFIDENTIAL
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` C E R T I F I C A T E
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` S T A T E O F N E W Y O R K )
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` : s s .
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` C O U N T Y O F N A S S A U )
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` I , C A T H I I R I S H , a R e g i s t e r e d
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` P r o f e s s i o n a l R e p o r t e r , C e r t i f i e d R e a l t i m e
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` R e p o r t e r , a n d N o t a r y P u b l i c w i t h i n a n d f o r
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` t h e S t a t e o f N e w Y o r k , d o h e r e b y c e r t i f y :
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` T h a t N A T H A N I E L P O L I S H , t h e w i t n e s s
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` w h o s e d e p o s i t i o n i s h e r e i n b e f o r e s e t
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` f o r t h , w a s d u l y s w o r n b y m e a n d t h a t s u c h
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` d e p o s i t i o n i s a t r u e r e c o r d o f t h e
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` t e s t i m o n y g i v e n b y t h e w i t n e s s .
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` I f u r t h e r c e r t i f y t h a t I a m n o t
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` r e l a t e d t o a n y o f t h e p a r t i e s t o t h i s
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` a c t i o n b y b l o o d o r m a r r i a g e , a n d t h a t I a m
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` i n n o w a y i n t e r e s t e d i n t h e o u t c o m e o f
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` t h i s m a t t e r .
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` I N W I T N E S S W H E R E O F , I h a v e h e r e u n t o
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` s e t m y h a n d t h i s 2 0 t h d a y o f D e c e m b e r ,
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` 2 0 2 2 .
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` < % 5 0 2 7 , S i g n a t u r e % >
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` C A T H I I R I S H , R P R , C R R , C L V S
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`1
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`Page 507
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 10 of 233 PageID #: 12634
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`Exhibit 2
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 11 of 233 PageID #: 12635
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`
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`VB ASSETS, LLC,
`
`
`
`
`v.
`
`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF DELAWARE
`
`Plaintiff,
`
`
`
`
`
`
`AMAZON.COM, INC.; AMAZON.COM LLC;
`AMAZON WEB SERVICES, INC.; A2Z
`DEVELOPMENT CENTER, INC. d/b/a LAB126;
`RAWLES LLC; AMZN MOBILE LLC; AMZN
`MOBILE 2 LLC; AMAZON.COM SERVICES,
`INC. f/k/a AMAZON FULFILLMENT SERVICES,
`INC.; and AMAZON DIGITAL SERVICES LLC,
`
`
`C.A. No. 1:19-CV-01410-MN
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`
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`Defendants.
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`I.
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`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
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`
`INTRODUCTION
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`Pursuant to paragraph 7(d) of the Court’s Scheduling Order,1 defendants Amazon.com,
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`Inc.; Amazon.com LLC; Amazon Web Services, Inc.; A2Z Development Center, Inc. d/b/a
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`Lab126; Rawles LLC; AMZN Mobile LLC; AMZN Mobile 2 LLC; Amazon.com Services, Inc.
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`f/k/a Amazon Fulfillment Services, Inc.; and Amazon Digital Services LLC (collectively,
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`“Defendants” or “Amazon”), provide the following preliminary invalidity contentions to plaintiff
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`VB Assets, LLC. (“Plaintiff’ or “VB Assets”) regarding the currently asserted claims of U.S. Patent
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`Nos. 8,073,681 (“the ’681 patent”); 9,015,049 (“the ’049 patent”); 9,626,703 (“the ’703 patent”);
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`7,818,176 (“the ’176 patent”); 8,886,536 (“the ’536 patent”); and 9,269,097 (“the ’097 patent”)
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`(collectively, the “Asserted Patents”).
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`
`1 C.A. No. 19-cv-01410 D.I. 32.
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`1
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`

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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 12 of 233 PageID #: 12636
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`Plaintiff has asserted the following claims of the Asserted Patents against Defendants in
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`this case (collectively, the “Asserted Claims”).
`
`Patent
`’176 Patent
`’536 Patent
`’097 Patent
`’681 Patent
`’049 Patent
`’703 Patent
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`Asserted Claims
`1–5, 7–21, 23–31, 33–47, 49-52
`1–12, 16–17, 24–32, 37–55
`1–2, 4, 6-15, 19-23
`1–42
`1–20
`1–9, 11–13, 15–33
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`Defendants are providing Invalidity Contentions for the above-identified Asserted Claims
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`of the Asserted Patents. Defendants are providing Invalidity Contentions for only those Asserted
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`Claims of the Asserted Patents that Plaintiff identified pursuant to paragraph 7(c) of the Court’s
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`Scheduling Order.2 To the extent VB Assets later attempts to assert additional claims against
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`Defendants, Defendants reserve the right to amend the Invalidity Contentions and contend that any
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`additional claims are also invalid. Defendants’ Invalidity Contentions are not an admission of
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`validity as to any other claims of the Asserted Patents.
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`Pursuant to paragraph 7(d) of the Court’s Scheduling Order,3 and based on Defendants’
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`investigation and knowledge developed to date, Defendants: (a) identify each currently known
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`item of prior art that anticipates and/or renders obvious the Asserted Claims; (b) state whether each
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`such item of prior art anticipates the Asserted Claims or renders the Asserted Claims obvious (alone
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`or in combination); (c) provide claim charts identifying where specifically in each item of prior art
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`each element of the Asserted Claims is found; and (d) identify grounds of invalidity of the Asserted
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`Claims under 35 U.S.C. § 112 based on indefiniteness, enablement, and/or written description.
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`
`2 C.A. No. 19-cv-01410 D.I. 32.
`3 C.A. No. 19-cv-01410 D.I. 32.
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`2
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 13 of 233 PageID #: 12637
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`Contemporaneously with these invalidity contentions, Defendants produce the documents
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`required by paragraph 4(d) of the Default Standard. This includes the prior art identified herein.
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`Defendants incorporate by reference all prior art references, charts, theories, and
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`disclosures served on VB Assets in any prior or pending court action or proceeding before the
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`Patent Trial and Appeal Board involving any of the Asserted Patents as through set forth fully
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`herein, including but not limited to, VB Assets, LLC v. Amazon.com, Inc., No. 19-cv-01410-MN
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`(D. Del.), Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01346 (Jul. 23, 2020), Amazon.com, Inc.
`
`v. VB Assets, LLC, IPR2020-01367 (Jul. 28, 2020), Amazon.com, Inc. v. VB Assets, LLC, IPR2020-
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`01374 (Jul. 28, 2020), Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01377 (Jul. 29, 2020),
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`Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01380 (Jul. 29, 2020), Amazon.com, Inc. v. VB
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`Assets, LLC, IPR2020-01381 (Jul. 29, 2020), Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01388
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`(Jul. 29, 2020), Amazon.com, Inc. v. VB Assets, LLC, IPR2020-01390 (Jul. 29, 2020).
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`Defendants’ invalidity contentions are based on information reasonably available at this
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`time with respect to the Asserted Claim(s), and are necessarily preliminary and may require
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`subsequent amendment, modification, and/or supplementation. Defendants reserve the right to
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`amend, modify, and/or supplement these invalidity contentions based on, among other things,
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`amendments, modifications or supplements to VB Assets’ infringement contentions, further
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`investigation, third-party discovery, fact or expert discovery and/or evaluation of the scope and
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`content of the prior art (including, for example, the prior art from any other cases in which VB
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`Assets asserts one or more of the Asserted Patents), disclosure of the parties’ claim constructions,
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`an order construing the Asserted Claims, new developments in the case, or any other basis
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`3
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`

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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 14 of 233 PageID #: 12638
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`
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`contemplated by the Federal Rules of Civil Procedure, the Court’s Local Rules, and any other
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`applicable order entered by the Court.4
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`Moreover, fact discovery is ongoing and Defendants have not obtained deposition
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`testimony from any of the named inventors of the Asserted Patents or any third party, including,
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`without limitation, deposition of any third party identified in these invalidity contentions.
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`Defendants expect further discovery will reveal additional prior art, including related disclosures
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`and corresponding evidence for many of the prior art references identified herein. As such,
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`Defendants have not yet completed their investigation, discovery or analysis of matters relating to
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`the validity or enforceability of the Asserted Claim(s), including, without limitation, invalidity due
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`to on-sale statutory bars, public use statutory bars, improper inventorship, or unenforceability due
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`to inequitable conduct. The disclosures herein are not and should not be construed as a statement
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`that no other persons have discoverable information, that no other documents, data compilations,
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`and/or tangible things exist that any Defendant may use to support its claims or defenses, or that
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`no other legal theories or factual bases will be pursued. Accordingly, Defendants reserve the right
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`to amend, modify and/or supplement these invalidity contentions as additional information is
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`discovered, identified or otherwise appreciated, including testimony about the scope and content
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`of the prior art and the claimed inventions.
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`For example, Defendants have served—or are serving—third-party subpoenas on Nuance
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`Communications, Inc.; AT&T Communications, LLC; Microsoft Corporation; and the
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`Massachusetts Institute of Technology, and are awaiting discovery in response to their requests.
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`Further, Defendants are still evaluating the large universe of potential prior art to identify
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`4 See, e.g., Default Standard for Discovery, Including Discovery of Electronically Stored
`Information (“ESI”), at ¶ 4 n.3 (“As these disclosures are ‘initial,’ each party shall be
`permitted to supplement.”).
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`4
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`

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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 15 of 233 PageID #: 12639
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`
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`additional prior art systems, publications related to those systems, and the proper third parties
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`from which to seek such discovery.
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`These preliminary invalidity contentions are based on the Defendants’ present
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`understanding of VB Assets’ infringement contentions served on Defendant on October 7, 2020.
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`Nothing in these preliminary invalidity contentions should be regarded as conceding that VB
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`Assets’ infringement contentions are legally or factually adequate or as necessarily reflecting the
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`proper interpretation of the claims or an interpretation of the claims that Defendants agree with or
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`propose. Defendants dispute VB Assets’ apparent claim interpretations and will identify claim
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`constructions for specific claim terms under the scheduling order governing this case. To the extent
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`additional information regarding VB Assets’ infringement contentions becomes available,
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`Defendants anticipate that they will provide corresponding invalidity contentions correlating VB
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`Assets’ interpretation of the claims with the prior art and the Defendants may thus amend their
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`invalidity contentions accordingly as applicable to the claims asserted by VB Assets.
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`Nothing in these invalidity contentions shall be treated as an admission that Defendants’
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`accused products meets any limitation of the Asserted Claims. Defendants deny that they infringe
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`any claim of the Asserted Patents. To the extent that any prior art reference identified by
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`Defendants contains a claim element that is the same as or similar to an element in an accused
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`product, inclusion of that reference in Defendants’ invalidity contentions shall not be deemed a
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`waiver of any claim construction or non-infringement position. Any use of these invalidity
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`contentions to support any allegation of infringement would be misleading, false, and wrong as a
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`matter of law and fact.
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`
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`Unless otherwise specified, the invalidity contentions set forth herein are based on the
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`alleged priority dates of the Asserted Patents asserted by VB Assets in its infringement contentions.
`
`5
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`

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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 16 of 233 PageID #: 12640
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`
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`To the extent VB Assets asserts entitlement to an earlier priority date for prior art purposes,
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`Defendants reserve the right to amend these contentions. Further, nothing in these contentions
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`constitutes an admission concerning the priority dates, conception date, or reduction to practice of
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`the Asserted Claims of the Asserted Patents.
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`II.
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`IDENTIFICATION OF PRIOR ART
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`The concepts disclosed and claimed in each of the Asserted Patents are not new, and had
`
`been disclosed, and actively practiced by others prior to the claimed invention date. The prior art
`
`includes various documents, products, patents, and inventions that separately and together render
`
`the Asserted Claims invalid. In addition, as described in more detail below, claims of the Asserted
`
`Patents are invalid under 35 U.S.C. §§ 101 and 112.
`
`Defendants assert that the prior art listed in Exhibits A–G, individually or in combination,
`
`invalidate(s) the Asserted Claims. Defendants identify patents, publications, and the products and
`
`systems they describe as prior art under 35 U.S.C. §§102 (a), (b), (e), (g) and §103. With respect
`
`to the ’176, ’097, ’536, ’049, and ’681 patents, which have an earliest filing or priority date before
`
`March 16, 2013 and are therefore not subject to the AIA rules relating to what qualifies as prior
`
`art, Defendants assert that as of the date of these invalidity contentions, these products and systems
`
`were: (1) known or used in this country before the alleged invention of the claimed subject matter
`
`of the Asserted Claims; (2) in public use and/or on sale in this country more than one year before
`
`the filing date of the patent; (3) invented in this country by another who did not abandon, suppress,
`
`or conceal, before the alleged invention of the claimed subject matter of the asserted claim; (4)
`
`patented or described in a printed publication in this or a foreign country; before the alleged
`
`invention of the claimed subject matter of the Asserted Claims; and/or (5) patented or described in
`
`a printed publication in this or a foreign country more than one year prior to the filing date of the
`
`patent. With respect to the ’703 patent, which has an earliest filing or priority date after March 16,
`
`6
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`
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`2013 and is therefore subject to the AIA rules relating to what qualifies as prior art, Defendants
`
`assert that as of the date of these invalidity contentions, these products and systems were: (1)
`
`patented, described in a printed publication, or in public use, on sale, or otherwise available to the
`
`public before the effective filing date of the claimed invention; and/or (2) described in a patent
`
`issued under 35 U.S.C. § 151, or in an application for patent published or deemed published under
`
`35 U.S.C. § 122(b), in which the patent or application names another inventor and was effectively
`
`filed before the effective filing date of the claimed invention. These prior art products and systems
`
`and their associated patents and/or printed publications individually anticipate and/or collectively
`
`render obvious each of the Asserted Claims.
`
`These prior art references and products disclose each and every element of one or more of
`
`the Asserted Claims either explicitly, inherently, or via an obvious combination and may also be
`
`relied upon to show the state of the art in the relevant timeframes. The date these prior art items
`
`were offered for sale or publicly used or known, is at least as early as the date the related
`
`publications were published. Defendants anticipate that the actual dates, circumstances, and
`
`identities of individuals will be the subject of third-party discovery during this lawsuit. Defendants
`
`therefore reserve the right to modify, amend, or supplement these invalidity contentions if
`
`additional information becomes available during the course of discovery.
`
`A.
`
`THE ’176 PATENT
`1.
`PRELIMINARY IDENTIFICATION OF INVALIDITY GROUNDS
`
`Based on the reasons identified herein and the accompanying charts and references, a
`
`person having ordinary skill in the art would have found the asserted claims of the ’176 patent
`
`invalid under 35 U.S.C. §§ 102 and/or 103. The ’176 patent invalidity charts attached as Exhibits
`
`A set forth, for corresponding limitations of an asserted claim, exemplary disclosures from each
`
`identified reference in an invalidity ground below where applicable. Defendants reserve the right
`
`7
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 18 of 233 PageID #: 12642
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`
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`to amend its invalidity grounds or charts, or provide supplemental grounds or charts, based on any
`
`amendments to Plaintiff’s infringement contentions, or information or documents that may be
`
`obtained as discovery continues including third party discovery.
`
`Defendants provide the following identification of preliminary invalidity grounds for the
`
`currently asserted claims of the ’176 Patent:
`
`Claim
`No.
`1
`
`2
`
`3
`4
`5
`
`Invalidity Grounds56 under 35 U.S.C. §§ 102 and/or 1037
`
`Kennewick II in combination with Yonebayashi, Jong, Roy, Salmenkaita, and
`Uppaluru.
`MIT Galaxy in combination with Yonebayashi, Jong, Roy, Salmenkaita, and
`Uppaluru.
`Desai in combination with Yonebayashi, Jong, Roy, Salmenkaita, and Uppaluru.
`Maddux in combination with Yonebayashi, Jong, Roy, Salmenkaita, and Uppaluru.
`Huang in combination with Yonebayashi, Jong, Roy, Salmenkaita, and Uppaluru.
`Cohen in combination with Yonebayashi, Jong, Roy, Salmenkaita, and Uppaluru.
`Partovi in combination with Yonebayashi, Jong, Roy, Salmenkaita, and Uppaluru.
`See grounds of claim 1.
`
`Grounds of claim 1 in combination with Alpdemir and Colledge.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 2.
`
`
`5 For brevity, each reference in this table is identified by its short cite, which is defined later in
`subsections and II.A.3 below.
`6 To the extent the grounds identified in the below table for a particular asserted claim refer back
`to the grounds identified for another claim, the grounds disclose the particular asserted claim
`for the reasons identified in the corresponding claim charts for the particular asserted claim.
`7 Defendants contend that any combination of references identified in this table as a ground
`invalidates the relevant asserted claim under 35 U.S.C. § 103. In addition, each reference
`identified by itself as a ground invalidates the relevant asserted claim under 35 U.S.C. § 102
`and 103, as “it is well settled that a disclosure that anticipates under § 102 also renders the
`claim invalid under §103, for anticipation is the epitome of obviousness.” Realtime Data,
`LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019) (internal citations and quotations omitted)
`(finding no error in § 103 invalidity determination based on a single reference).
`
`8
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`

`

`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 19 of 233 PageID #: 12643
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`
`
`Claim
`No.
`7
`8
`9
`
`10
`
`11
`12
`
`13
`14
`
`15
`16
`17
`18
`19
`20
`21
`23
`
`Invalidity Grounds56 under 35 U.S.C. §§ 102 and/or 1037
`
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 1.
`
`Grounds of claim 1 in combination with Colledge.
`See grounds of claim 1.
`
`Grounds of claim 1 in combination with Kennewick II and Gadd.
`See grounds of claim 10.
`See grounds of claim 1.
`
`Grounds of claim 1 in combination with Waibel.
`See grounds of claim 12.
`Kennewick II in combination with Yonebayashi and Waibel.
`
`MIT Galaxy in combination with Yonebayashi and Waibel.
`
`Desai in combination with Yonebayashi and Waibel.
`
`Maddux in combination with Yonebayashi and Waibel.
`
`Huang in combination with Yonebayashi and Waibel.
`
`Cohen in combination with Yonebayashi and Waibel.
`
`Partovi in combination with Yonebayashi and Waibel.
`See grounds of claim 14.
`See grounds of claim 14 in combination with Jong, Roy, Salmenkaita, and Uppaluru.
`See grounds of claim 14 in combination with Colledge.
`See grounds of claim 14 in combination with Alpdemir and Colledge.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`
`9
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 20 of 233 PageID #: 12644
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`
`
`
`
`Claim
`No.
`24
`25
`26
`27
`28
`29
`30
`31
`33
`34
`35
`36
`37
`38
`39
`40
`41
`42
`43
`44
`45
`46
`47
`49
`50
`51
`
`Invalidity Grounds56 under 35 U.S.C. §§ 102 and/or 1037
`
`See grounds of claim 18.
`See grounds of claim 14 in combination with Kennewick II and Gadd.
`See grounds of claim 25.
`See grounds of claim 1.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 2.
`See grounds of claim 10.
`See grounds of claim 10.
`See grounds of claim 12.
`See grounds of claim 12.
`See grounds of claim 14.
`See grounds of claim 14.
`See grounds of claim 14.
`See Grounds of claim 14 in combination with Colledge.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`See grounds of claim 18.
`
`10
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`

`

`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 21 of 233 PageID #: 12645
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`
`
`The asserted claims of the ’176 Patent are invalid in view of the grounds identified above,
`
`A person having ordinary skill in the art would have naturally consulted each of these references
`
`and combined the teachings, for the reasons identified herein and the accompanying charts.
`
`Accordingly, a person of ordinary skill in the art at the time of filing of the asserted patents would
`
`have been motivated to combine elements of the references identified above, recognizing that the
`
`combination would be a predictable use of elements known in the art to solve known problems by
`
`using known techniques, resulting in expected outcomes. Defendants’ one or more experts may
`
`further explain the motivation to combine prior art and why the asserted claims of the asserted
`
`patents are invalid for obviousness in accordance with the case schedule.
`
`The invalidity grounds provided above are preliminary. Additional or alternative grounds
`
`are possible, and defendants may rely on such grounds in this litigation. Defendants are currently
`
`unaware of what claim constructions VB Assets may seek in this case. Defendants are also
`
`unaware of the extent, if any, to which VB Assets may contend that limitations of the claims at
`
`issue are not disclosed in the prior art identified by defendants as anticipatory, and the extent to
`
`which VB Assets will contend that elements not disclosed in the asserted patent specifications
`
`would not have been known to persons of skill in the art. Additionally, discovery is ongoing.
`
`Defendants are continuing their investigation of the large universe of prior art to identify potential
`
`prior art systems, publications related to those systems, and third parties that may have information
`
`about those systems. Defendants have subpoenaed third parties and may subpoena additional third
`
`parties for such information. VB Assets may also be in possession of prior art that defendants may
`
`receive during discovery in this case. Defendants reserve the right to amend and supplement these
`
`contentions to identify other prior art, invalidity grounds, and combinations rendering the asserted
`
`claims invalid.
`
`11
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`Case 1:19-cv-01410-MN Document 316 Filed 01/10/24 Page 22 of 233 PageID #: 12646
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`
`
`2.
`
`IDENTIFICATION OF ANTICIPATING PRIOR ART
`
`In accordance with paragraph 4(d) of the Default Standard, prior art references anticipating
`
`one or more of the Asserted Claims are listed in the tables below. The attached claim charts in
`
`Exhibits A-1 through A-7, and A-17 demonstrate where each limitation of the anticipated claims
`
`is found in certain of the references listed below, either expressly or inherently in the larger context
`
`of the passage, or inherently as the reference as a whole is understood by a person having ordinary
`
`skill in the art. At least the following patents and publications are prior art under at least 35 U.S.C.
`
`§§ 102(a), (b), or (e).
`
`a.
`
`Prior Art Patents and Patent Publications That Anticipate One
`or More Asserted Claims of the ’176 Patent
`
`Country of
`Origin
`United States
`
`Filing or Priority
`Date
`July 15, 2002
`
`Japan
`
`March 30, 2001
`
`Date of Issue or
`Publication
`September 30,
`2004
`
`October 11,
`2002
`
`Short Cite
`
`“Kennewick II
`
`“Yonebayashi”
`
`United States
`
`January 4, 2001
`
`April 24, 2003
`
`“Desai”
`
`United States October 4, 1999
`
`February 22,
`2005
`United States October 22, 1999 May 20, 2008
`
`“Cohen”
`
`“Partovi”
`
`Patent Number
`
`US Patent
`Publication No:
`2004/0193420
`Japanese Patent
`Publication No:
`2002-297626
`
`US Patent
`Publication No:
`2003/0078779
`US Patent No:
`6,859776
`United States
`Patent No:
`7,376,596
`
`
`
`12
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`

`

`Case 1:19-cv-0