Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12003 Filed 01/12/24 Page 1 of 26
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`EXHIBIT 1
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`

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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12004 Filed 01/12/24 Page 2 of 26
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION
`
`In Re Neo Wireless, LLC
`Patent Litigation
`
`Neo Wireless, LLC v.
`Ford Motor Company
`
`Neo Wireless, LLC v.
`American Honda Motor Co., Inc., et al.
`
`Neo Wireless, LLC v.
`Volkswagen Group of America, Inc., et al.
`
`Neo Wireless, LLC v.
`Nissan North America Inc., et al.
`
`Neo Wireless, LLC v.
`Toyota Motor Corporation, et al.
`Neo Wireless, LLC v.
`General Motors Company, et al.
`
`Neo Wireless, LLC v.
`Tesla Inc.
`
`Neo Wireless, LLC v.
`Mercedes-Benz USA, LLC
`
`Neo Wireless, LLC v.
`FCA US LLC
`
`2:22-MD-03034-TGB
`Hon. Terrence G. Berg
`2:22-CV-11402-TGB
`
`2:22-CV-11403-TGB
`
`
`2:22-CV-11404-TGB
`
`
`2:22-CV-11405-TGB
`
`
`2:22-CV-11406-TGB
`
`
`2:22-CV-11407-TGB
`
`
`2:22-CV-11408-TGB
`
`
`2:22-CV-11769-TGB
`
`
`2:22-CV-11770-TGB
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND
`UNENFORCEABILITY CONTENTIONS
`
`
`
`
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`

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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12005 Filed 01/12/24 Page 3 of 26
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`Defendants 1 hereby provide the following Preliminary Invalidity and Unenforceability
`
`Contentions (“Contentions”) to Plaintiff Neo Wireless, LLC (“Neo Wireless” or “Plaintiff”) for
`
`U.S. Patent Nos. 8,467,366 (“the ’366 patent”), 10,833,908 (“the ’908 patent”), 10,075,941
`
`(“the ’941 patent”), 10,447,450 (“the ’450 patent”), 10,965,512 (“the ’512 patent”), and
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`10,771,302 (“the ’302 patent”) (collectively, the “Asserted Patents”).
`
`
`
`I.
`
`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
`
`In its September 28, 2022 Infringement Contentions, Neo Wireless asserted the following
`
`claims (the “Asserted Claims”):
`
`• Claims 1-5, 17, 20, and 21 of the ’366 Patent;
`
`• Claims 1-30 of the ’908 Patent;
`
`• Claims 8, 10, 12, 13, and 14 of the ’941 Patent;
`
`• Claims 7, 8, 10, and 11 of the ’450 Patent;
`
`• Claims 15, 20, 21, 23, 28, and 29 of the ’512 Patent; and
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`• Claims 1, 2, 4-7, 23, 24, and 26-29 of the ’302 Patent.
`
`
`
`The Defendants do not provide any Contentions directed to claims that Neo Wireless has
`
`not asserted for purposes of infringement. To the extent Neo Wireless may be permitted to assert
`
`additional claims in the future, the Defendants reserve all rights to disclose new or supplemental
`
`
`1 “Defendants” in this document and its attachment refer to: General Motors Co.; General
`Motors LLC; Ford Motor Co.; Am. Honda Motor Co., Inc., Honda Development & Mfg. of Am.,
`LLC; Volkswagen Grp. of Am., Inc.; Volkswagen Grp. of Am. Chattanooga Operations, LLC;
`Nissan N. Am. Inc.; Nissan Motor Acceptance Corp. a/k/a Nissan Motor Acceptance Co. LLC;
`Tesla Inc.; FCA US, LLC; Mercedes-Benz USA, LLC; Toyota Motor Corp.; Toyota Motor N.
`Am. Inc.; Toyota Motor Sales, USA Inc.; Toyota Motor Eng. & Mfg. N. Am. Inc.; Toyota Motor
`Credit Corp.
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
`-2-
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12006 Filed 01/12/24 Page 4 of 26
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`D.
`
`Prior Art Products and/or Knowledge
`
`The Asserted Claims are invalid under 35 U.S.C. §§ 102 and/or 103 based on prior art
`
`items offered for sale or publicly used or known or prior inventions, such as prior art products,
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`including systems embodying any alleged inventions or structures described in, and/or any
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`knowledge disclosed by or referred to in, any of the prior art patents or prior art publications
`
`identified above in Sections III.B and III.C. Because Defendants have not yet completed discovery
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`in this case, Defendants reserve the right to supplement this disclosure with facts, documents, or
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`other information learned at a later point through third-party discovery or further investigation.
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`For example, Defendants expect to receive documents from additional third parties either through
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`informal requests or under subpoenas that are believed to have knowledge, documentation, and/or
`
`corroborating evidence concerning some of the prior art listed above and below and/or additional
`
`prior art. These third parties include without limitation the authors, inventors, or assignees of the
`
`references listed in these disclosures. In addition, Defendants reserve the right to assert invalidity
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`under other sections of 35 U.S.C. § 102 to the extent that discovery or further investigation yield
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`information forming the basis for such invalidity.
`
`Table 1: Products5
`
`Entity that Maded/
`Used / Offered /
`Known
`Motorola Inc.
`
`Item Offered for Sale /
`Publically Used / Known
`
`Canopy
`
`Date of Use /
`Sale / Offer /
`Public
`Disclosure
`At least 2002
`
`Identity of
`Person
`Receiving Offer
`/ To Whom
`Made Known
`Motorola
`Actual/Potential
`Customers
`
`
`5 Any discussion of a physical product (such as those listed in Table 1) herein shall also
`apply with equal force to the corresponding product-related documents produced herewith, as well
`as those corresponding product-related documents produced at later points during discovery. In
`other words, both the product-related documents and the underlying products themselves qualify
`as prior art in the context that they are used herein.
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
`-30-
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12007 Filed 01/12/24 Page 5 of 26
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`Entity that Maded/
`Used / Offered /
`Known
`Motorola Inc.
`
`Item Offered for Sale /
`Publically Used / Known
`
`Project Angel
`
`Clearwire
`
`Clear
`
`Date of Use /
`Sale / Offer /
`Public
`Disclosure
`At least
`March 2002
`
`At least 2004
`
`Atheros
`
`Netro
`
`SR Telecom
`
`AR5005G
`
`At least 2003
`
`Angel
`
`Angel
`
`At least 2003
`
`At least 2003
`
`AT&T Wireless
`
`Digital Broadband (Project
`Angel)
`
`At least 2000
`
`Radix/BeamReach
`
`BeamPlex/Project Angel
`
`At least 2002
`
`Broadstrom/Adaptix
`
`Broad@ir/CelerFlex/Project
`Angel
`
`At least 2000
`
`NextNet Wireless
`
`Broadband Wireless
`
`At least 2003
`
`L-3 PrimeWave
`Communications/IoSpan
`
`Amphion
`Semiconductor LTD.
`
`AirBurst
`
`At Least 2002
`
`CS3820 and CS3720
`
`At least 2002
`
`Alvarion
`
`BreezeMAX
`
`At least 2002
`
`Linksys
`
`WAP54G/WMP54G/WRT54G At least 2003
`
`Identity of
`Person
`Receiving Offer
`/ To Whom
`Made Known
`Motorola
`Actual/Potential
`Customers
`Clearwire
`Actual/Potential
`Customers
`Atheros
`Actual/Potential
`Customers
`Netro
`Actual/Potential
`Customers
`SR Telecom
`Actual/Potential
`Customers
`AT&T
`Actual/Potential
`Customers
`BeamReach
`Actual/Potential
`Customers
`Adaptix
`Actual/Potential
`Customers
`NextNet
`Actual/Potential
`Customers
`IoSpan
`Actual/Potential
`Customers
`Amphion
`Actual/Potential
`Customers
`Alvarion
`Actual/Potential
`Customers
`Linksys
`Actual/Potential
`Customers
`
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`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12008 Filed 01/12/24 Page 6 of 26
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`Entity that Maded/
`Used / Offered /
`Known
`Netgear
`
`Item Offered for Sale /
`Publically Used / Known
`
`WG511T/WGT624
`
`Date of Use /
`Sale / Offer /
`Public
`Disclosure
`At least 2003
`
`Identity of
`Person
`Receiving Offer
`/ To Whom
`Made Known
`Netgear
`Actual/Potential
`Customers
`
`
`All of the products listed in Table 1 above qualify as prior art to each of the Asserted
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`Patents under 35 U.S.C. §102(b) because they were each in “public use” or “on sale” prior to the
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`earliest U.S. application filing date corresponding to each of the Asserted Patents.6
`
`The Federal Circuit has held that “[t]he proper test for the public use prong of the [pre-
`
`AIA] § 102(b) statutory bar is whether the purported use: (1) was accessible to the public; or (2)
`
`was commercially exploited.” See Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374, 1380
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`(Fed. Cir. 2005). Additionally, the on-sale bar of § 102(b) is triggered when the invention is both
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`(1) the subject of a commercial offer for sale not primarily for experimental purposes and (2) ready
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`for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). Each of the products listed in
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`Table 1 above meets these criteria.
`
`The Canopy and Project Angel were sold and/or offered for sale by Motorola, and were in
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`public use by its customers in the 2002 timeframe or earlier. Motorola published sales and
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`marketing documentation targeted towards Motorola’s existing or future customers, and disclosed
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`specific implementation details about the Canopy and Project Angel systems. As such, these
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`publications indicate that at least by 2002, the Canopy and Project Angel systems were each being
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`commercially exploited and were each ready for patenting. Discovery is ongoing in this case, and
`
`
`6 Based on information currently available to Defendants, the earliest possible claimed
`priority date of any Asserted Patents is January 29, 2004.
`
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`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12009 Filed 01/12/24 Page 7 of 26
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`Defendants will supplement their contentions with respect to the Canopy and Project Angel
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`systems being in “public use” or “on sale” if and when more information becomes available.
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`Indeed, Defendants expect to receive documents from third parties either through informal requests
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`or under subpoenas that are believed to have knowledge, documentation, and/or corroborating
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`evidence concerning the Canopy and Project Angel systems being in “public use” or “on sale.”
`
`Clear was sold and/or offered for sale by Clearwire, and was in public use by its customers
`
`in the 2004 timeframe or earlier. Clearwire published sales and marketing documentation targeted
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`towards Clearwire’s existing or future customers, and disclosed specific implementation details
`
`about the Clear system. As such, these publications indicate that at least by 2004, the Clear system
`
`was being commercially exploited and was ready for patenting. Discovery is ongoing in this case,
`
`and Defendants will supplement their contentions with respect to the Clear system being in “public
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`use” or “on sale” if and when more information becomes available. Indeed, Defendants expect to
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`receive documents from third parties either through informal requests or under subpoenas that are
`
`believed to have knowledge, documentation, and/or corroborating evidence concerning the Clear
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`system being in “public use” or “on sale.”
`
`The AR5005G was sold and/or offered for sale by Atheros, and was in public use by its
`
`customers in the 2003 timeframe or earlier. Atheros published sales and marketing documentation
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`targeted towards Atheros’ existing or future customers, and disclosed specific implementation
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`details about the AR5005G. As such, these publications indicate that at least by 2003, the
`
`AR5005G was being commercially exploited and was ready for patenting. Discovery is ongoing
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`in this case, and Defendants will supplement their contentions with respect to the AR5005G being
`
`in “public use” or “on sale” if and when more information becomes available. Indeed, Defendants
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`expect to receive documents from third parties either through informal requests or under subpoenas
`
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`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12010 Filed 01/12/24 Page 8 of 26
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`that are believed to have knowledge, documentation, and/or corroborating evidence concerning
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`the AR5005G being in “public use” or “on sale.”
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`Angel was sold and/or offered for sale by Netro, and was in public use by its customers in
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`the 2003 timeframe or earlier. Netro published sales and marketing documentation targeted
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`towards Netro’s existing or future customers, and disclosed specific implementation details about
`
`the Angel system. As such, these publications indicate that at least by 2003, the Angel system was
`
`being commercially exploited and was ready for patenting. Discovery is ongoing in this case, and
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`Defendants will supplement their contentions with respect to the Angel system being in “public
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`use” or “on sale” if and when more information becomes available. Indeed, Defendants expect to
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`receive documents from third parties either through informal requests or under subpoenas that are
`
`believed to have knowledge, documentation, and/or corroborating evidence concerning the Angel
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`system being in “public use” or “on sale.”
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`Angel was sold and/or offered for sale by SR Telecom, and was in public use by its
`
`customers in the 2003 timeframe or earlier. SR Telecom published sales and marketing
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`documentation targeted towards SR Telecom’s existing or future customers, and disclosed specific
`
`implementation details about the Angel system. As such, these publications indicate that at least
`
`by 2003, the Angel system was being commercially exploited and was ready for patenting.
`
`Discovery is ongoing in this case, and Defendants will supplement their contentions with respect
`
`to the Angel system being in “public use” or “on sale” if and when more information becomes
`
`available. Indeed, Defendants expect to receive documents from third parties either through
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`informal requests or under subpoenas that are believed to have knowledge, documentation, and/or
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`corroborating evidence concerning the Angel system being in “public use” or “on sale.”
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`Digital Broadband (Project Angel) was sold and/or offered for sale by AT&T Wireless,
`
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`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12011 Filed 01/12/24 Page 9 of 26
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`and was in public use by its customers in the 2000 timeframe or earlier. AT&T Wireless published
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`sales and marketing documentation targeted towards AT&T Wireless’s existing or future
`
`customers, and disclosed specific implementation details about the Digital Broadband system. As
`
`such, these publications indicate that at least by 2000, the Digital Broadband system was being
`
`commercially exploited and was ready for patenting. Discovery is ongoing in this case, and
`
`Defendants will supplement their contentions with respect to the Digital Broadband system being
`
`in “public use” or “on sale” if and when more information becomes available. Indeed, Defendants
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`expect to receive documents from third parties either through informal requests or under subpoenas
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`that are believed to have knowledge, documentation, and/or corroborating evidence concerning
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`the Digital Broadband system being in “public use” or “on sale.”
`
`BeamPlex was sold and/or offered for sale by BeamReach, formally known as Radix, and
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`was in public use by its customers in the 2002 timeframe or earlier. BeamReach published sales
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`and marketing documentation targeted towards BeamReach’s existing or future customers, and
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`disclosed specific implementation details about the BeamPlex system. As such, these publications
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`indicate that at least by 2002, the BeamPlex system was being commercially exploited and was
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`ready for patenting. Discovery is ongoing in this case, and Defendants will supplement their
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`contentions with respect to the BeamPlex system being in “public use” or “on sale” if and when
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`more information becomes available. Indeed, Defendants expect to receive documents from third
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`parties either through informal requests or under subpoenas that are believed to have knowledge,
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`documentation, and/or corroborating evidence concerning the BeamPlex system being in “public
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`use” or “on sale.”
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`The Broad@ir and CelerFlex systems were sold and/or offered for sale by Adaptix,
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`formally known as Broadstrom, and were in public use by its customers in the 2000 timeframe or
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`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12012 Filed 01/12/24 Page 10 of 26
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`obvious variation of an invention disclosed and claimed in an earlier patent by the same inventor.”)
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`And because the ’445 patent has expired, a terminal disclaimer of the ’941 patent would be
`
`ineffective to overcome this obviousness-type double patenting.
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`
`
`VII. UNENFORCEABILITY
`
`A.
`
`Unclean Hands
`
`
`
`The Named Inventors
`
`Upon information and belief, the named inventors of the Asserted Patents (Xiaodong Li,
`
`Titus Lo, Ruifeng Wang, Kemin Li, and Haiming Huang) were formerly employed by AT&T (or
`
`a subsidiary of AT&T) and/or Broadstorm Telecommunications, Inc. (“Broadstorm”). As
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`discussed further below, upon information and belief, one or more of the named inventors
`
`incorporated into the Asserted Patents information misappropriated from AT&T.
`
`Xiaodong Li (also known as Xiaodong (Alex) Li) is listed as a co-inventor of each Asserted
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`Patent. Upon information and belief, in 1996 Xiaodong Li was employed by a subsidiary of AT&T
`
`in the Wireless Systems Research Department.9 As discussed further below, by 2000, Xiaodong
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`Li was a founding employee of Broadstorm. In 2002-2003, while employed by Broadstorm, or
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`shortly thereafter, Xiaodong Li and another named inventor, Titus Lo, founded Walbell
`
`Technologies, Inc. (“Walbell”), a predecessor-in-interest to Neo Wireless.
`
`Titus Lo (also known as Titus Kwok-Yeung Lo) is listed as a co-inventor of each Asserted
`
`Patent. Upon information and belief, Titus Lo was employed by an AT&T subsidiary from 1997
`
`
`9 Xiaodong Li was employed by Lucent Technologies from 1998 to 2000 in the Wireless
`Technology Research Department. Lucent Technologies was formerly owned by AT&T. See
`https://www.britannica.com/topic/Bell-Laboratories (Nov. 18, 2019).
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
`-1000-
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12013 Filed 01/12/24 Page 11 of 26
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`to 2001 “developing OFDMA wireless technology.”10 In 2002-2003, Titus Lo co-founded Walbell,
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`a predecessor-in-interest to Neo Wireless along with Xiaodong Li.
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`Ruifeng Wang is listed as a co-inventor of the ’450 patent. Ruifeng Wang was employed
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`by an AT&T subsidiary from at least July 2000 to January 2003, working on “[s]ystem design and
`
`technology innovation for broadband wireless systems (AT&T Angel Project).” See Ruifeng Wang
`
`LinkedIn Profile. Upon information and belief, Ruifeng Wang worked at a predecessor-in-interest
`
`to Neo Wireless from at least June 2004 to August 2008.
`
`Kemin Li is listed as a co-inventor of the asserted ’941 patent, ’302 patent, ’908
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`patent, ’512 patent, and the ’366 patent (five of the six Asserted Patents). Kemin Li worked as a
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`system engineer at Broadstorm from at least August 2000 to June 2003 and then a predecessor-in-
`
`interest to Neo Wireless from January 2004 to July 2005. See Kemin Li LinkedIn Profile.
`
`Haiming Huang is listed as a co-inventor of each Asserted Patent. Upon information and
`
`belief, Haiming Huang worked at Broadstorm from at least December 2000 to June 2003 and
`
`began working for a predecessor-in-interest to Neo Wireless in 2003.
`
`
`
`AT&T’s Project Angel
`
`Upon information and belief, McCaw Cellular Communications, Inc. (“McCaw”) began
`
`developing a wireless system project called “Project Angel” in the 1990s.11 AT&T purchased
`
`McCaw in 1994, including Project Angel. In the mid to late 1990s, AT&T further developed
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`Project Angel—a wireless system incorporating orthogonal frequency-division multiple access
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`(“OFDMA”) technology that used a base station and remote units to communicate data through
`
`
`10 See “Seattle Communications (COM-19) Society Chapter,” https://labs.ece.uw.edu/ieee-
`comm/event_sep_30_2010.htm (last accessed Aug. 24, 2022).
`
`11 See https://www.rcrwireless.com/19970303/carriers/mccaws-project-angel-given-life-
`by-at-t-wireless-services (last accessed August 15, 2022).
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12014 Filed 01/12/24 Page 12 of 26
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`the wireless system.12
`
`During AT&T’s work on Project Angel, AT&T created a number of confidential
`
`documents, data, and source code related to Project Angel and OFDMA wireless communication
`
`systems. AT&T took measures to ensure the confidentiality of Project Angel and to prevent its
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`disclosure, including, upon information and belief, marking related documents, data, and source
`
`code “proprietary” and/or “confidential,” covering windows in buildings with metalized film to
`
`prevent non-authorized personnel from electronically eavesdropping on AT&T personnel
`
`associated with Project Angel, and requiring employees working on Project Angel to sign a non-
`
`disclosure agreement (“NDA”). AT&T also applied for and obtained several patents related to
`
`Project Angel and OFDMA technology. AT&T offered Project Angel for sale as early as August
`
`1999.
`
`Upon information and belief, several named inventors of the Asserted Patents, including at
`
`least Xiaodong Li, Titus Lo, and Ruifeng Wang, were employed by AT&T or one of its
`
`subsidiaries, worked on Project Angel, and/or had access to AT&T’s wireless technology research
`
`and documentation.
`
`
`
`Broadstorm
`
`Upon information and belief, named inventor Xiaodong Li was employed by or interned
`
`with AT&T, and worked on Project Angel, and/or OFDMA wireless communication systems. In
`
`the early 2000s, Xiaodong Li co-founded a Broadstorm, and later formed Walbell, a predecessor-
`
`in-interest to Neo Wireless, in 2002-2003.
`
`Upon information and belief, Xiaodong Li “proposed to strategically hire key Project
`
`
`12 See “First Amended Answer, Defenses & Counterclaims of Cellco Partnership d/b/a
`Verizon Wireless,” Adaptix, Inc. v. Apple, Inc., Civ. No. 5:13-cv-01776-PSG, Docket No. 229-2
`at 5-6 (N.D. Cal. Jun. 4, 2014).
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
`-1002-
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12015 Filed 01/12/24 Page 13 of 26
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`Angel engineers from AT&T.” See Order Denying Summary Judgment, Adaptix, Inc. v. Apple,
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`Inc. et al, Civ. No. 5:13-cv-01776-PSG, Doc. No. 404 at 4 (N.D. Cal. Jan. 15, 2015).
`
`Other patents listing Xiaodong Li as a co-inventor have been litigated in federal cases. Fact
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`discovery in these cases established a record that Broadstorm had “pretty much . . . everything . . .
`
`on [AT&T’s] engineering side” and “several AT&T technical documents related to Project Angel.”
`
`Id.
`
`Upon information and belief, several named inventors of the Asserted Patents, including at
`
`least Xiaodong Li and two additional named inventors (Kemin Li and Haiming Huang), were
`
`employed by Broadstorm and had access to or knowledge of AT&T’s wireless technology research
`
`and documentation, including Project Angel.
`
`
`
`Neo Wireless
`
`Upon information and belief, Neo Wireless has previously operated under several names
`
`and/or identifiers, including without limitation Walbell Technologies, Inc. (“Walbell”), Waltical
`
`Solutions, Inc. (“Waltical”), CFIP NCF Holdings LLC (“CFIP), and Neocific, Inc. (“Neocific”).
`
`Upon information and belief, named inventors Xiaodong Li and Titus Lo founded Walbell
`
`in 2002-2003. Upon information and belief, Xiaodong Li, Kemin Li, and Haiming Huang
`
`possessed and continued to use AT&T documentation, information, and research that Broadstorm
`
`improperly obtained from former AT&T employees.
`
`Upon information and belief, Titus Lo and Ruifeng Wang possessed and continued to use
`
`AT&T documentation, information, and research from their former employment at AT&T.
`
`Upon information and belief, one or more of the named inventors incorporated into the
`
`Asserted Patents misappropriated information from AT&T’s wireless technology research,
`
`including Project Angel.
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY AND UNENFORCEABILITY CONTENTIONS
`-1003-
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12016 Filed 01/12/24 Page 14 of 26
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`
`
`Failure to Disclose
`
`Upon information and belief, the claimed inventions of the Asserted Patents were
`
`developed fully or in-part while one or more of the named inventors was employed by AT&T
`
`and/or were developed using information illegally gained from former AT&T employees.
`
`Upon information and belief, each named inventor failed to disclose AT&T as an owner-
`
`in-interest, and failed to disclose Project Angel and other related wireless research they
`
`misappropriated from AWS and Project Angel to the United States Patent and Trademark Office
`
`(“USPTO”) while prosecuting the Asserted Patents.
`
`Upon information and belief, one or more of the named inventors, including at least
`
`Xiaodong Li, Titus Lo, and Ruifeng Wang, were aware that Project Angel and AT&T’s wireless
`
`communication research was material to the patentability of the claims of the Asserted Patents.
`
`a.
`
`The ’366 patent
`
`Upon information and belief, Xiaodong Li, Titus Lo, Haiming Huang, and Kemin Li signed
`
`an assignment agreement on April 8, 2005 warranting that “Assignors own the Rights, and that the
`
`Rights are encumbered” to US05/08169, a related predecessor application of the ’366 patent.
`
`Upon information and belief, at least Xiaodong Li and Titus Lo knew that materials filed
`
`in the ’366 patent were derived wholly or in-part from AT&T’s Project Angel and/or AT&T’s
`
`proprietary and confidential materials without permission and that their ownership and right to
`
`assign such ideas, information, or materials was absent or questionable. Upon information and
`
`belief, Xiaodong Li and Titus Lo were aware of this at the time of the April 8, 2005 assignment
`
`and no later than December 5, 2014.13
`
`
`13 See, e.g., Amended Answer and Counterclaims of ZTE (USA) Inc., Adaptix, Inc. v. ZTE
`Corporation, Civ. No. 6:13-cv-00443, Doc. No. 111 at 15 (E.D. Tex. Dec. 5, 2014) (asserting that
`patents naming Dr. Li as co-inventor were substantially derived from AT&T which was not
`
`
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`Upon information and belief, Neo Wireless and/or one of its predecessors-in-interest
`
`recorded the April 8, 2005 assignment record on December 12, 2019 as Reel/Frame 015258/0162.
`
`This document purported to convey ownership to Neocific. Recordation of this document was an
`
`intentional act. Upon information and belief, this act intended to deceive the public of the true
`
`ownership of the ’366 patent.
`
`b.
`
`The ’941 patent
`
`Upon information and belief, Xiaodong Li, Titus Lo, Haiming Huang, and Kemin Li signed
`
`an assignment agreement on April 8, 2005 warranting that “Assignors own the Rights, and that the
`
`Rights are encumbered” to US05/04601, a related application of the ’941 patent.
`
`Upon information and belief, at least Xiaodong Li and Titus Lo knew that materials filed
`
`in the ’941 patent were derived wholly or in-part from AT&T’s Project Angel and/or AT&T’s
`
`proprietary and confidential materials without permission and that their ownership and right to
`
`assign such ideas, information, or materials was absent or questionable. Upon information and
`
`belief, Xiaodong Li and Titus Lo were aware of this at the time of the April 8, 2005 assignment
`
`and no later than December 5, 2014.14
`
`Upon information and belief, Neo Wireless and/or one of its predecessors-in-interest
`
`recorded the April 8, 2005 assignment record on December 12, 2019 as Reel/Frame 051261/0382.
`
`This document purported to convey ownership to Waltical. Recordation of this document was an
`
`intentional act. Upon information and belief, this act intended to deceive the public of the true
`
`
`disclosed to the USPTO); see also Order Denying Summary Judgment, Adaptix, Inc. v. Apple, Inc.
`et al, Civ. No. 5:13-cv-01776-PSG, Doc. No. 404 at 4 (N.D. Cal. Jan. 15, 2015) (“Along with
`Xiandong Li, another one of Adaptix’s co-founders, Liu proposed to strategically hire key Project
`Angel engineers from AT&T.”) (emphasis added).
`
`14 Id.
`
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`ownership of the ’941 patent.
`
`c.
`
`The ’450 patent
`
`Upon information and belief, Xiaodong Li, Titus Lo, Haiming Huang, and Ruifeng Wang
`
`signed an assignment agreement on October 2, 2007 warranting that “Assignors own the Rights,
`
`and that the Rights are encumbered” to PCT/US06/38149, a related predecessor application of
`
`the ’450 patent.
`
`Upon information and belief, at least Xiaodong Li, Titus Lo, and Ruifeng Wang knew that
`
`materials filed in the ’450 patent were derived wholly or in-part from AT&T’s Project Angel
`
`and/or AT&T’s proprietary and confidential materials without permission and that their ownership
`
`and right to assign such ideas, information, or materials was absent or questionable. Upon
`
`information and belief, Xiaodong Li, Titus Lo, and Ruifeng Wang were aware of this at the time
`
`of the October 2, 2007 assignment and no later than December 5, 2014.15
`
`Upon information and belief, Neo Wireless and/or one of its predecessors-in-interest
`
`recorded the October 2, 2007 assignment record on December 12, 2019 as Reel/Frame
`
`051256/0932. This document purported to convey ownership to Neocific. Recordation of this
`
`document was an intentional act. Upon information and belief, this act intended to deceive the
`
`public of the true ownership of the ’450 patent.
`
`d.
`
`The ’302 patent
`
`Upon information and belief, Xiaodong Li, Titus Lo, Haiming Huang, and Kemin Li signed
`
`an assignment agreement on December 14, 2005 warranting that “Assignors own the Rights, and
`
`that the Rights are encumbered” to a related predecessor application of the ’302 patent.
`
`Upon information and belief, at least Xiaodong Li and Titus Lo knew that materials filed
`
`15 Id.
`
`
`
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`Case 2:22-md-03034-TGB ECF No. 215-2, PageID.12019 Filed 01/12/24 Page 17 of 26
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`in the ’302 patent were derived wholly or in-part from AT&T’s Project Angel and/or AT&T’s
`
`proprietary and confidential materials without permission and that their ownership and right to
`
`assign such ideas, information, or materials was absent or questionable. Upon information and
`
`belief, Xiaodong Li and Titus Lo were aware of this at the time of the December 14, 2005
`
`assignment and no later than December 5, 2014.16
`
`Upon information and belief, Neo Wireless and/or one of its predecessors-in-interest
`
`recorded the December 14, 2005 assignment record on December 12, 2019 as Reel/Frame
`
`051261/0382. This document purported to convey ownership to Waltical. Recordation of this
`
`document was an intentional act. Upon information and belief, this act intended to deceive the
`
`public of the true ownership of the ’302 patent.
`
`e.
`
`The ’908 patent
`
`Upon information and belief, Titus Lo and Haiming Huang signed an inventor declaration
`
`form for U.S. Patent Application 13/861,942 on April 12, 2013. Upon information and belief,
`
`Xiaodong Li and Kemin Li signed an inventor declaration form for U.S. Patent Application
`
`13/861,942 on June 5, 2013. Each signed inventor declaration stated, “The above-identified
`
`application was made or authorized to be made by me. I believe that I am the original inventor or
`
`an original joint inventor of a claimed invention in the application. . . . I acknowledge the duty to
`
`disclose information material to patentability[.]”
`
`Upon information and belief, at least Xiaodong Li, Titus Lo, and Ruifeng Wang knew that
`
`materials filed in the ’908 patent were derived wholly or in-part from AT&T’s Project Angel
`
`and/or AT&T’s proprietary and confidential materials without permission and that their ownership
`
`and right to assign such ideas, information, or materials was absent or questionable. Upon
`
`16 Id.
`
`
`
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`information and belief, Titus Lo was aware of this at the time of his April 12, 2013 inventor
`
`declaration. Upon information and belief, Xiaodong Li was aware of this at the time of his June 5,
`
`2013 inventor declaration and no later than December 5, 2014.17
`
`Upon information and belief, Neo Wireless and/or one of its predecessors-in-interest
`
`recorded the April 12, 2013 and June 5, 2013 inventor declaration forms on June 16, 2020.
`
`Recordation of these documents was an intentional act. Upon information and belief, this act
`
`intended to