IN THE UNITED STATES DISTRICT
`COURT FOR THE EASTERN DISTRICT
`OF TEXAS MARSHALL DIVISION
`
`)
`)
`) Civil Action No. 2:13-cv-01061-JRG-RSP
`)
`)
`
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`))
`
`)))
`
`E-WATCH, INC. AND
`E-WATCH CORPORATION,
`Plaintiff,
`v.
`
`APPLE, Inc.
`Defendants.
`
`) 2:13-cv-1062
`SAMSUNG ELECTRONICS CO., LTD,
`)
`ET AL.
`) 2:13-cv-1063
`HTC CORPORATION, ET AL.
`) 2:13-cv-1064
`LG ELECTRONICS INC., ET AL.
`) 2:13-cv-1070
`ZTE CORPORATION, ET AL.
`) 2:13-cv-1073
`SONY CORPORATION, ET AL.
`) 2:13-cv-1074
`SHARP CORPORATION, ET AL.
`MICROSOFT MOBILE OY AND NOKIA ) 2:13-cv-1075
`INC.
`HUAWEI TECHNOLOGIES CO. LTD.,
`ET AL.
`KYOCERA COMMUNICATIONS, INC.,
`ET AL.
`BLACKBERRY LIMITED, ET AL.
`
`) 2:13-cv-1076
`)
`) 2:13-cv-1077
`)
`) 2:13-cv-1078
`
`DEFENDANTS’ AMENDED INVALIDITY CONTENTIONS
`
`Pursuant to Local Patent Rules (“P.R.”) 3-3 and 3-4, Defendants Apple Inc.,
`
`Blackberry Corporation, Blackberry Limited, HTC America, Inc., HTC Corporation, Huawei
`
`Device Co., Ltd., Huawei Device USA, Inc., Kyocera Communications, Inc., Kyocera
`
`International Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics
`
`Mobilecomm U.S.A., Microsoft Mobile Oy, Nokia Inc., Samsung Electronics Co., Ltd.,
`
`Samsung Telecommunications America, LLC, Sharp Corporation, Sharp Electronics
`
`Corporation, Sony Mobile Communications (USA) Inc., and ZTE (USA), Inc. (collectively,
`
`“Defendants”) hereby serve these Amended Invalidity Contentions (“Contentions”)
`1
`
`
`
`
`
`
`
`
`
`
`

`

`concerning United States Patent Nos. 7,365,871 (the “‘871 Patent”) and 7,643,168 (the “‘168
`
`Patent”) (collectively, “patents-in-suit”) and accompanying document production on Plaintiffs
`
`e-Watch, Inc. and e-Watch Corporation (collectively, “e-Watch”). Defendants’ discovery and
`
`investigation in connection with this lawsuit are continuing, and these disclosures are based on
`
`information obtained to this date. Defendants reserve the right to supplement these
`
`Contentions if Defendants obtain additional information or if e-Watch asserts additional or
`
`different claims or otherwise modifies its assertions.
`
`INTRODUCTION
`
`Defendants’ Contentions are based, in part, on their present understanding of e-
`
`Watch’s Infringement Contentions concerning the scope and construction of the asserted patent
`
`claims and Defendants’ understanding of the scope and construction of those claims at this time.
`
`Defendants reserve the right to interpret these terms differently over the course of the litigation,
`
`and do not adopt any interpretations impliedly or expressly put forth in these contentions.
`
`Accordingly, Defendants’ Contentions, including the attached invalidity claim charts, may
`
`reflect alternative positions as to claim construction and scope. Nothing in this document,
`
`however, should be construed as an admission that Defendants agree with e-Watch’s
`
`contentions or that any claim of the patents-in-suit, whether asserted or not, is valid, enforceable
`
`or infringed.
`
`The accompanying invalidity claim charts list specific examples of prior art references,
`
`patents, knowledge, inventions, uses, sales, methods, and/or systems that included and/or
`
`disclosed, either expressly or inherently, each limitation of certain claims and/or examples
`
`of prior art references and systems in view of which a person of ordinary skill in the art would
`
`have considered each limitation and the claimed combination of such limitations obvious.
`
`2
`
`
`
`
`
`

`

`Defendants have endeavored to identify relevant portions and/or features of the identified
`
`prior art. The identified prior art, however, may contain additional descriptions of or alternative
`
`support for the claim limitations. The citations included in each chart are illustrative, not
`
`exhaustive. Defendants may rely on un-cited portions or features of the identified prior art,
`
`other documents, and fact and expert testimony to provide context or to aid in understanding the
`
`identified prior art. Where Defendants cite to a particular figure in a reference, the citation
`
`should be understood to encompass the caption and description of the figure and any text
`
`relating to the figure. Similarly, where Defendants cite to particular text referring to a figure,
`
`the citation should be understood to include the figure and caption as well. The claims
`
`addressed in the charts are anticipated and/or rendered obvious under 35 U.S.C. § 102 and/or
`
`§ 103. To the extent a prior art reference is identified as part of one or more combinations of
`
`references under 35 U.S.C. § 103, Defendants reserve the right to chart that reference
`
`independently under 35 U.S.C. § 102 at a later date should circumstances dictate.
`
`Prior art patents or publications included in these Contentions may be related (e.g., as a
`
`divisional, continuation, continuation-in-part, parent, child, or other relation or claim of priority)
`
`to earlier or later filed patents or publications, may have counterparts filed in other jurisdictions,
`
`or may incorporate (or be incorporated by) other patents or publications by reference. The
`
`listed patents or publications are intended to be representative of these other patents or
`
`publications, to the extent they exist.
`
`Consistent with P.R. 3-6, Defendants reserve the right to supplement and/or amend
`
`these contentions and the associated document production to the extent e-Watch changes its
`
`position with respect to the claim scope and/or claim construction it purports to apply to the
`
`asserted claims, should e-Watch later provide any information that it failed to provide in its
`
`3
`
`
`
`
`
`

`

`P.R. 3-1 and 3-2 disclosures, should e-Watch amend its P.R. 3-1 or 3-2 disclosures in anyway,
`
`as additional facts and/or additional discovery is obtained, and/or as other conditions require.
`
`In particular, Defendants have not yet completed their search for and analysis of relevant prior
`
`art. Thus, Defendants reserve the right to revise, amend, and/or supplement the information
`
`provided herein, including identifying, charting, and relying on additional references, should
`
`Defendants’ further search and analysis yield additional information or references, consistent
`
`with the Patent Rules and the Federal Rules of Civil Procedure. For example, Defendants
`
`expect to issue subpoenas to third parties believed to have knowledge, documentation and/or
`
`corroborating evidence concerning some of the prior art listed below and/or additional prior
`
`art. These third parties may include, without limitation, the authors, inventors, or assignees of
`
`the references listed in these disclosures.
`
`Defendants may also rely on other documents and information, including inventor
`
`admissions, concerning the scope of the asserted claims, and prior art relevant to the asserted
`
`claims, found in: the patents-in-suit, the patent prosecution history for the patents-in-suit, and
`
`related patents and/or patent applications; any deposition testimony of any inventor of the
`
`patents-in-suit; any previous trial testimony of any inventor of the patents-in-suit, and any
`
`papers filed or any evidence produced or submitted by e-Watch in connection with this
`
`litigation, or any previous litigation, related to the patents-in-suit. In particular, Defendants
`
`reserve the right to contend that the asserted claims are invalid under 35 U.S.C. § 102(f) in the
`
`event Defendants obtain evidence that inventor named in the asserted patents did not invent
`
`(either alone or in conjunction with others) the subject matter claimed in the asserted patents.
`
`In addition to the prior art identified below and the accompanying invalidity claim
`
`charts, Defendants also incorporate by reference any additional invalidity contentions,
`
`
`
`4
`
`

`

`identified prior art, or invalidity claim charts disclosed at any date by any party to any other
`
`litigation or U.S. Patent & Trademark Office proceeding involving the asserted patent or any
`
`related patent, including, without limitation, any parties’ invalidity contentions (including all
`
`amendments/supplementations), and expert reports, and any references identified in any
`
`reexamination request or proceeding relating to any of the patents-in-suit.
`
`These Contentions are not intended to reflect Defendants’ claim construction positions,
`
`which will be disclosed in due course in accordance with this Court’s Docket Control Order and
`
`Local Patent Rules. Further, by including prior art that would anticipate or render obvious claims
`
`based on e-Watch’s apparent claim construction or any other particular claim construction,
`
`Defendants are not adopting e-Watch’s claim construction or admitting to the accuracy of any
`
`particular claim construction.
`
`Defendants’ Invalidity Contentions are based on their current knowledge and
`
`understanding of the prior art at this early date in the present action. For example, Defendants
`
`have not deposed any of the individuals identified as inventors on the patent-in-suit.
`
`Defendants’ discovery and investigation in connection with this lawsuit are continuing, and,
`
`thus, these disclosures are based on information obtained to date. Defendants reserve the right,
`
`to the extent permitted by the Court and the applicable statutes and rules, to modify and
`
`supplement these Contentions, whether in response to any amendment by e-Watch of its
`
`Infringement Contentions, or otherwise becoming aware of additional prior art or further
`
`material information. Additionally, Defendants reserve the right to modify their contentions
`
`should any of the claim limitations be construed by the Court.
`
`In an effort to focus the issues, Defendants cite exemplary relevant portions of identified
`
`prior art references and inventions, even where a reference or invention may contain additional
`
`
`
`5
`
`

`

`disclosure for a particular claim element or limitation, and reserve all rights to rely on other
`
`portions of the identified references to support Defendants’ claims and defenses. Further, in
`
`many instances where a particular contention calls for combining references, any one of a
`
`number of references can be combined. The inclusion of certain exemplary combinations of
`
`prior art references does not exclude other combinations based upon the claim charts attached
`
`hereto.
`
`Moreover, as certain prior art systems and inventions are described in multiple related
`
`patents or publications with similar or identical specifications or disclosures, to the extent
`
`Defendants have identified a citation in one reference, Defendants reserve the right to rely on
`
`parallel or similar citations in related patents or publications. Persons of ordinary skill in the art
`
`would read a prior art reference and understand prior art inventions as a whole and in the context
`
`of other publications, literature, and technologies. Therefore, to understand and interpret any
`
`specific statement or disclosure of a potential prior art reference or invention, such persons
`
`would rely on other information within the reference or invention, along with other publications
`
`and their general scientific knowledge.
`
`To the extent a particular claim element is found not to be explicitly disclosed in the
`
`prior art, the particular claim element is nevertheless inherently disclosed. “An anticipatory
`
`reference . . . need not duplicate word for word what is in the claims. Anticipation can occur
`
`when a claimed limitation is ‘inherent’ or otherwise implicit in the relevant reference.”
`
`Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
`
`In addition to the prior art identified below and the accompanying invalidity claim
`
`charts, Defendants also incorporate by reference any additional invalidity contentions,
`
`identified prior art, or invalidity claim charts disclosed at any date by any party to any other
`
`
`
`6
`
`

`

`litigation or U.S. Patent & Trademark Office proceeding involving the asserted patent or any
`
`related patent, including, without limitation, any parties’ invalidity contentions (including all
`
`amendments/supplementations), and expert reports, and any references identified in any
`
`reexamination request or proceeding relating to any of the patents-in-suit.
`
`I.
`
`
`
`IDENTIFICATION OF PRIOR ART—LOCAL PATENT RULE 3-3(a)
`
`Pursuant to P.R. 3-3 and subject to Defendants’ reservation of rights, Defendants identify
`
`at least the following prior art now known to Defendants to anticipate and/or render obvious the
`
`asserted claims of the ’871 and ‘168 Patents. Defendants note that they have, in certain
`
`instances, applied the prior art in accordance with e-Watch’s improper assertions of infringement
`
`and improper application of the asserted claims. However, Defendants do not agree with e-
`
`Watch’s application and deny infringement.
`
`A.
`
`Prior Art Patents To The ‘871 Patent
`
`The following patents and publications are prior art to the asserted claims of the ‘871
`
`Patent under at least 35 U.S.C. §§ 102(a), (b), (e), (g), and/or 35 U.S.C. § 103, as indicated in the
`
`attached charts. The numerical designations herein correspond to the exhibit designations of the
`
`attached exhibits.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`U.S. Patent No. 6,009,336
`
`U.S. Patent No. 7,372,447
`
`U.S. Patent No. 5,491,507
`
`U.S. Patent No. 5,910,815
`
`U.S. Patent No. 4,258,387
`
`U.S. Patent No. 6,285,471
`
`U.S. Patent No. 5,550,646
`
`U.S. Patent No. 5,347,305
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`

`

`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`U.S. Patent No. 5,806,005
`
`U.S. Patent No. 6,278,884
`
`U.S. Patent No. 5,584,070
`
`U.S. Patent No. 5,825,408
`
`U.S. Patent No. 5,893,037
`
`U.S. Patent No. 5,969,750
`
`U.S. Patent No. 6,038,295
`
`U.S. Patent No. 6,085,112
`
`U.S. Patent No. 6,122,526
`
`U.S. Patent No. 6,452,626
`
`U.S. Patent No. 5,870,149
`
`U.S. Patent No. 6,564,070
`
`U.S. Patent No. 4,485,400
`
`U.S. Patent No. 5,550,754
`
`JP 1994-303604
`
`EP0499012
`
`JP3-133081
`
`JPH06-176114
`
`JA 1994-070312A
`
`JP 1994-233020
`
`JP 1994-268582
`
`JP H8-65647A
`
`JP H8-18622
`
`32. WO 97/26744
`
`33. WO 95/07000
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`34.
`
`35.
`
`36.
`
`37.
`
`73.
`
`74.
`
`B.
`
`GB2289555
`
`CN 1,064,182
`
`Technology and Differently Abled People, Bodil Jönsson
`
`JPH08-317465
`
`JP08-191435
`
`JP09-037129
`
`Prior Art Patents To The ‘168 Patent
`
`The following patents and publications are prior art to the asserted claims of the ‘168
`
`Patent under at least 35 U.S.C. §§ 102(a), (b), (e), (g), and/or 35 U.S.C. § 103, as indicated in the
`
`attached charts. The numerical designations herein correspond to the exhibit designations of the
`
`attached exhibits.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`48.
`
`49.
`
`50.
`
`51.
`
`U.S. Patent No. 5,666,159
`
`U.S. Patent No. 6,009,336
`
`U.S. Patent No. 7,372,447
`
`U.S. Patent No. 5,491,507
`
`U.S. Patent No. 5,550,754
`
`U.S. Patent No. 5,910,815
`
`U.S. Patent No. 4,258,387
`
`U.S. Patent No. 6,285,471
`
`U.S. Patent No. 5,550,646
`
`U.S. Patent No. 5,584,070
`
`U.S. Patent No. 5,825,408
`
`U.S. Patent No. 5,347,305
`
`U.S. Patent No. 5,806,005
`
`U.S. Patent No. 5,893,037
`
`9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`57.
`
`58.
`
`59.
`
`60.
`
`61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`66.
`
`67.
`
`U.S. Patent No. 5,969,750
`
`U.S. Patent No. 6,038,295
`
`U.S. Patent No. 6,085,112
`
`U.S. Patent No. 6,122,526
`
`U.S. Patent No. 6,452,626
`
`U.S. Patent No. 5,870,149
`
`U.S. Patent No. 6,564,070
`
`EP0499012
`
`JP3-133081
`
`JPH06-176114
`
`JA1994-070312A
`
`JP 1994-233020
`
`JP 1994-268582
`
`JP 1994-303604
`
`JP H8-65647A
`
`JPH08-317465
`
`68. WO 97/26744
`
`69. WO 95/07000
`
`70.
`
`71.
`
`72.
`
`75.
`
`76.
`
`GB2289555
`
`CN 1,064,182
`
`JP H8-18622
`
`JP08-191435
`
`JP09-037129
`
`77. WO 1999/035818
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`10
`
`

`

`In addition to the above prior art references, Defendants identify the following patents,
`
`printed publications, product literature, and other materials that are pertinent to invalidity of the
`
`asserted claims. Defendants may rely on these references as invalidating prior art, evidence of
`
`the knowledge of those skilled in the art, and/or evidence to support a motivation to combine or
`
`modify other prior art. Defendants reserve all rights to supplement or modify these invalidity
`
`contentions and to rely on these references to prove invalidity of the asserted claims in a manner
`
`consistent with the Federal Rules of Civil Procedure and the Rules of this Cornt.
`
`Additional References
`
`US. Patent No. 3,263,027
`
`US. Patent No. 6,522,325
`
`US. Patent No. 6,038,257
`
`US. Patent No. 6,697,103
`
`US. Patent No. 5,581,297
`
`US. Patent No. 6,954,859
`
`US. Patent No. 5,982,418
`
`US. Patent No. 4,831,438
`
`US. Patent No. 6,323,897
`
`US. Patent No. 6,069,655
`
`US. Patent No. 5,485,504
`
`US. Patent No. 5,170,427
`
`US. Patent No. 5,359,644
`
`W01991010328A1
`
`WO 97/40624
`
`WO 2000048155
`
`WO 98/41022
`
`EP0729266 B1
`
`GB 2242335
`
`JP 1996-294030
`
`JP3-109891
`
`CA 2,228,679
`
`Sending Color Pictures by Phone (Popular Science, J1me 1993)
`
`ll
`
`
`
`

`

`
`
`Additional References
`
`Picasso Still-Image Phone Advertisement (Popular Science, October 1993)
`
`Testbedfor a Multimedia Wireless Local Area Network, Bild Awada, Cecillia Cheung,
`Kieran Dalton, Gerard Nouny (IEEE 1992)
`
`Pocket Videophone (Popular Science, January 1991)
`
`Phone Goes The Distance For Designers, Charles Leroux (Chicago Tribune, 1990)
`
`Hand-held Videophone (Popular Science February 1992)
`
`Daylightfor Digital (October 1994)
`
`Passing Pictures (Popular Science, October 1994)
`
`New Frontiers (Popular Photography. March 1995)
`
`You ’ll Never Talk Alone (IEEE Review May 1997)
`
`Image Based Interactive Devicefor Eflective Communication, F. Ferrari, J. Nielsen, P.
`Questa, G. Sandini (SPIE Vol. 2950, 1996)
`
`Medical Decision Supportfor Remote General Practitioners Using Telemedicine, 1.].
`Armstrong and W.S. Haston ( 1997)
`
`Tactical Military Communications, Joseph A. Brendler (IEEE Communications Magazine,
`January 1992)
`
`Introduction ofa Fullv Portable, Body-Mounted Emergency Medical Information System
`(IEEE 1996)
`
`Broadband-CD110! .' OnePhonefor a Wireless Twenty First Centurv (IEEE 1994)
`
`Photos by Phone (Popular Science September 1994)
`
`A Low Cost, Intelligent Micro-Camerafor Surveillance, S P Larcombe, J M Stern, P A Ivey
`and N L Seed (IEEE 1995)
`
`Cellular and PCS: The Big Picture, Harte, Prokup, Levine (1997)
`
`Enhanced Electronic Camera, by R.G. Baker and J. Mosley (IBM Technical Bulletin, Vol.
`38, No. 3, March 1995)
`
`Appendices A and B, attached hereto, provide a list of the prior art patents and
`
`publications referenced above, pursuant to PR. 3-3(a).
`
`II.
`
`ANTICIPATION AND OBVIOUSNESS REFERENCES—LOCAL PATENT
`
`RULE 3-3(b)
`
`Subject to Defendants’ reservation of rights, Defendants contend the prior art references
`
`identified above and described in the charts attached as Exhibits 1-37, 73-74 anticipate the
`
`asserted claims of the ’871 Patent, and the prior art references identified above and described in
`
`12
`
`

`

`the charts attached as Exhibits 38-72, 75-77 anticipate the asserted claims of the ‘168 Patent.
`
`The claim charts of Exhibits 1-77 point out, for each element of the asserted claims, particular
`
`references that anticipate that element.
`
`In some instances, Defendants may have treated certain prior art as anticipatory where
`
`certain elements are expressly, implicitly, or inherently present based on e-Watch’s apparent
`
`claim construction in e-Watch’s infringement contentions. Defendants reserve the right to
`
`contend that each of the anticipatory references renders the claims obvious either in view of the
`
`reference alone or in combination with other references. The identification of any patent
`
`application should be deemed an identification of any counterpart patent or application; the
`
`identification of any article should be deemed a disclosure of any substantially similar article if
`
`published in some other form; and the identification of any patent or article should be deemed an
`
`identification of any product described therein.
`
`In addition to the anticipatory references described in these Contentions, the patents-in-
`
`suit are invalid based on obviousness. In general, a claimed invention is unpatentable if the
`
`differences between it and the prior art “are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill in the art.” 35
`
`U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
`
`Each prior art reference identified above and described in the charts attached as Exhibits
`
`1-72, either alone or in combination with other prior art, also renders the asserted claims of the
`
`patents-in-suit invalid as obvious. In particular, each prior art reference may be combined with
`
`(1) information known to persons skilled in the art at the time of the alleged invention, (2) any of
`
`the other anticipatory prior art references, and/or (3) any of the additional prior art identified
`
`13
`
`
`
`
`
`
`
`

`

`above and in the charts attached hereto. Specific combinations of prior art, by way of example,
`
`are provided below.
`
`In addition, Defendants incorporate by reference each and every prior art reference of
`
`record in the prosecution of the patents-in-suit and related applications, including the statements
`
`made therein by the applicant, as well as the prior art discussed in the specification.
`
`The cited portions of the prior art references are exemplary and representative of the
`
`content of the prior art references, and should be understood in the context of the reference as a
`
`whole, as understood by one of ordinary skill in the art. To the extent a prior art reference is
`
`deemed not to anticipate or render obvious a claim as noted in the attached charts for failing to
`
`teach or suggest one or more limitations of a claim, that claim would nonetheless have been
`
`obvious to one of ordinary skill in the art at the time of the invention over the reference itself or
`
`by the combination of the prior art reference with one or more other prior art references
`
`disclosing the missing claim limitations. In addition, where a claim chart does not cite an
`
`express teaching of a particular limitation, Defendants reserve the right to argue that such
`
`teaching is inherent in the reference.
`
`A teaching, suggestion, or motivation to combine references is no longer required under
`
`KSR Int’l, Inc. v. Teleflex Co., 550 U.S. 398 (2007). Nevertheless, a person of skill in the art
`
`would have been motivated to combine each of the above-identified references with the others
`
`identified with respect to the same patent-in-suit. As the Supreme Court held in KSR Int’l Co.,
`
`“[the] combination of familiar elements according to known methods is likely to be obvious
`
`when it does no more than yield predictable results.” Id. at 401. The Supreme Court further held
`
`that:
`
`
`
`[w]hen a work is available in one field of endeavor, design incentives and other
`market forces can prompt variations of it, either in the same field or a different
`
`14
`
`

`

`one. If a person of ordinary skill can implement a predictable variation, § 103
`likely bars its patentability. For the same reason, if a technique has been used to
`improve one device, and a person of ordinary skill in the art would recognize that
`it would improve similar devices in the same way, using the technique is obvious
`unless its actual application is beyond his or her skill . . . .
`
`Id. at 417. Accordingly, a person of skill in the art would have been motivated to combine or
`
`adapt known or familiar methods in the art, especially where market forces prompt such
`
`variations.
`
`Moreover, the Supreme Court held that “familiar items may have obvious uses beyond
`
`their primary purposes, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Indeed, the Supreme
`
`Court held that it is sufficient that a combination of elements was “obvious to try,” holding that
`
`“[w]hen there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a person of ordinary skill has good reason to pursue
`
`the known options within his or her technical grasp.” Id at 421.
`
`Motivation to combine may also be found in the “nature of the problem.” Id. at 407. As
`
`stated in the ’168 Patent, the alleged inventor was attempting to solve an existing need for an
`
`improved method of capturing, storing and transmitting images. ’168 Patent, col. 2:15-20; ‘871
`
`Patent, col. 1:16-20. Accordingly, the teaching, suggestion, or motivation to modify or combine
`
`the references in the manner claimed can be found in the explicit and/or implicit teachings of the
`
`references and the prior art as a whole, the general knowledge of those skilled in the art,
`
`including knowledge of trends in the field, and knowledge that the art is of special interest or
`
`importance in the field.
`
`The motivation or incentive to combine these references and inventions comes from
`
`many sources, including but not limited to the known, published prior art references and
`
`15
`
`
`
`
`
`

`

`inventions themselves, the knowledge of those of ordinary skill in the art, the common field of
`
`technology of the references, and the teachings in the references directed to solving the problem
`
`that the patents-in-suit were allegedly directed to solving. These references and inventions
`
`identify and address many of the same technical issues and suggest similar solutions to those
`
`issues. Moreover, many of these references and inventions cross-reference and discuss one
`
`another, further illustrating the close technical relationship among this group of references.
`
`Accordingly, the teachings of the individual prior art references and inventions, combined with
`
`the industry knowledge of a person of ordinary skill in the art at the time of the alleged invention
`
`of the patents-in-suit, would render obvious the asserted claims of the patents-in-suit for at least
`
`the reasons described below and in the incorporated exhibits. Specific examples of the
`
`motivations, market pressures, design needs and choices and other factors affecting obviousness
`
`are discussed below and reflected in the cited prior art.
`
`It would have been obvious to combine any prior art references discussed herein dealing
`
`with cameras, portable phones, image capture and communication devices, or similar systems
`
`based on, for example, at least a person of ordinary skill in the art’s own knowledge or common
`
`sense, the teachings of such references, and the nature of the problems to be purportedly solved
`
`by patents in suit. Because the prior art references discussed herein occupy the same space as the
`
`relevant products and systems they are analogous art that a person of ordinary skill in the art
`
`would consider useful in designing those products or systems.
`
`Defendants may rely upon a subset of the references or all of the references listed in
`
`Section I depending upon the Court’s claim construction and further investigation. Defendants’
`
`contentions that the references contained in these contentions, in various combinations, render
`
`the asserted claims of the patent-in-suit obvious under 35 U.S.C. § 103 are in no way an
`
`
`
`16
`
`

`

`admission or suggestion that each reference does not independently anticipate the asserted claims
`
`under 35 U.S.C. § 102.
`
`Defendants put forth the below exemplary combinations that further demonstrate the
`
`obviousness of the asserted claims. These combinations are not intended to be exhaustive, as
`
`there are many possible combinations of these references, and it is not practical, particularly at
`
`this early stage before further factual investigation and claim construction proceedings, to
`
`identify and list all potentially relevant combinations. In particular, the asserted claims of the
`
`patent-in-suit are rendered obvious under 35 U.S.C . § 103 in View of at least, and without
`
`limitation, the following combinations of references:
`
`A.
`
`Combinations To the ‘87] Patent
`
`The alphabetical designations herein correspond to the exhibit designations of the
`
`attached exhibits.
`
`In Combination With One or More of
`
`JP 1994-303604
`
`the Followin_:
`JP 1994-268582
`
`US. Patent No. 5,519,205
`
`US. Patent No. 5,018,017
`
`US. Patent No. 5,581,560
`
`US. Patent No. 5,018,017
`
`US. Patent No. 7,372,447
`JP H06-176114
`
`EP 0594992
`
`EP 0499012
`
`US. Patent No. 5,018,017
`
`US. Patent No. 4,485,400
`
`US. Patent No. 5,018,017
`
`US. Patent No. 4,485,400
`
`US. Patent No. 5,018,017
`
`US. Patent No. 4,485,400
`
`US. Patent No. 5,018,017
`JP 1996-317465
`
`US. Patent No. 4,485,400
`
`US Patent No. 5,018,017
`
`l7
`
`One of the Following Primary
`References:
`
`GB 2,289,555
`
`US. Patent No. 4,953,196
`
`US. Patent No. 4,715,059
`
`US. Patent No. 6,009,336
`
`GB 2,289,555
`
`US. Patent No. 5,550,754
`
`US. Patent No. 4,485,400
`
`US. Patent No. 5,347,305
`
`US. Patent No. 5,806,005
`
`US. Patent No. 6,278,884
`
`0
`
`0
`
`0
`
`0
`
`0
`
`0
`
`
`
`

`

` L
`
`0
`
`JP 1996-317465
`
`JP 1994-303604
`
`US. Patent No. 4,485,400
`
`JP 1996-317465 M
`
`US Patent No. 5,018,017
`JP 1994—133081
`
`PCT Patent Pub. No. WO 97/26744
`
`0
`
`0
`
`0
`
`0
`0
`
`0
`
`0
`
`0
`
`0
`
`0
`0
`
`US. Patent No. 5,018,017
`
`US. Patent No. 6,009,336
`
`US. Patent No. 7,372,447
`
`US. Patent No. 5,910,815
`EP 0873008
`
`US. Patent No. 6,985,744
`
`US. Patent No. 6,822,852
`
`US. Patent No. 6,009,336
`
`US. Patent No. 5,343,509
`
`US. Patent No. 6,823,198
`EP 1232633 B1
`
`
`
`0
`
`0
`
`N
`0
`
`US. Patent No. 5,870,149
`
`US. Patent No. 5,870,149
`
`US. Patent No. 5,666,159
`
`P Q
`
`0
`US. Patent No. 7,286,177
`
`0
`US. Patent No. 7,372,447
`
`0
`0
`
`0
`
`0
`
`0
`
`US. Patent No. 5,018,017
`JP H8-18622
`
`JP 1994-133081
`
`JP 1994-133081
`
`JP 1994-133081
`
`US. Patent No. 6,564,070
`JP H8-65647A
`
`0
`
`JP 08-191435
`
`JP 09-037129
`
`R
`S
`
`T H
`
`JJ
`
`B.
`
`Combinations To The ‘168 Patent
`
`0
`
`JP 08-191435
`
`The alphabetical designations herein conespond to the exhibit designations of the
`
`attached exhibits.
`
`References:
`
`.
`the Followm;
`
`US. Patent No. 4,715,059
`
`US. Patent No. 5,519,205
`
`US. Patent No. 5,018,017
`
`US. Patent No. 5,581,560
`US. Patent No. 4,928,300
`
`US. Patent No. 5,077,784
`
`Exs.
`
`U V
`
`W
`
`
`
`X
`
`0
`
`Japanese Patent Application No 3-
`133081
`
`US. Patent No. 5,477,264
`PCT A ulication Publication No.
`
`18
`
`

`

`
`
`Y
`
`o
`
`GB2289555
`
`WO/95/23485
`
`0
`
`EP 0594992
`
`z
`
`0
`
`.
`
`US. Patent No. 5.550.754
`
`US. Patent No. 4.485.400
`
`AA
`.
`US. Patent No. 5.870.149
`
`BB
`0
`US. Patent No. 5.550754
`0
`US. Patent No. 5.491.507
`
`US. Patent No. 5.550.754 DD
`
`
`CC
`
`0
`
`US. Patent No. 5.806005
`
`0
`
`US. Patent No. 5.870.149
`
`EE
`
`US. Patent No. 5.666.159
`
`0
`
`0
`
`FF
`
`GG
`
`HH
`
`JP 1994-303604
`
`JP H8-65647A
`
`JPHO8—317465
`
`K 0
`
`JP 08-191435
`
`LL
`
`0
`
`JP 09-037129
`
`PCT Patent Pub. No. WO97/26744
`
`US. Patent No. 6.823.198
`EP 1232633
`
`US. Patent No. 7.286.177
`
`US. Patent No. 7.372.447
`
`US. Patent No. 6.009.336
`
`JP 1994-133081
`
`JP 1996—317465
`
`JP 1996-315106
`JP 1994-13308]
`
`JP 1994—303604
`JP 1994-13308]
`
`US. Patent No. 6.823.198
`EP 1232633
`
`US Patent No. 7.286.177
`
`US Patent No. 6.009.336
`JP 1994-133081
`
`JP 1994-303604
`
`JP 1996-317465
`
`The inclusion of certain exemplary combinations and in the claim charts attached hereto
`
`does not exclude other combinations, upon which Defendants expressly reserve the right to rely.
`
`Defendants reserve to right to modify the stated combinations in response to any arguments by
`
`Plaintiff that one or more limitations are missing from any given reference.
`
`F
`
`

`

`
`
`
`
`
`
`02
`20
`
`

`

`
`
`
`
`12
`21
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`22
`22
`
`

`

`3—2
`
`23
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`______________________
`
`

`

`—F.3.
`
`7.
`
`

`

`7.
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`27
`
`

`

`
`
`
`
`
`
`
`
`
`
`2
`28
`
`

`

`______________________
`
`

`

`3
`
`

`

`31
`
`

`

`F———7.
`
`3
`
`

`

`ND3
`
`

`

`3
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35
`35
`
`

`

`For Defendants Samsung Electronics
`Co., Ltd. and Samsung Telecommunications
`America, LLC
`
`By: /s/ Steven L. Park
`Steven L. Park
`PAUL HASTINGS LLP - ATLANTA
`1170 Peachtree St, NE
`Suite 100
`Atlanta, Georgia 30309
`Telephone: (404) 815-2400
`Facsimile: (404) 815-2424
`Email: stevenpark@paulhastings.com
`
`Elizabeth L Brann
`PAUL HASTINGS LLP - SAN DIEGO
`4747 Executive Drive
`12th Floor
`San Diego, California 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`Email: elizabethbrann@paulhastings.com
`
`Allen Franklin Gardner
`Michael E. Jones
`POTTER MINTON, PC
`110 N College Avenue
`Suite 500
`Tyler, Texas 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
`Email: allengardner@potterminton.com
`mikejones@potterminton.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`For Defendants HTC Corporation
`and HTC America, Inc.
`
`By: /s/ Evan S. Day
`Cheng C. Ko
`Evan S. Day
`Matthew C. Bernstein
`Kevin Patariu
`PERKINS COIE - SAN DIEGO
`11988 El Camino Real
`Suite