IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No.
` 2:14-cv-690-JRG-RSP (Lead)
`and 2:14-cv-691-JRG-RSP
`(Consolidated)
`
`
`
`PARTHENON UNIFIED MEMORY
`ARCHITECTURE LLC,
`
`Plaintiff,
`
`
`
`v.
`
`
`
`HTC CORPORATION, et al.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`Defendants HTC Corporation, HTC America, Inc., LG Electronics Inc., and LG
`
`Electronics U.S.A. Inc. (collectively, the “Defendants”), by their attorneys, make these Invalidity
`
`Contentions concerning U.S. Patents Nos. 5,812,789 (“the ’789 patent”), 5,960,464 (“the ’464
`
`patent”), 6,058,459 (“the ’459 patent”), 6,427,194 (“the ’194 patent”), 7,321,368 (“the ’368
`
`patent”), 7,543,045 (“the ’045 patent”), 7,777,753 (“the ’753 patent”), 8,054,315 (“the ’315
`
`patent”), and 8,681,164 (“the ’164 patent”) (collectively, the “Asserted Patents”), in connection
`
`with the above-referenced action, pursuant to the Court’s Docket Control Order and Local Patent
`
`Rule (P.R.) 3-3. The citation of prior art herein and the accompanying exhibits are being
`
`disclosed as, and should be construed as nothing more than, Defendants’ Invalidity Contentions.
`
`These documents are not intended to reflect Defendants’ claim construction contentions, which
`
`will be disclosed in due course in accordance with the Docket Control Order.
`
`Defendants’ Invalidity Contentions herein reflect Defendants’ knowledge, thinking, and
`
`contentions as of this early date in the present action. Defendants reserve the right, to the extent
`
`permitted by the Court and the applicable statutes and rules, to modify and supplement, without
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 1
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 1
`
`

`

`prejudice, their Invalidity Contentions, whether in response to any amendment by Parthenon
`
`Unified Memory Architecture LLC (“Plaintiff” or “Parthenon”) of its Infringement Contentions,
`
`or otherwise becoming aware of additional prior art. Additionally, Defendants reserve the right
`
`to modify their contentions should any of the claim limitations be construed, whether previously
`
`construed or not, by the Court.
`
`Defendants will amend these Invalidity Contentions as appropriate. The information and
`
`documents that Defendants produce are provisional and subject to further revision as follows.
`
`Defendants will amend the disclosures and document production herein should Parthenon
`
`provide any information that it failed to provide in its P.R. 3-1 and 3-2 disclosures or should
`
`Parthenon amend its P.R. 3-1 or 3-2 disclosures in any way, whether explicitly or implicitly.
`
`Further, because limited discovery has only recently begun and because Defendants have not yet
`
`completed their search for and analysis of relevant prior art, Defendants will revise, amend,
`
`and/or supplement the information provided herein, including identifying 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, including information obtained through third-party discovery. Moreover, Defendants
`
`will revise their contentions concerning the invalidity of the claims of the Asserted Patents as
`
`appropriate depending upon the Court’s construction of the claims of the Asserted Patents, any
`
`findings as to the priority dates of the Asserted Patents, and/or positions that Parthenon or its
`
`expert witness(es) may take concerning claim interpretation, infringement, and/or invalidity
`
`issues.
`
`Prior art not included in this disclosure, whether known or not known to Defendants, may
`
`become relevant. In particular, Defendants are currently unaware of the extent, if any, to which
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 2
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 2
`
`

`

`Parthenon will contend that limitations of the asserted claims are not disclosed in the prior art
`
`identified by Defendants, particularly given that Parthenon has asserted numerous claims against
`
`the Defendants. To the extent that such an issue arises, Defendants will identify other references
`
`that would have made the addition of the allegedly missing limitation to the disclosed device or
`
`method obvious.
`
`Defendants’ Exhibits attached hereto cite to particular teachings and disclosures of the
`
`prior art as applied to features of the asserted claims. However, persons having ordinary skill in
`
`the art generally may view an item of prior art in the context of other publications, literature,
`
`products, and understanding. As such, the cited portions of prior art identified herein are
`
`exemplary only. Defendants will rely on the entirety of the prior art references listed herein,
`
`including uncited portions of those prior art references, and on other publications and expert
`
`testimony for any purpose, including as aids in understanding and interpreting the cited portions,
`
`as providing context thereto, and as additional evidence that the prior art discloses a claim
`
`limitation. Defendants will also rely on the entirety of prior art references listed herein,
`
`including uncited portions of the prior art references, as well as other publications not used as
`
`prior art, and testimony and documents, to establish bases for and motivations to make
`
`combinations of certain cited references that render the asserted claims obvious. Specifically,
`
`Defendants will rely upon the identified prior art in its entirety; other prior art identified in future
`
`supplements pursuant to the Local Rules and Federal Rules; corroborating references,
`
`documentation, source code, products, and testimony, including materials obtained through
`
`further investigation and third-party discovery of the prior art identified herein, that demonstrates
`
`the invalidating functionality identified in these contentions; references that show the state of the
`
`art in the relevant time period (irrespective of whether such references themselves qualify as
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 3
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 3
`
`

`

`prior art to the Asserted Patents); and/or expert testimony to provide context to or aid in
`
`understanding the cited portions of the identified prior art.
`
`The references discussed in the Exhibits herein may disclose the elements of the asserted
`
`claims explicitly and/or inherently, and/or they may be relied upon to show the state of the art in
`
`the relevant time frame. The suggested obviousness combinations are provided in the alternative
`
`to Defendants’ anticipation contentions and are not to be construed to suggest that any reference
`
`included in the combinations is not by itself anticipatory.
`
`For purposes of these Invalidity Contentions, Defendants identify prior art references and
`
`provide element-by-element claim charts based, in part, on the apparent claim constructions
`
`advanced by Parthenon in its Infringement Contentions. Nothing stated herein shall be treated as
`
`an admission or suggestion that Defendants agree with Parthenon regarding either the scope of
`
`any of the asserted claims or the claim constructions advanced in the Infringement Contentions.
`
`Moreover, nothing in these Invalidity Contentions shall be treated as an admission that any
`
`Defendant’s accused technology meets any limitations of the claims.
`
`Pursuant to P.R. 3-3 and 3-4, Defendants have provided disclosures and related
`
`documents pertaining only to the asserted claims as identified by Parthenon in its Infringement
`
`Contentions. Defendants will modify, amend, or supplement these Invalidity Contentions to
`
`show the invalidity of any additional claims that the Court may allow Parthenon to later assert.
`
`Defendants will further supplement their P.R. 3-4 document production should they later find
`
`additional, responsive documents.
`
`Much of the art identified in the attached exhibits reflect common knowledge and the
`
`state of the art prior to the filing dates of the Asserted Patents. In many instances where a
`
`particular contention calls for combining references, any one of a number of references can be
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 4
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 4
`
`

`

`combined. The inclusion of certain exemplary combinations herein does not exclude other
`
`combinations based upon the claim charts attached hereto.
`
`In addition to and including the prior art disclosed in the Invalidity Contentions
`
`incorporated by reference herein, each of the asserted claims1 of the Asserted Patents is
`
`anticipated by and/or obvious in view of one or more of items of prior art identified herein alone
`
`or in combination. Specific examples of this anticipation and obviousness, along with the
`
`motivation to combine the selected prior art, are set forth below. These combinations are not
`
`intended to be exhaustive, as there are many possible combinations of the references listed herein
`
`and it is not practical, particularly at this early stage prior to further factual investigation and
`
`claim construction proceedings, to identify and list all potentially relevant combinations.
`
`I.
`
`Identification Of Prior Art – Local Patent Rule 3-3(a)
`
`The identity of each item of prior art that allegedly anticipates each
`asserted claim or renders it obvious. Each prior art patent shall be
`identified by its number, country of origin, and date of issue. Each
`prior art publication must be identified by its title, date of
`publication, and where feasible, author and publisher.
`
`Prior art under 35 U.S.C. § 102(b) shall be identified by specifying
`the item offered for sale or publicly used or known, the date the
`offer or use took place or the information became known, and the
`identity of the person or entity which made the use or which made
`and received the offer, or the person or entity which made the
`information known or to whom it was made known.
`
`P.R. 3-3(a)
`
`In addition to the prior art identified in the prosecution history of the Asserted Patents,
`
`Defendants intend to rely upon the prior art identified pursuant to P.R. 3-3(a) in the attached
`
`Exhibits in support of these Invalidity Contentions. In these contentions, including in the
`
`attached Exhibits, Defendants provide the full identity of each item of prior art, including: (1)
`
`1 For reasons analogous to those identified herein, Defendants contend all non-asserted claims of the Asserted
`Patents are invalid as anticipated and/or obvious in view of the prior art or indefinite.
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 5
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 5
`
`

`

`each patent by its patent number, country of origin, and date of issue; (2) each non-patent
`
`publication by its title, date of publication, and, where feasible, author and publisher; (3) 35
`
`U.S.C. § 102(b) prior art by the item offered for sale or publicly used or known, the date the
`
`offer or use took place or the information became known, and the identity of the person or entity
`
`which made the use or which made and received the offer, or the person or entity which made
`
`the information known or to whom it was made known; (4) 35 U.S.C. § 102(f) prior art by the
`
`name of the person(s) from whom and the circumstances under which the invention or any part
`
`of it was derived; and (5) 35 U.S.C. § 102(g) prior art by the identities of the person(s) or entities
`
`involved in and the circumstances surrounding the making of the invention before the patent
`
`applicant(s), based on currently available information.
`
`Defendants’ identification of patents and publications as prior art herein and in the
`
`attached charts under 35 U.S.C. §§102(a), (b), (e), and/or (g) and §103 includes the publications
`
`themselves as well as the use of the products and systems described therein. Although
`
`Defendants’ investigation continues, information available to date indicates that such products
`
`and systems were (1) known or used in the country before the alleged invention of the claimed
`
`subject matter of the asserted claims, (2) were in public use and/or on sale in this country more
`
`than one year before the filing date of the patent, and/or (3) were invented by another who did
`
`not abandon, suppress, or conceal, before the alleged invention of the claimed subject matter of
`
`the asserted claim. Upon information and belief, these prior art products and systems and their
`
`associated references anticipate and/or render obvious each of the asserted claims.
`
`Defendants further intend to rely on inventor admissions concerning the scope of the
`
`prior art relevant to the Asserted Patents found in, inter alia: the patent prosecution histories for
`
`the Asserted Patents and related patents, patent applications, and/or re-examinations; any
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 6
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 6
`
`

`

`deposition testimony of the named inventors on the Asserted Patents; and the papers filed and
`
`any evidence submitted by Parthenon in conjunction with this litigation.
`
`Discovery is in its earliest stages, and Defendants’ prior art investigation and third party
`
`discovery is therefore not yet complete. Defendants will present additional evidence of
`
`invalidity if it is obtained in the future, including additional items of prior art and additional
`
`documents and testimony located during the course of discovery or further investigation, to show
`
`invalidity under 35 U.S.C. § 102(a), (b), (e), and/or (g), and/or § 103. In addition, Defendants
`
`will assert invalidity under 35 U.S.C. § 102(c), or (d) to the extent that discovery or further
`
`investigation yield information forming the basis for such claims.
`
`A.
`
`
`Prior Art Patents
`
`In addition to and including the prior art disclosed in the Invalidity Contentions and
`
`Exhibits incorporated by reference herein, Defendants contend the following prior art patents
`
`anticipate or render obvious one or more asserted claims of the Asserted Patents under 35 U.S.C.
`
`§§ 102(a), (b), and/or (e) or 35 U.S.C. § 103:
`
`Country
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`Patent/Application
`No.
`3,469,241
`
`4,257,095
`
`4,511,964
`
`4,513,369
`
`4,669,043
`
`4,764,959
`
`4,774,660
`
`4,894,565
`
`Inventor (et al.)
`
`Barton
`
`Filing/Publication/
`Issue Date
`Filed May 2, 1966
`Issued Sep 23 1969
` Filed Jun 30, 1978
` Issued Mar 17, 1981 Nadir
`Filed Nov 12, 1982
`Issued Apr 16, 1985 Georg
`Filed Feb 17, 1982
`Sato
`Issued Apr 23, 1985
`Filed Feb 17, 1984
`Issued May 26, 1987 Kaplinsky
`Filed Aug 31, 1984
`Issued Aug 16, 1988 Watanabe
`
` Filed Feb 20, 1987
` Issued Sep 27, 1988 Conforti
`
`Filed Aug 11, 1988
` Issued Jan 16, 1990 Marquardt
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 7
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 7
`
`

`

`Country
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`Patent/Application
`No.
`4,942,516
`
`4,987,529
`
`5,027,400
`
`5,212,742
`
`5,250,940
`
`5,263,142
`
`5,293,593
`
`5,301,287
`
`5,303,378
`
`5,313,577
`
`5,347,634
`
`5,363,500
`
`5,371,893
`
`5,371,895
`
`5,392,391
`
`5,404,511
`
`5,432,900
`
`5,438,666
`
`5,450,542
`
`5,459,519
`
`5,461,679
`
`5,463,740
`
`Inventor (et al.)
`
`Hyatt
`
`Craft
`
`Baji
`
`Price
`
`Gove
`
`Caulk
`
`Filing/Publication/
`Issue Date
`Filed Jun 17, 1988
`Issued Jul 17, 1990
`Filed Aug 11, 1988,
`Issued Jan 22, 1991
`Filed Aug 16, 1989
` Issued Jun 25, 1991
`Filed May 24, 1991
`Issued May 18, 1993 Normile
` Filed Jan 18, 1991
`Valentaten
` Issued Oct 5, 1993
`Filed Dec 28, 1992
` Issued Nov 16, 1993 Watkins
`Filed Oct 11, 1990
`Hodge
` Issued Mar 8, 1994
`Filed Feb 6, 1993
`Issued April 5, 1994 Herrell
`Filed May 21, 1991
`Cohen
`Issued Apr 12, 1994
`Filed Aug 21, 1991
`Issued May 17, 1994 Meinerth
`Filed Mar 15, 1990
`Issued Sep 13, 1994 Herrell
`Filed Jan 24, 1991
`Takeda
` Issued Nov 8, 1994
`Filed Dec 27, 1991
` Issued Dec 6, 1994
`Filed May 17, 1991
`Issued Dec 6, 1994
`Filed Oct 18, 1991
`Issued Feb 21, 1995
`Filed June 26, 1992
`Issued Apr 4, 1995
`Filed June 16, 1994
`Issued July 11, 1995
`Filed Jun 30, 1992
` Issued Aug 1, 1995
`Filed Nov 30, 1993
` Issued Sep 12, 1995
` Filed May 11, 1994
`Issued Oct 17, 1995
`Filed May 14, 1993
` Issued Oct 24, 1995
` Filed Feb 13, 1995
` Issued Oct 31, 1995
`
`Notarianni
`
` Rhodes
`
`Craft
`
` Lehman
`
`Scalise
`
`Normile
`
`Taniai
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 8
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 8
`
`

`

`Inventor (et al.)
`
`Kim
`
`Crump
`
`Ishida
`
`Silverbrook
`
`Country
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`Patent/Application
`No.
`5,479,166
`
`5,485,586
`
`5,522,080
`
`5,528,767
`
`5,533,205
`
`5,535,339
`
`U.S.
`
`5,546,547
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`5,548,746
`
`5,754,807
`
`5,557,538
`
`5,557,759
`
`5,566,306
`
`5,579,052
`
`5,721,947
`
`5,590,252
`
`5,598,222
`
`5,598,525
`
`5,621,893
`
`5,623,672
`
`5,638,531
`
`5,682,484
`
`5,696,985
`
`Filing/Publication/
`Issue Date
`Filed Nov. 30, 1993
`Issued Dec 26, 1996 Read
`Filed Apr 5, 1994
`Brash
`Issued Jan 16, 1996
`Filed Jul 20, 1994
` Issued May 28, 1996 Harney
`Filed Mar 21, 1995
`Issued June 18, 1996 Chen
`Filed Mar 30, 1994
`Blackledge
` Issued Jul 2, 1996
`Filed Feb 24 1995
`Issued Jul 9, 1996
`Filed Jan 28, 1994
`Issued Aug 13, 1996 Bowes
` Filed Nov 12, 1993
` Issued Aug 20, 1996 Carpenter
`Filed Nov 20, 1995
`Issued May 19, 1998 Lambrecht
`Filed May 18, 1994
`Retter
` Issued Sep 17, 1996
`Filed Jun 7, 1995
`Issued Sep 18, 1996
`Filed Dec 20, 1995
`Issued Oct 15, 1996
`Filed May 24, 1994
` Issued Nov 26, 1996 Artieri
`Filed May 15, 1995
`Priem
`Issued Feb 24, 1998
`Filed Apr 28, 1993
` Issued Dec 31, 1996
` Filed Apr 18, 1995
` Issued Jan 28, 1997
` Filed Jan 23, 1995
` Issued Jan 28, 1997
`
` Filed Nov 22, 1994
` Issued Apr 15, 1997
`Filed Dec 23, 1994
` Issued Apr 22, 1997
`Filed Jun 7, 1995
`Issued Jun 10, 1997
`Filed Nov 20, 1995
`Issued Oct 28, 1997
`Filed Jun 7, 1995
`Issued Dec 9, 1997
`
`Lane
`
`Nally
`
`Joh
`
`Popat
`
`Crump
`
`Lambrecht
`
`Crump
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 9
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 9
`
`

`

`Inventor (et al.)
`
`Priem
`
`Lambrecht
`
`Tang
`
`Lambrecht
`
`Nally
`
`Lory
`
`LaBerge
`
`Kau
`
`Kim
`
`Country
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`Patent/Application
`No.
`5,721,947
`
`5,740,387
`
`5,748,203
`
`5,748,921
`
`5,748,968
`
`5,768,622
`
`5,771,358
`
`5,771,373
`
`5,774,131
`
`5,774,206
`
`5,774,676
`
`5,778,096
`
`5,784,592
`
`5,784,650
`
`5,784,707
`
`5,790,706
`
`5,793,384
`
`5,793,385
`
`5,796,960
`
`5,796,968
`
`5,797,028
`
`5,801,785
`
`Filing/Publication/
`Issue Date
`Filed May 15, 1995
`Issued Feb 24, 1998
`Filed May 17, 1996
`Issued Apr 14, 1998
`Filed Mar 4, 1996
` Issued May 5, 1998
`Filed Dec 11, 1995
`Issued May 5, 1998
`Filed Jan 5, 1996
` Issued May 5, 1998
`Filed Aug 18, 1995
` Issued Jun 16, 1998
`Filed Jul 15, 1996
` Issued Jun 23, 1998
`Filed Oct 18, 1996
` Issued Jun 23, 1998
`Filed Oct 24, 1995
` Issued Jun 30, 1998
` Filed Dec 19, 1996
` Issued Jun 30, 1998 Wasserman
`Filed Oct 3, 1995
`Stearns
` Issued Jun 30, 1998
` Filed Jun 12, 1995
` Issued Jul 7, 1998
`Filed Sep 11, 1995
`Issued Jul 21, 1998
` Filed Sep 11, 1995
` Issued Jul 21, 1998
`Filed April 19, 1996
`Issued Jul 21, 1998
`Filed Jul 3, 1996
` Issued Aug 4, 1998
` Filed Feb 5, 1996
` Issued Aug 11, 1998 Okitsu
` Filed Jun 12, 1996
` Issued Aug 11, 1998 Nale
`Filed: May 26, 1995
`Issued Aug 18, 1998 Bicevskis
`Filed Jun 7, 1996
`Issued Aug 18, 1998 Takamiya
`
` Filed Sep 11, 1995
` Issued Aug 18, 1998 Gulick
`Filed Feb 13, 1996
`Crump
`Issued Sep 1, 1998
`
`Stearns
`
`Gulick
`
`Gulick
`
`Khalidi
`
`Aueyeung
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 10
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 10
`
`

`

`Country
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`Patent/Application
`No.
`5,802,581
`
`5,805,921
`
`5,809,245
`
`5,809,538
`
`5,812,789
`
`5,812,800
`
`5,815,167
`
`5,818,533
`
`5,835,082
`
`5,838,984
`
`5,895,481
`
`5,898,892
`
`5,912,676
`
`5,936,616
`
`5,960,464
`
`5,977,947
`
`5,996,058
`
`6,002,411
`
`6,003,129
`
`6,058,459
`
`6,058,465
`
`6,061,711
`
`Inventor (et al.)
`
`Nelsen
`
`Kikinis
`
`Zenda
`
`Pollmann
`
`Filing/Publication/
`Issue Date
`Filed Dec 22, 1995
`Issued Sep 1, 1998
`Filed Jul 11, 1995
` Issued Sep 8, 1998
`
` Filed Jan 23, 1996
` Issued Sep 15, 1998
`Filed Feb 7, 1996
` Issued Sep 15, 1998
`Filed Aug 26, 1996
` Issued Sep 22, 1998 Diaz
`Filed Sep 11, 1995
`Issued Sep 22, 1998 Gulick
`
` Filed Jun 27, 1996
` Issued Sep 29, 1998 Muthal
`Filed Aug. 8, 1996
`Auld
`Issued Oct 6, 1998
`Filed May 27, 1997
` Issued Nov 10, 1998
`Filed Aug. 19, 1996
`Issued Nov 17, 1998 Nguyen
`Filed May 22, 1996,
`Issued April 20, 1999 Yap
`Filed May 17, 1996
`Issued Apr 27, 1999 Gulick
`Filed Jun 14, 1996
` Issued Jun 15, 1999 Malladi
` Filed Aug 7, 1996
` Issued Aug 10, 1999 Torborg, Jr.
` Filed Aug 23, 1996
`Lam
` Issued Sep 28, 1999
`Filed Aug 19, 1996
` Issued Nov 2, 1999
`Filed Aug 19, 1996
`Issued Nov 30, 1999
`Filed Nov 16 1994
`Issued Dec 14, 1999 Dye
`Filed Aug. 19, 1996
`Song
`Issued Dec 14, 1999
`Filed Aug 26, 1996
` Issued May 2, 2000
`Filed Aug. 19, 1996
`Issued May 2, 2000
`Filed Aug. 19, 1996
`Issued May 9, 2000
`
`Perego
`
`Potu
`
`Song
`
`Owen
`
`Nguyen
`
`Song
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 11
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 11
`
`

`

`Country
`
`US
`
`US
`
`US
`
`US
`
`US
`US
`US
`
`EP
`
`EP
`
`EP
`
`EP
`
`EP
`
`EP
`
`EP
`
`EP
`
`FR
`
`JP
`JP
`JP
`JP
`JP
`JP
`
`DE
`
`Patent/Application
`No.
`6,192,073
`
`6,297,832
`
`6,330,644
`
`6,425,054
`
`Ser. No. 08/699,303
`Ser. No. 08/699,585
`Ser. No. 08/697,102
`0 363 882 (Publication
`No.)
`0 495 574
`(Publication No.)
`0 639 032 (Publication
`No.)
`0 673 171,
`(Publication No.)
`772159 (Publication
`No.)
`827110 (Publication
`No.)
`827348 (Publication
`No.)
`
`0548550
`
`2740583 (Publication
`No.)
`06-030442
`06-178274
`06-348238
`08-018953
`10-108117
`10-145739
`69631364 (Publication
`No.)
`
`Inventor (et al.)
`
`Reader
`
`Mizuyabu
`
`Filing/Publication/
`Issue Date
`Filed Aug. 19, 1996
`Issued Feb 20, 2001
`Filed Jan 4, 1999
` Issued Oct 2, 2001
`Filed Oct 25, 1995
` Issued Dec 11, 2001 Yamashita
`Filed Oct 10, 2000
`Nguyen
`Issued Jul 23, 2002
`Filed Aug. 19, 1996
`Filed Aug. 19, 1996
`Filed Aug. 19, 1996
`
`Reader
`Nguyen
`Nguyen
`
`Filed Oct 9, 1989
`
`Hayashi
`
`Filed Jan 7, 1992
`
`Valentaten
`
`Filed July 19 1994
`
`Purcell
`
`Filed Mar 14, 1995
`
`Cheney
`
`Filed Oct 30, 1996
`
`Colavin
`
`Filed Aug 22, 1997
`
`Owen
`
`Filed Aug 22, 1997
`Filed Nov 20, 1992,
`Published June 30,
`1993
`Filed Oct 30, 1995
`
`February 4, 1994
`June 24, 1994
`December 22, 1994
`January 19, 1996
`April 24, 1998
`May 29, 1998
`
`Diaz
`
`Kudish-Parkos
`
`Colavin
`
`Noomairu
`Tsukagoshi
`Koichi
`Yukitoshi
`Diaz
`Diaz
`
`Filed Oct 30, 1996
`
`Colavin
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 12
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 12
`
`

`

`
`
`B.
`
`
`
`Prior Art Publications
`
`In addition to and including the prior art disclosed in the Invalidity Contentions and
`
`Exhibits incorporated by reference herein, Defendants contend the following publications
`
`anticipate or render obvious one or more asserted claims of the Asserted Patents under 35 U.S.C.
`
`§§ 102(a) and/or (b) or 35 U.S.C. §103:
`
`Publication Title
`
`MPEG Video Overview
`
`Accelerated Graphics Port
`Interface Specification
`The Role of VLSI in
`Multimedia
`The Vidboard: A Video
`Capture and Processing
`Peripheral for a Distributed
`Multimedia System
`Architecture of a Flexible
`Real-Time Video
`Encoder/Decoder: The
`DECchip 21230
`Macintosh Quadra 840AV
`and Macintosh Centris
`660AV Computers; Apple
`Macintosh Quadra 840AV
`when executing the
`Fusionrecorder 1.0
`application
`
`Date
`
`1992
`
`July 31,
`1996
`
`Apr. 1994
`
`Publisher
`SGS-Thomson
`Microelectronics
`Technical Note, pp. 1-4
`Intel
`IEEE Journal of Solid-
`State Circuits, vol. 29,
`No. 4, pp. 381-388.
`
`Author (s)
`
`
`
`
`
`Ackland
`
`Aug. 1-6,
`1993
`
`ACM Multimedia, vol.
`5, No. 2, pp. 113-120.
`
`Adam et al
`
`Feb. 12-13,
`1997
`
`Multimedia Hardware
`Architectures 1997, vol.
`3021, pp. 136-148
`
`Adiletta et al.
`
`1993
`
`Apple Developer Note
`
`
`
`Video DSP Architecture for
`MPEG2 CODEC. cited by
`applicant.
`
`Apr. 19-22,
`1994
`
`A video codec chip set for
`multimedia applications
`
` Jan. 1993
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
` ICASSP-94
`S.sub.2AUVN, Speech
`Processing 2, Audio,
`Underwater Acoustics,
`VLSI & Neural
`Networks, vol. 2, pp.
`417-420
`AT&T Tech. J., vol. 72,
`no. 1, pp. 50-66
`
`Araki et al.
`
`B. Ackland et.
`al
`
`PAGE 13
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 13
`
`

`

`Publication Title
`
`Date
`
`OCP.sub.--A: An Efficient
`QoS Control Scheme for Real
`Time Multimedia
`Communications
`
`Nov. 3-8,
`1997
`
`The OS/2 Resource
`Reservation System
`
`A Multimedia Chipset for
`Consumer Audio-Visual
`Applications
`Multimedia Architectures:
`From Desktop Systems to
`Portable Appliances
`
`Feb. 1995
`
`Aug. 1997
`
`Feb. 12-13,
`1997
`
`A High-Performance Cross-
`Platform MPEG Decoder
`
`Feb. 7-8,
`1994
`
`The Architecture of the Dali
`Main-Memory Storage
`Manager
`The Impact of New
`Multimedia Representations
`on Hardware and Software
`Systems
`
`1997
`
`Feb. 12-13,
`1997
`
`A VLSI Architecture for Real
`Time Code Book Generator
`and Encoder of a Vector
`Quantizer
`
`Sep. 16-19,
`1996
`
`Aug. 21,
`1995
`
` Highly Integrated Controller
`Eases MPEG-2 Adoption
`Codec Compresses Images in
`Real Time: Real-Time Motion
`Video or Still Images Can be
`Compressed with Single-Chip
`Multistandard Core
`Performing Over 8 BOPS, A May 3, 1993 Electronic Design
`
`Oct. 3, 1993 Electronic Design
`
`Publisher
`IEEE Global
`Telecommunications
`Conference,
`Conference Record,
`vol. 2 of 3, pp. 741-
`745.
`Multimedia Computing
`and Networking 1995,
`vol. 2417, pp. 167-176
`IEEE Transactions on
`Consumer Electronics,
`vol. 43, No. 3, pp. 646-
`648
`Multimedia Hardware
`Architectures 1997,
`vol. 3021, pp. 14-25
`Digital Video
`Compression on
`Personal Computers:
`Algorithms and
`Technologies, SPIE
`Proceedings, vol. 2187,
`pp. 241-248
`Multimedia Tools and
`Applications, vol. 4, pp.
`115-151
`Multimedia Hardware
`Architectures 1997, vol.
`3021, pp. 34-39
`International
`Conference on Image
`Processing, IEEE
`Signal Processing
`Society, vol. 2, pp. 991-
`994
`Electronic Design, vol.
`43, No. 17, pp. 141-142 Bursky
`
`Author (s)
`
`Bao et al
`
`Baugher
`
`Baum et al.
`
`Bhaskaran et
`al.
`
`Bhed et al.
`
`Bonannon et
`al.
`
`Bove Jr.
`
`Brahmbatt
`
`Bursky
`
`Bursky
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 14
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 14
`
`

`

`Date
`
`Publisher
`
`Author (s)
`
`Publication Title
`Two Chip Set Can Compress
`or Expand Video in Real
`Time, Image Processing Chip
`Set Handles Full Motion
`Video
`
` The Great Leap Forward
`
`Oct. 11,
`1994
`
`PC Magazine, pp. 241-
`244, 246, 248, 250,
`253-254, 256, 260-261,
`264, 266-268, 273-275,
`278
`
`Butler et al.
`
`1992
`1994
`
`C-Cube Microsystems,
`Milpitas, CA
`
`
`
`C-Cube CL450 MPEG Video
`Decoder CL450 MPEG
`Decoder User's Manual
`(MOT-S 721789-721874)
`
`A Real-Time Scalable Color
`Quantizer Trainer/Encoder
`
`Columbia's VoD and
`Multimedia Research Testbed
`with Heterogeneous Network
`Support
`
`Oct. 30-
`Nov. 2,
`1994
`
`1997
`
`A Framework for Analysis of
`Guaranteed QOS System
`
`Nov. 21,
`1996
`
` Video Encoder Architecture
`for MPEG2 Real Time
`Encoding IE
`
`Aug. 1996
`
`Disk Management for a Hard
`Real-Time File System
`MPEG: A Technological
`Basis for Multimedia
`Applications
`
`1996
`
`1995
`
`ATM-Based Multi-Party
`Conferencing System
`
`Nov. 1995
`
`Opening Up Multimedia
`Object Exchange with MHEG
`The Design of a QoS-
`
`Summer
`1994
`May 1995
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`The Twenty-Eighth
`Asilomar Conference
`on Signals, Systems &
`Computers, pp. 203-
`207.
`Multimedia Tools and
`Applications, vol. 5, pp.
`171-184.
`Video Techniques and
`Software for Full-
`Service Networks, vol.
`2915, pp. 25-38. .
`EE Transactions
`Consumer Electronics,
`vol. 42, No. 3, pp. 290-
`299.
`Multimedia Systems,
`vol. 4, No. 2, pp. 255-
`260.
`Multimedia, Spring
`1995, vol. 2, No. 1.
`IEEE Global
`Telecommunications
`Conference, vol. 1 of 3,
`pp. 592-596.
`Multimedia, Summer
`1994, vol. 2, No. 2.
`IEEE Journal on
`
`Chaddha et al.
`
`Chang et al.
`
`Chaudhry et
`al.
`
`Chen et al.
`
`Cheng et al.
`
`Chiariglione
`
`Choe et al.
`
`Colaitis
`
`Coulson et al.
`
`PAGE 15
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 15
`
`

`

`Publication Title
`Controlled ATM-Based
`Communications System in
`Chorus
`monolithic circuits expedite
`desktop video
`A Comprehensive Study of
`Digital Signal Processing
`Devices
`
`Date
`
`Oct. 24
`1991.
`
`May 1995
`
` On the Correctness of
`Multimedia Applications
`
`Jun. 9-11,
`1999
`
` Symmetric Multiprocessing
`Servers: Scaling the
`Performance Wall
`From Concept to an
`Implementation
`VLSI Issues in Memory-
`System Design for Video
`Signal Processors
`Video conferencing chips cut
`cost, parts
`Multimedia Systems: An
`Overview
`Processor Architectures for
`Multimedia: A Survey
` The Trimedia TM-1 PCI
`VLIW Media Processor
`The TriMedia VLIW-Based
`PCI Multimedia Processor
`An MPEG-1 Audio/Video
`Decoder with Run-Length
`Compressed Antialiased
`Video Overlays
`A Dual-DSP Microprocessor
`System for Real-Time Digital
`Correlation
`A Dual-DSP Microprocessor
`System for Real-Time Digital
`Correlation
`
`Mar. 27,
`1995
`
`Sep. 12-16,
`1996
`
`1995
`
`Oct. 19
`1992
`
`Spring 1994
`
`Nov. 17-20,
`1997
`July 19,
`1996
`Oct. 10-11,
`1995
`
`1995
`
`Sep. 1991
`
`Sep. 1991
`
`Publisher
`Selected Areas in
`Communications, vol.
`13, No. 4, pp. 686-699.
` EDN, p. 67
`Microprocessors and
`Microsystems, vol. 19,
`No. 4, pp. 209-221.
`The 11.sup.th
`Euromicro Conference
`on Real-Time Systems,
`IEEE Computer
`Society, pp. 226-233.
`Infoworld, pp. 82-85,
`88-92,
`International
`Broadcasting
`Convention,
`
`Author (s)
`
`D. Pryce
`
`Deka
`
`Demairy et al.
`
`Doquilo
`
`Dusen et al.
`
`IEEE, pp. 498-503.
`
`Dutta et al.
`
`Electronic Engineering
`Times, p. 10
`Multimedia, Spring
`1994, vol. 1, No. 1, pp.
`47-59.
`Multimedia Modeling,
`pp. 89-109
`1996 (Eighth) Hot
`Chips Symposium
`Microprocessor Forum
`1995
`IEEE International
`Solid State Circuits
`Conference, pp. 286-
`287, 381
`Microprocessors and
`Microsystems, vol. 15,
`No. 7, pp. 29-37.
`Microprocessors and
`Microsystems, vol. 15,
`No. 7 pp. 379-384.
`
`Fuller B.
`
`Furht
`
`Furht
`G. Slavenburg
`S. Rathnam &
`H. Dijkstra.
`Slavenburg, G
`
`Galbi et al.
`
`Ganesan
`
`Ganesan
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 16
`
`PUMA Exhibit 2013
`APPLE v. PUMA, IPR 2016-01135
`Page 16
`
`

`

`Publication Title
`
`Architecture Trends of MPEG
`Decoders for Set-Top Box
`SMP Network Operating
`Systems
`A General Purpose, Single
`Chip Video Signal Processing
`(VSP) Architecture for Image
`Processing, Coding and
`Computer Vision.
`A Single Chip Video Signal
`Processing Architecture for
`Image Processing, Coding and
`Computer Vision
`
`The MVP: A Highly-
`Integrated Video
`Compression Chip
`The MVP: A Highly-
`Integrated Video
`Compression Chip
`Capturing Digital Video
`Using DVI, Multimedia and
`the i750 video processor
`
`Image Computing
`Requirements for the 1990s:
`Feb. 1991
`From Multimedia to Medicine
`
`Oct. 1995
`
`Mar. 29-31,
`1994
`
`1994
`
`IEEE
`
`Jul. 1992
`
`MPEG-1 Low-Cost Encoder
`Solution .
`
`Mar. 20-23,
`1995
`
`An Affordable Solution to
`Real-Time Video
`Compression
`A Single-Chip Multiprocessor
`for Multimedia: The MVP
`
`Mar. 8,
`1995
`
`Nov. 1992
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`PAGE 17
`
`Date
`
`Feb. 12-13,
`1997
`Aug. 8,
`1996.
`
`Publisher
`Multimedia Hardware
`Architectures 1997, vol.
`3021, pp. 162-169.
`Computer Dealer News,
`vol. 12, No. 16, .
`
`Author (s)
`
`Gass
`
`Giorgis
`
`1994
`
` IEEE 1994, pp. 1-4
`
`Goodenough
`et al.
`
`Goodenough
`et al.
`
`Gove et al.
`
`Gove
`
`Gove
`
`Green
`
`Grüger et al.
`
`Guediri et al.
`
`Guttag et al.
`
` IEEE Transaction on
`Circuits and Systems
`for Video Technology,
`vol. 5, No. 5, pp. 436-
`445.
`The International
`Society for Optical
`Engineering, Medical
`Imaging V: Image
`Capture, Formatting
`and Display, vol. 1444,
`pp. 318-333.
`DCC '94, Data
`Compression
`Conference, pp. 215-
`224.
`
`Dr. Dobb's Journal, vol.
`17, Issue 7.
`Europe Series,
`Advanced Image and
`V