`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`
`
`
`2:16-cv-00693-JRG-RSP (LEAD CASE)
`
`2:16-cv-00692-JRG-RSP
`
`2:16-cv-00695-RWS-RSP
`
`
`
`ALACRITECH, INC.,
`
`Plaintiff,
`
`v.
`
`TIER 3, INC., ET AL.,
`
`WISTRON CORPORATION, ET AL.,
`
`DELL INC.,
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`Defendants,
`
`and
`
`INTEL CORPORATION,
`
`Intervenor.
`
`
`
`ALACRITECH’S FIRST AMENDED AND SUPPLEMENTAL PATENT INITIAL
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`DISCLOSURES FOR INTEL
`
`Plaintiff Alacritech, Inc. (“Alacritech” or “Plaintiff”) submits its First Amended and
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`Supplemental Patent Rule (“P.R.”) 3-1 and 3-2 Disclosures to Defendant Intel Corporation
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`(“Intel” or “Defendant”).
`
`Plaintiff submits these Disclosures based upon information it has acquired to date, as it
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`presently understands this information and the significance thereof, without yet having had the
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`full benefit of formal discovery. Accordingly, Plaintiff reserves the right to modify, amend,
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`retract, and/or further supplement the disclosures made herein as additional evidence and
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`information becomes available, after the Court has construed the Asserted Patents and as
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`otherwise allowed by the Local Rules and Federal Rules of Civil Procedure.
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`
`
`
`1
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.001
`
`

`

`
`
`
`
`I.
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`ALACRITECH’S FIRST AMENDED AND SUPPLEMENTAL PATENT INITIAL
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`DISCLOSURES
`
`Alacritech amends and supplements its prior Patent Rule (“P.R.”) 3-1 and 3-2 Disclosures
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`to Defendant Intel Corporation (“Intel” or “Defendant”) with respect to U.S. Patent No.
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`7,124,205 (“the ’205 patent”), U.S. Patent No. 7,237,036 (“the ’036 patent”), U.S. Patent No.
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`7,337,241 (“the ’241 patent”), U.S. Patent No. 7,673,072 (“the ’072 patent”), U.S. Patent No.
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`8,131,880 (“the ’880 patent”), U.S. Patent No. 8,805,948 (“the ’948 patent”), U.S. Patent No.
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`9,055,104 (“the ’104 patent”), and U.S. Patent No. 7.945,699 (“the ‘699 patent”) (collectively,
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`the “Asserted Patents”).
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`Although Alacritech has produced documents to Intel, to date, Intel has not completed its
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`document production to Alacritech.
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` Accordingly, Alacritech’s investigation regarding
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`infringement is ongoing, and these disclosures are therefore based on information that Alacritech
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`has been able to obtain to date regarding the function and operation of the Accused
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`Instrumentalities (as defined in the attached P.R. 3-1(c) claim charts), together with Alacritech’s
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`present understanding of the meaning and scope of the asserted claims.1 Alacritech reserves the
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`right to supplement and/or amend its disclosures as additional information is ascertained through
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`discovery and after the Court has construed the Asserted Patents.
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`
`
`
`1 In many portions of Alacritech’s 3-1 and 3-2 disclosures, Alacritech has gone beyond the
`disclosure requirements required by P.R. 3-1 and 3-2. These additional disclosures and citations
`are made for the benefit of Intel. Alacritech in no way confines its contentions to the specific
`citations of evidence and explicitly reserve the right to rely on additional or different evidence as
`the case moves forward through fact discovery, expert discovery, and trial. Furthermore, any
`omission of any other specific citation to the Accused Instrumentalities or documents related
`thereto does not constitute a waiver of Alacritech’s right to raise any issues related to the
`Accused Instrumentalities or other documents related thereto at a later date.
`
`
`
`
`2
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.002
`
`

`

`
`
`A.
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`RULE 3-1 DISCLOSURES
`
`(a)
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`Asserted Claims
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`Alacritech asserts that Intel has infringed and continues to infringe, has contributed to and
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`continues to contribute to the infringement of, and has actively induced and continues to actively
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`induce others to infringe at least the following claims of the Asserted Patents:
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`Claims 1, 3-11, 13, 16, 22, 24-33, 35, and 36 of the ’205 patent;
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`Claims 1-7 of the ’036 patent;
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`Claims 1-10, 12-19, and 22 of the ’241 patent;
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`Claims 1-5, and 7-19 of the ’072 patent;
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`Claims 1, 5-10, 12, 14, 16, 17, 20-23, 27, 28, 32, 34, 35, 37-39, 41-43, 45 and 55 of the
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`’880 patent;
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`Claims 1, 3, 6-9, 11, 14-17, 19, 21, and 22 of the ’948 patent;
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`Claims 1, 6, 9, 12, 15, and 22 of the ’104 patent; and
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`Claims 1-3, 6, 7, 10, 11, 13, 16 and 17 of the ‘699 patent.
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`Alacritech reserves the right to supplement and/or amend its disclosures to identify
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`additional claims infringed by Intel that are revealed through discovery, or in response to Intel’s
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`P.R. 3-4 production, or as permitted under the Patent Rules.
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`(b)
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`Accused Instrumentalities
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`Intel infringes Alacritech’s patented technologies across many different parts of its
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`business, including in the network adapters, network controllers, and other network products that
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`it makes, uses, and/or sells, and in the associated consulting and support services that it provides
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`to its customers (as disclosed in the P.R. 3-1(c) claim charts) that are capable of and/or
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`configured to perform infringing Receive Side Coalescing (“RSC”) functionality (also referred to
`
`
`
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`3
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.003
`
`

`

`
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`by other names, including but not limited to Receive Segment Coalescing, Large Receive
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`Offload, or Generic Receive Offload), perform infringing LSO functionality (also referred to by
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`other names, including but not limited to Large Send Offload or Generic Segmentation Offload),
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`and/or practice the InfiniBand and/or RoCE/RoCEv2 protocols.
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`Based on the information that it has been able to obtain to date, Alacritech separately
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`identifies each Intel Accused Instrumentality for each Asserted Claim applicable to Intel in
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`Alacritech’s P.R. 3-1(c) First Amended and Supplemental claim charts attached as Exhibits 1 to
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`10. Alacritech reserves the right to supplement and/or amend this disclosure to identify and
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`accuse additional Intel Accused Instrumentalities released, developed, or made available by Intel
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`after the date on which these disclosures are served, or of which Alacritech was not aware at the
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`time of these disclosures.
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`(c)
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`Claim Charts
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`Alacritech’s First Amended and Supplemental claim charts identifying specifically where
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`each element of each Asserted Claim applicable to Intel is found within each Intel Accused
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`Instrumentality are attached as Exhibits 1 to 10. The charts are based on information currently
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`known to Alacritech and contain illustrative (not exhaustive) examples of presently-known
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`infringement of the Asserted Claims.
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`(d) Literal Infringement and Doctrine of Equivalents
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`Based on its present understanding of the meaning and scope of the claim language, and
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`the information currently known to it concerning the Accused Instrumentalities, and without
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`notice of any non-infringement position from Intel, Alacritech asserts that Intel literally infringes
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`each element or step of the Asserted Claims. However, to the extent any claim element or step is
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`found to be not literally present in or performed by the Accused Instrumentalities, based on the
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`
`
`
`4
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.004
`
`

`

`
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`Court’s claim construction or Intel’s arguments, such claim element or step is satisfied under the
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`doctrine of equivalents because any difference between such claim element or step and the
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`element or step of the Accused Instrumentalities is insubstantial. In other words, the element or
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`step of the Accused Instrumentalities performs substantially the same function, in substantially
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`the same way, to achieve substantially the same result. As Alacritech has not received full
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`discovery from Intel and the Court has not construed the Asserted Claims, Alacritech reserves
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`the right, in response to discovery, Intel’s P.R. 3-4 production, or as permitted under the Patent
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`Rules, to supplement and/or amend its contentions to further detail Intel’s infringement under the
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`doctrine of equivalents as necessary.
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`(e)
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`Priority Dates
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`Asserted Claims 3, 9, 10, 16, 22, 24-33, and 35 of the ’205 patent are entitled to a filing
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`priority date no later than September 29, 2000. The Asserted Claims of the ’104 patent are
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`entitled to a filing priority date no later than April 22, 2002. All other Asserted Claims of the
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`Asserted Patents are entitled to a filing priority date no later than October 14, 1997. For each
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`Asserted Claim, Alacritech reserves the right to assert priority to earlier conception and reduction
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`to practice dates than the earliest filing priority date.
`
`(f)
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`Alacritech Instrumentalities
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`Alacritech is still investigating this matter, however, at this time Alacritech is not relying
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`on the assertion that its own apparatus, product, device, process, method, act, or other
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`instrumentality of its own practices the claimed inventions. Alacritech reserves the right to
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`supplement and/or amend this disclosure to identify any apparatus, product, device, process,
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`method, act, or other instrumentality of its own that practices the Asserted Claims of which
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`Alacritech was not aware at the time of these disclosures.
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`
`
`
`5
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.005
`
`

`

`
`
`B.
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`RULE 3-2 PRODUCTION OF DOCUMENTS
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`(a)
`
`Prior Disclosures
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`Alacritech is not presently aware of documents responsive to P.R. 3-2(a).
`
`(b)
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`Conception and Reduction to Practice
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`In addition to information included in the file histories noted below, documents
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`responsive to P.R. 3-2(b) have been produced to Intel as follows: ALA00017761 –
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`ALA00074208. Pursuant to P.R. 2-2, this production includes documents designated as
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`“Restricted - Attorneys’ Eyes Only” or “Restricted Confidential Source Code.” Accordingly,
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`access to this production shall be limited to Defendants’ outside attorneys of record and the
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`employees of said outside attorneys. Alacritech makes this production subject to, and without
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`waiving the applicability of, the relevant sections of the Discovery Order, ESI Order, and
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`Protective Order in this case. As discovery is ongoing and Alacritech’s search for documents is
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`ongoing, Alacritech reserves the right to supplement its production and disclosures as
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`information is ascertained during discovery.
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`(c)
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`File Histories
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`Documents responsive to P.R. 3-2(c) have been produced to Intel as follows:
`
`The ’205 Patent file history: ALA00013983 - ALA00014355;
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`The ’036 Patent file history: ALA00014356 - ALA00015014;
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`The ’241 Patent file history: ALA00015015 - ALA00015646;
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`The ’072 Patent file history: ALA00015647 - ALA00015973;
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`The ’699 Patent file history: ALA00015974 - ALA00016190;
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`The ’880 Patent file history: ALA00016191 - ALA00017039;
`
`The ’948 Patent file history: ALA00017040 - ALA00017242; and
`
`
`
`
`6
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.006
`
`

`

`
`
`The ’104 Patent file history: ALA00017243 - ALA00017760.
`
`
`
`Dated: February 23, 2017
`
`/s/ Claude M. Stern
`Claude M. Stern
`California State Bar No. 96737
`claudestern@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, CA 94065
`Telephone: (650) 801-5000
`Facsimile: (650) 801-5100
`
`Joseph M. Paunovich
`joepaunovich@quinnemanuel.com
`California State Bar No. 228222
`Jordan Brock Kaericher
`California State Bar No. 265953
`jordankaericher@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`T. John Ward, Jr.
`Texas State Bar No. 00794818
`jw@wsfirm.com
`Claire Abernathy Henry
`Texas State Bar No. 24053063
`claire@wsfirm.com
`WARD & SMITH LAW FIRM
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`
`ATTORNEYS FOR PLAINTIFF
`ALACRITECH, INC.
`
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`
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`
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`7
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.007
`
`

`

`
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`CERTIFICATE OF SERVICE
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`
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`I certify that a true and correct copy of the above document was served by email with
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`exhibits served via FTP on counsel of record for Intel Corporation on February 24, 2017.
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`
`
`/s/ Richard Doss
`
`8
`
`
`Alacritech, Inc. v. Tier 3, Inc., et al.
`(EDTX, Case No. 2:16-cv-00693-JRG-RSP)
`
`INTEL EX. 1232.008
`
`