`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`UNILOC USA, INC., ET AL.
`
`Case No. 2:16-cv-00992-JRG
`
`Plaintiffs,
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`LEAD CASE
`
`V.
`
`MOTOROLA MOBILITY LLC
`TENCENT AMERICA LLC ET AL.
`SNAPCHAT, INC.
`HTC AMERICA, INC.
`KYOCERA INTERNATIONAL, INC.
`ZTE (USA), INC. ET AL.
`HUAWEI DEVICE USA INC. ET AL.,
`
`Defendants.
`
`2:16-cv-00694-JRG
`2:16-cv-00696-JRG
`2:16-cv-00989-JRG
`2:16-cv-00990-JRG
`2:16-cv-00993-JRG
`2:16-cv-00994-JRG
`
`DEFENDANTS’ JOINT PRELIMINARY INVALIDITYCONTENTIONS
`Pursuant to Local Patent Rule 3-3 and the Court’s Docket Control Order (“DCO”), the
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`undersigned Defendants in the above-captioned cases (collectively, “Defendants”) set forth their
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`Joint Invalidity Contentions concerning U.S. Patent Nos. 7,535,890 (“the ’890 patent”), 8,199,747
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`(“the ’747 patent”), 8,724,622 (“the ’622 patent”), and 8,995,433 (“the ’433 patent”) (collectively,
`the “Asserted Patents”).1 These contentions set forth Defendants’ preliminary Invalidity
`Contentions with respect to the claims currently asserted by Plaintiffs Uniloc USA, Inc. and Uniloc
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`Luxembourg S.A. (collectively, “Plaintiff” or “Uniloc”).
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`Defendants also serve herewith the document production accompanying these disclosures
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`pursuant to Local Patent Rule 3-4.
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`I.
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`INTRODUCTORY STATEMENT
`The Asserted Claims2 of the Asserted Patents are neither novel nor non-obvious in view of
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`1 These Preliminary Invalidity Contentions should not be construed as a waiver to any defense, objection, ormotion
`related to personal jurisdiction or venue, and each Defendant maintains any and all objections, defenses,and motions
`relating to jurisdiction and venue that have been previously raised.
`2 As used herein, the term “Asserted Claims” encompasses all claims that Plaintiff asserts against each individual
`Defendant in these consolidated cases. Each individual Defendant joins these Invalidity Contentions with respect to
`only the claims and patents that are asserted against each such Defendant.
`
`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 1
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`
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`the state of the prior art and the understanding of those of ordinary skill in the art at the time of the
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`alleged inventions. The Asserted Claims instead attempt to lay claim over the use of “instant voice
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`messaging systems,” “generating an instant voice message,” systems and methods for “transmitting
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`[] selected recipients and [] instant voice message[s] [] over [various] networks,” an “instant
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`messaging application,” and other features and functionality, which were well-known in the field
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`prior to the alleged inventions of the Asserted Patents.
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`The Asserted Claims are also invalid because they fail to claim patent-eligible subject
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`matter under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and
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`its progeny, as set forth herein. The Asserted Claims are also invalid for lack of written description
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`and lack of enablement under 35 U.S.C. § 112, as explained herein.
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`II.
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`INVALIDITY CONTENTIONS
`The following contentions are based on Defendants’ current understanding of the Asserted
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`Claims as applied in Plaintiff’s Infringement Contentions, without the benefit of claim construction
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`and only limited discovery. Accordingly, these Invalidity Contentions may reflect various
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`potential and alternative positions regarding claim construction and scope. To the extent these
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`Contentions reflect or suggest a particular interpretation or reading of any claim element,
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`Defendants do not adopt, advocate, or acquiesce to such an interpretation or reading. Nor do these
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`Invalidity Contentions constitute any admission by Defendants that any accused products or
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`services, including any current or past versions of those products or services, are covered by any
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`Asserted Claim. Defendants do not take any position herein regarding the proper scope or
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`construction of the Asserted Claims.
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`Any assertion herein that a particular limitation is disclosed by a prior art reference or
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`references may be based in part on Plaintiff’s apparent interpretation, as identified in Plaintiff’s
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`Infringement Contentions and/or Complaints in these actions, and is not intended to be, and is not,
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`an admission by Defendants that any such construction is supportable or correct. To the extent the
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`following contentions reflect constructions of claim limitations consistent with or implicit in
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`Plaintiff’s Infringement Contentions, no inference is intended, nor should any be drawn, that
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`- 2 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 2
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`
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`Defendants agree with or concedes those claim constructions. Defendants expressly do not do so,
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`and reserves its right to contest them.
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`To the extent that prior art cited for a particular limitation discloses functionality that is the
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`same or similar in some respects to the alleged functionality in the accused products and/or services
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`as set forth in Plaintiff’s Infringement Contentions, Defendants do not concede that those
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`limitations are in fact met by those accused functionalities.
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`Defendants further reserve the right to seek to supplement and amend these disclosures and
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`associated document production based on further investigation, analysis, and discovery,
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`Defendants’ consultation with experts and others, and contentions or court rulings on relevant
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`issues such as claim construction and priority dates. For example, since discovery is in the early
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`stages, deposing the alleged inventors may reveal information that affects the disclosures and
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`contentions herein. Defendants further reserve the right to rely on IPRs filed or instituted against
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`the Asserted Patents, including Uniloc’s submissions and arguments in those IPRs. Also,
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`Defendants have not completed discovery from third parties who have information concerning the
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`prior art cited herein and possible additional art. Defendants also reserve the right to seek leave to
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`amend these Invalidity Contentions and/or to modify their selection of prior art references in the
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`event that Plaintiff serves supplemental or modified infringement contentions.
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`Because Defendants are continuing their search for and analysis of relevant prior art,
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`Defendants reserve the right to seek to revise, amend, and/or supplement the information provided
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`herein, including identifying, charting, and/or relying upon additional prior art references, relevant
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`disclosures, and bases for Invalidity Contentions. Additional prior art, disclosures, and invalidity
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`defects, whether or not cited in this disclosure and whether known or not known to Defendants,
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`may become relevant as investigation, analysis, and discovery continue. Defendants are currently
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`unaware of the extent, if any, to which Plaintiff will contend that limitations of the Asserted Claims
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`are not disclosed in the prior art identified by Defendants. To the extent that such an issue arises,
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`Defendants reserve the right to identify and rely upon other references or portions of references
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`regarding the allegedly missing limitation(s). Moreover, Plaintiffs have not yet produced invalidity
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`- 3 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 3
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`
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`contentions on the same patents it received in other lawsuits, and Defendants specifically reserve
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`the right to supplement their contentions based on such material in Plaintiffs’ possession.
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`Defendants notify Plaintiffs that they incorporate herein by reference, and intend to rely on, each
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`reference, disclosure and/or argument set forth in invalidity contentions served in any prior matter
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`involving the same patents but not yet produced to Defendants by Plaintiffs. Defendants also
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`reserve the right to supplement their contentions based on materials that could not be obtained prior
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`to service of these contentions due to confidentiality restrictions.
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`Additionally, because discovery has only recently commenced, Defendants reserve the right
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`to present additional prior art references and/or disclosures under 35 U.S.C. §§ 102(a), (b), (e), (f),
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`and/or (g), and/or § 103, located during the course of such discovery or further investigation, and to
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`assert invalidity under 35 U.S.C. §§ 102(c), (d), or (f), to the extent that such discovery or
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`investigation yields information forming the basis for such invalidity.
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`Identity of Each Item of Prior Art—P.R. 3-3 (a)
`A.
`Pursuant to P.R. 3-3 (a), and subject to Defendants’ reservation of rights, Defendants
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`identify each item of prior art that anticipates or renders obvious one or more of the Asserted
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`Claims in the attached Prior Art Index submitted herewith. See Appendix A, infra. To the extent
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`that the references listed in Appendix A are not identified as items of prior art that anticipate or
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`render obvious an Asserted Claim, Defendants intend to rely on these references as background and
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`as evidence of the state of the art at the time of Plaintiff’s alleged invention. For example, U.S.
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`Patent No. 5,426,594, filed in April 1993 and issued on June 20, 1995 to Motorola, discloses and
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`claims the ability of one user to select an electronic greeting card, insert personalized text and voice
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`messages that are sent to a central server for subsequent sending to a defined recipient.
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`Additionally, the prior art references cited by Defendants include references that are related
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`patent applications and issued patents that contain substantially the same subject matter (e.g.,
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`published U.S. patent applications, and issued U.S. patents, foreign applications or issued patents).
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`Any citation to or quotation from any of these patent applications or patents, therefore, should be
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`understood as encompassing any parallel citation to the same subject matter in other related or
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`- 4 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 4
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`
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`corresponding applications or patents. For example, where a claim chart cites a published patent
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`application that ultimately issued as a patent with substantially the same written description,
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`Defendants may rely upon the published patent application and/or the issued patent as prior art.
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`Defendants also reserve the right to later rely upon all references or portions of references
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`provided in Appendix A to supplement or amend their disclosures contained herein. Also, to the
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`extent not expressly mentioned herein, Defendants incorporate by reference (1) any and all prior art
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`contained or identified in documents produced thus far by Plaintiff in this or any other proceeding,
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`(2) any and all additional materials regarding or bearing upon invalidity in Plaintiff’s possession or
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`control that have not been produced to date, to the extent that any exist, and any and all prior art
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`cited by defendants in any prior case, including but not limited to Uniloc USA, Inc. v. Samsung
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`Electronics America, Inc., et al, Case No. 2:16-cv-642-JRG (E.D. Tex.).
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`Each disclosed item of prior art describing a product, system, or other implementation made
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`in the United States is evidence of a prior invention by another under 35 U.S.C. § 102(g), as
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`evidenced by the named inventors, authors, organizations, and publishers involved with each such
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`reference. Defendants further intend to rely on admissions of the named inventors concerning the
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`prior art, including statements found in the Asserted Patents, their prosecution histories, related
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`patents and/or patent applications, any deposition testimony, and the papers filed and any evidence
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`submitted by Plaintiff in conjunction with this litigation.
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`Finally, Defendants note that disclosures in the Asserted Patents themselves either
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`anticipate the claimed inventions or render the claimed inventions obvious, either alone or in
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`combination with the prior art references disclosed in these Contentions. Defendants may rely
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`upon the statements in the Asserted Patents as admitted prior art. For example, in the Background
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`of the Invention section of the Asserted Patents, the specification describes “prior art IP telephony
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`system 100,” which is also represented in Figure 1 of the Asserted Patents. See, e.g., U.S. Patent
`No. 7,535,890 (“the ’890 patent”)3 at 1:40-2:10, Fig. 1. System 100 has many similarities with the
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`3 The specification of each Asserted Patent is identical, as all of the Asserted Patents resulted from continuation
`applications in the same patent family. As such, only one patent is cited here for clarity and brevity.
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`- 5 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 5
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`
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`alleged inventions claimed in the Asserted Patents. In addition, the inventor states the following in
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`the Background of the Invention section of the specification of the Asserted Patents:
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`Voice messaging in both the VoIP and PSTN is known. More specifically, the
`foregoing systems may be provided with a facility to allow users to leave voice
`messages for recipients, which is a feature that is familiar to anyone who uses a
`telephone. Conventionally, leaving a voice message involves dialing the recipient’s
`telephone number (often without knowing whether the recipient will answer),
`waiting for the connection to be established, speaking to an operator or navigating
`through a menu of options, listening to a greeting message, and recording the
`message for later pickup by the recipient. In that message, the user must typically
`identify himself or herself in order for the recipient to return the call.
`
`Instant text messaging is likewise known. More specifically, a user is provided with
`a client terminal, which is typically a general-purpose PC programmed with instant
`text messaging software and in data communication over an IP network with an
`instant text-messaging server. The instant text-messaging server presents the user,
`via the client terminal, with a list of persons who are currently “online” and ready to
`receive text messages on their own client terminals. The user then uses the client
`terminal to select one or more persons to whom the message will be sent and types
`in a text message. The text message is sent immediately via the text-messaging
`server to the selected one or more persons and is displayed on their respective client
`terminals.
`Id. at 2:11-42. Finally, the inventor recognizes that “[t]he VoIP telephones which may be
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`implemented to provide instant voice messaging functionality according to the present invention
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`are commercially available from many vendors, including Alcatel™, Lucent™, NEC™ and
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`Cisco™, to name just a few.” Id. at 7:22-26.
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`Whether Prior Art Anticipates or Renders Obvious—P.R. 3-3 (b)
`B.
`Pursuant to P.R. 3-3(b), and subject to Defendants’ reservation of rights, Defendants
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`identify in the attached Exhibits A-1 to A-41, B-1 to B-37, C-1 to C-41, D-1 to D-41 (Prior Art
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`Invalidity Charts) prior art references that anticipate the Asserted Claims under at least 35 U.S.C.
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`§§ 102(a), (b), (e), and/or (g), either expressly or inherently, and/or render obvious the Asserted
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`Claims under 35 U.S.C. § 103 either alone or in combination with other references. Each Asserted
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`Claim is anticipated by, and/or obvious in view of, one or more items of prior art identified in these
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`disclosures, alone or in combination. A table identifying exemplary ways in which the prior art
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`references cited herein anticipate and/or render obvious the Asserted Claims is provided below in
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`Part II.B.2 below.
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`Much of the art identified in the attached exhibits/charts reflects common knowledge and
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`- 6 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 6
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`
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`the state of the art at the time of the earliest filing date of the Asserted Patents. Defendants may
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`rely on additional citations, references, expert testimony, and other material to provide context or to
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`aid in understanding the cited portions of the references and/or cited features of the systems.
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`Defendants may also rely on expert testimony explaining relevant portions of references, relevant
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`hardware or software products or systems, and other discovery regarding these subject matters.
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`Additionally, Defendants may rely on other portions of any prior art reference for purposes of
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`explaining the background and general technical subject area of the reference.
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`Where an individual reference is cited with respect to all elements of an Asserted Claim,
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`Defendants contend that the reference anticipates the claim under 35 U.S.C. §§ 102(a), (b), (e),
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`and/or (g) and also renders obvious the claim under 35 U.S.C. § 103, both by itself in view of the
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`knowledge of a person of ordinary skill in the art and in combination with the other cited references
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`to the extent the reference is not found to disclose one or more claim elements. A single prior art
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`reference, for example, can establish obviousness where the differences between the disclosures
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`within the reference and the claimed invention would have been obvious to one of ordinary skilled
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`in the art. For example, “[c]ombining two embodiments disclosed adjacent to each other in a prior
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`art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp.,
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`554 F.3d 982, 991 (Fed. Cir. 2009). To the extent Plaintiff contends that an embodiment within a
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`particular item of prior art does not fully disclose all limitations of a claim, Defendants accordingly
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`reserve their right to rely on other embodiments in that prior art reference, or other information, to
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`show single reference obviousness under 35 U.S.C. § 103(a).
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`Where an individual reference is cited with respect to fewer than all elements of an
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`Asserted Claim, Defendants contend that the reference renders obvious the claim under 35 § 103(a)
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`by itself in view of the knowledge of a person of ordinary skill in the art and/or in view of each
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`other reference and combination of references that discloses the remaining claim element(s), as
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`indicated in the claim charts submitted herewith. “Under § 103, the scope and content of the prior
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`art are to be determined; differences between the prior art and the claims at issue are to be
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`ascertained; and the level of ordinary skill in the pertinent art resolved. Against this
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`- 7 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 7
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`
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`background, the obviousness or nonobviousness of the subject matter is determined.” KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007), quoting Graham v. John Deere Co. of Kansas City,
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`383 U.S. 1, 17 (1966). Exemplary motivations to combine references are discussed below and in
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`the accompanying charts. Defendants reserve the right to rely upon any references or assertions
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`identified herein in connection with Defendants’ contention that each Asserted Claim is invalid
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`under 35 U.S.C. § 103 and to rely upon expert testimony addressing such references and assertions.
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`The fact that prior art is identified to anticipate the Asserted Claims presents no obstacle in also
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`relying on that reference as a basis for invalidity based on obviousness. It is established that “a
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`rejection for obviousness under § 103 can be based on a reference which happens to anticipate the
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`claimed subject matter.” In re Meyer, 599 F.2d 1026, 1031 (C.C.P.A. 1979). To the extent any
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`cited prior art item may not fully disclose a limitation of an Asserted Claim or is alleged by
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`Plaintiff to lack disclosure of the limitation, such limitation is present and identified in another
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`prior art item as shown in the attached claim charts.
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`Many of the cited references cite or relate to additional references and/or products, services,
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`or projects. Many of the cited references also cite software, hardware, or systems. Defendants may
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`rely upon such cited additional references and copies or exemplars of such software, hardware, or
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`systems. Defendants will produce or make available for inspection any such cited references,
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`software, hardware, or systems that it intends to rely upon. Defendants may also rely upon the
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`disclosures of the references cited and/or discussed during the prosecution of the Asserted Patents
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`and/or the assertions presented regarding those references.
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`Defendants reserve the right to further streamline and reduce the number of anticipation or
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`obviousness references relied upon with respect to a given Asserted Claim and to exchange or
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`otherwise modify the specific references relied upon for anticipation and within each obviousness
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`combination for each Asserted Claim. Discovery is at an early stage and Plaintiff has not provided
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`any contentions or documentation with respect to any alleged pre-filing invention dates or with
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`respect to claim limitations that are allegedly lacking or not obvious in the prior art. Each
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`limitation of the Asserted Claims was well-known to those of ordinary skill in the art before, at
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`- 8 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 8
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`
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`least, December 18, 2003 (the application filing date for the ’890 patent, which the Asserted
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`Patents identify for their earliest priority claim), as detailed below. Plaintiff also identifies this date
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`as the priority date for each Asserted Claim in its P.R. 3-1(e) Infringement Contentions. Plaintiff
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`has provided no evidence showing that the Asserted Patents are entitled to an invention date earlier
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`than December 18, 2003. Accordingly, Defendants have conducted their analysis and selection of
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`prior art based on the December 18, 2003 priority date. Should Plaintiffs improperly later assert a
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`different invention or priority date, Defendants reserve the right to investigate and add addition
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`prior art references to these Contentions. As explained in detail throughout these Contentions, the
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`Asserted Claims of the Asserted Patents are anticipated and/or obvious in view of the prior art
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`references listed in Appendix A.
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`Obviousness and Motivations to Combine
`1.
`Each prior art reference may be combined with one or more other prior art references to
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`render obvious the Asserted Claims in combination, as explained in more detail below. The
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`disclosures of these references also may be combined with information known to persons skilled in
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`the art at the time of the alleged invention, and understood and supplemented in view of the
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`common sense of persons skilled in the art at the time of the alleged invention, including any
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`statements in the intrinsic record of the Asserted Patents and related applications.
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`A person of ordinary skill would have been motivated to combine the prior art cited in
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`Appendix A based on the nature of the problem to be solved, the teachings of the prior art, and the
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`knowledge of persons of ordinary skill in the art. The identified prior art references, including
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`portions cited in the Prior Art Invalidity Charts, address the same or similar technical issues and
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`suggest the same or similar solutions to those issues as the Asserted Claims. On such bases, on an
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`element-by-element basis, Defendants expressly intend to combine one or more prior art items
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`identified in Appendix A with each other to address any further contention from Plaintiff that a
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`particular prior art item supposedly lacks one or more elements of an Asserted Claim. In other
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`words, Defendants contend that each charted prior art item can be combined with other charted
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`prior art items when a particular prior art item lacks or does not explicitly disclose an element or
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`- 9 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 9
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`
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`feature of an Asserted Claim. The suggested obviousness combinations described below are not to
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`be construed to suggest that any reference included in the combinations is not anticipatory.
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`Further, to the extent that Plaintiff contends that any of the anticipatory prior art fails to disclose
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`one or more limitations of the Asserted Claims, Defendants reserve the right to identify other prior
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`art references that, when combined with the anticipatory prior art, would render the claims obvious
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`despite an allegedly missing limitation. Defendants will further specify the motivations to combine
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`the prior art, including through reliance on expert testimony, at the appropriate later stage of this
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`lawsuit.
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`A person of skill in the art would have been motivated to combine the identified prior art
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`items. As the United States Supreme Court held in KSR International Company v. Teleflex, Inc.,
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`550 U.S. 398, 416 (2007): “The combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results.” The Supreme Court
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`further held that, “[w]hen a work is available in one field of endeavor, design incentives and other
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`market forces can prompt variations of it, either in the same field or a different one. If a person of
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`ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the
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`same reason, if a technique has been used to improve one device, and a person of ordinary skill in
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`the art would recognize that it would improve similar devices in the same way, using the technique
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`is obvious unless its actual application is beyond his or her skill.” Id. at 417.
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`The Supreme Court has further held that “in many cases a person of ordinary skill will be
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`able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. It is
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`sufficient that a combination of elements was “obvious to try” holding that, “[w]hen there is a
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`design need or market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, a person of ordinary skill has good reason to pursue the known options
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`within his or her technical grasp. If this leads to the anticipated success, it is likely the product not
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`of innovation but of ordinary skill and common sense.” Id. at 421. “In that instance the fact that a
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`combination was obvious to try might show that it was obvious under § 103.” Id. Finally, the
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`Supreme Court recognized that “[g]ranting patent protection to advances that would occur in the
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`- 10 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 10
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`
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`ordinary course without real innovation retards progress and may, in the case of patents combining
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`previously known elements, deprive prior inventions of their value or utility.” Id. at 419. All of the
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`following rationales recognized in KSR support a finding of obviousness with respect to each of the
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`obviousness combinations disclosed herein:
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`(1)
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`Combining prior art elements according to known methods to yield predictable
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`results;
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`(2)
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`(3)
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`Simple substitution of one known element for another to obtain predictable results;
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`Use of known technique to improve similar devices (methods, or products) in the
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`same way;
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`(4)
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`Applying a known technique to a known device (method, or product) ready for
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`improvement to yield predictable results;
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`(5)
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`“Obvious to try”—choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success;
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`(6)
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`Known work in one field of endeavor may prompt variations of it for use in either
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`the same field or a different one based on design incentives or other market forces if
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`the variations would have been predictable to one of ordinary skill in the art; and
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`(7)
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`Some teaching, suggestion, or motivation in the prior art that would have led one of
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`ordinary skill to modify the prior art reference or to combine prior art reference
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`teachings to arrive at the claimed invention.
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`Certain of these rationales are discussed more specifically below. The fact that others are
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`not discussed more specifically should not be interpreted as an admission or concession that they
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`do not apply. To the contrary, the discussion below simply provides explanation regarding certain
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`of the specific rationales. As Plaintiff’s positions regarding claim construction, specific prior art,
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`specific combinations and/or the state of the art at the time of invention become clear, additional
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`explanation regarding obviousness and/or motivation to combine specific references and
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`knowledge may become relevant and appropriate. Accordingly, Defendants reserve the right to
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`provide further identification and explanation regarding motivation combine as the need arises
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`- 11 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 11
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`based on positions taken by Plaintiff and/or rulings issued by the Court.
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`Defendants further contend that the prior art identified in these Invalidity Contentions is
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`evidence of simultaneous or near-simultaneous independent invention by others of the alleged
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`invention as recited in one or more of the Asserted Claims. Defendants reserve their right to rely
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`on the simultaneous or near-simultaneous independent invention by others as further evidence of
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`the obviousness of the Asserted Claims.
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`Each limitation of the Asserted Claims was well known to those of ordinary skill in the art
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`before December 18, 2003 (the filing date of the ’890 patent, which the Asserted Patents identify
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`for their earliest priority claim), as detailed below. Plaintiff also identifies this date as the priority
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`date for each Asserted Claim in its P.R. 3-1 Infringement Contentions. Plaintiff has asserted no
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`evidence suggesting that the Asserted Patents are entitled to an invention date earlier than
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`December 18, 2003. The elements recited in the Asserted Claims are mere combinations and
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`modifications of these well-known elements. A person of ordinary skill in the art would be able,
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`and motivated, to improve the existing technology in the same or similar manner by combining or
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`modifying the individual elements that were already known in the art to yield predictable results.
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`Subject to the foregoing, Defendants identify the following exemplary reasons that skilled
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`artisans would have combined elements of the prior art to render obvious the Asserted Claims. The
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`fact that others are not discussed more specifically should not be interpreted as an admission or
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`concession that it does not apply. To the contrary, the discussion below simply provides more
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`explanation of these specific rationales.
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`Motivations Identified During Prosecution
`a.
`Defendants hereby expressly incorporate by reference any statements and reasons set forth
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`by the Examiner during prosecution of the Asserted Patents and related patent applications as to
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`why it would have been obvious to modify or combine references to achieve the limitations of the
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`Asserted Claims.
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`Combinations of Related References
`b.
`In some instances, multiple prior art publications and/or physical references discuss or
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`- 12 -
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`Huawei v. Uniloc, IPR2017-2090
`Uniloc's Exhibit 2002, page 12
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`
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`address the same or substantially similar underlying system, software, or other project, such as
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`commercial software products and successive versions thereof, or multiple publications discussing
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`the same subject matter. Where multiple references discuss or relate to the same or related
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`underlying projects, systems, or other subject matter, it was obvious to combine the discussions and
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`disclosures of the references as they would be understood to describe features or potential features
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`of the underlying project, system, or subject matter. Similarly, where one reference cites or
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`discusses other references or their teachings, or references have one or more authors in common
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`and a related area of subject matter, it was obvious to consider the teachings of the references in
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`combination with each other due to the express relationships and commonalities between the
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`references.
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`Groups of References
`c.
`In addition to combinations of references and motivations to combine identified elsewhere
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`herein, including within claim charts, Defendants identify combinations and motivations to
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`combine based on references grouped by subject matter, in the manner approved by courts applying
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`Patent Local Rules regarding invalidity contentions. See, e.g., Avago Techs. Gen IP PTE Ltd. v.
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`Elan Micro. Corp., No. C04-05385 JW (HRL), 2007 U.S. Dist. LEXIS 97464, at *10-11 (N.D.
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`Cal. Mar. 28, 2007) (organizing prior art references into “groups” and identifying combinations as
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`a set of references “and/or” another set of references); Keithley v. Homestore.com, Inc., 553 F.
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`Supp. 2d 1148, 1150 (N.D. Cal. 2008) (following Avago – “Apple’s grouping method is
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`permissible under the Local Rules”).
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`Furthermore, the particular cited disclosures for each reference addressed in the numbered
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`subsections within this section constitute additional charts identifying where specifically in each
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`item of prior art each applicable element of each Asserted Claim is found, pursuant to Local Patent
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`Rule 3-3(c). The cited disclosures identified in this section are provided in addition to the citations
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`set forth in the claim charts submitted separately herewith.
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`“Vo