UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`FUNDAMENTAL INNOVATION
`SYSTEMS INTERNATIONAL LLC,
`
`Plaintiff,
`
`v.
`
`Case No. 2:16-cv-01425-JRG
`JURY TRIAL DEMANDED
`LEAD CASE
`
`LG ELECTRONICS, INC. et al.
`
`Defendants.
`
`FUNDAMENTAL INNOVATION
`SYSTEMS INTERNATIONAL LLC,
`
`Plaintiff,
`
`v.
`
`HUAWEI INVESTMENT & HOLDING
`CO., LTD. et al.
`
`Defendants.
`
`Case No. 2:16-cv-01424-JRG
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ INVALIDITY CONTENTIONS AND
`PATENT L.R. 3-3 AND 3-4 DISCLOSURES
`
`Pursuant to Patent Local Rules 3-3 and 3-4 and the Docket Control Order (Dkt. 65),
`
`Defendants LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics MobileComm
`
`U.S.A., Inc., LG Electronics Mobile Research U.S.A., LLC, and LG Electronics Alabama, Inc
`
`(“LG”), and Huawei Investment & Holding Co., Ltd., Huawei Technologies Co., Ltd., Huawei
`
`Device USA, Inc., and Futurewei Technologies, Inc. (“Huawei”, and together with LG,
`
`“Defendants”) respectfully submit their invalidity contentions and Patent Local Rule 3-3 and 3-4
`
`disclosures with respect to the claims identified by Plaintiff Fundamental Innovation Systems
`
`1
`
`

`

`
`
`International LLC (“FISI,” “Fundamental,” or “Plaintiff”) in their Patent Local Rule 3-1
`
`Disclosure of Asserted Claims and Infringement Contentions, served June 2, 2017.
`
`The claims asserted against Defendants in this case are:
`
`LG
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
`
`(v)
`
`(vi)
`
`claims 1-3, 6-8, 12, 14, 16-18 of U.S. Patent No. 7,239,111 (“the ’111 Patent”);
`
`claims 8-13 of U.S. Patent No. 7,834,586 (“the ’586 Patent”);
`
`claims 1-24 of U.S. Patent No. 8,232,766 (“the ’766 Patent”);
`
`claims 3-8, 12-17 of U.S. Patent No. 8,624,550 (“the ’550 Patent”);
`
`claims 3, 5-6, 8, 10-11 of U.S. Patent No. 7,893,655 (“the ’655 Patent”);
`
`claims 1-5, 9-20 of U.S. Patent No. 7,791,319 (“the ’319 Patent”); and
`
`(vii)
`
`claims 1-8, 13-14, 17-20 of U.S. Patent No. 7,999,514 (“the ’514 Patent”).
`
`Huawei
`
`(viii) claims 1-3, 6-8, 16-18 of the ’111 Patent;
`
`(ix)
`
`(x)
`
`(xi)
`
`claims 8-13 of the ’586 Patent;
`
`claims 1-24 of the ’766 Patent;
`
`claims 3-7, 12-16 of the ’550 Patent;
`
`(xii)
`
`claims 3, 5-6, 8, 10, 11 of the ’655 Patent;
`
`These claims are collectively referred to as “the Asserted Claims” of the “Patents-in-Suit.”
`
`In accordance with P.R. 3-3(a)-(d), Defendants hereby: (a) identify each currently known
`
`item of prior art that either anticipates or renders obvious each asserted claim; (b) specify
`
`whether each such item of prior art (or a combination of several of the same) anticipates each
`
`asserted claim and/or renders it obvious; (c) submit a chart identifying where each element in
`
`each asserted claim is disclosed, described, or taught in the prior art, and the identity of the
`
`structure(s), act(s), or material(s) in each item of prior art that performs the claimed function in
`
`2
`
`

`

`
`
`the case of means-plus-function elements under 35 U.S.C. § 112 ¶ 6; and (d) identify the grounds
`
`for invalidating the Asserted Claims based upon indefiniteness under 35 U.S.C. § 112 ¶ 2 or
`
`enablement or written description under 35 U.S.C. § 112 ¶ 1, with respect to each asserted claim
`
`and based upon Defendants’ investigation to date.
`
`I. RESERVATIONS
`
`The initial Invalidity Contentions provided herein by Defendants are provisional and
`
`subject to revision as provided in the Local Rules, the Federal Rules of Civil Procedure, and/or
`
`any Order of this Court. For example, these Invalidity Contentions are based on Defendants’
`
`current knowledge, understanding, and belief as to the facts and information available at this
`
`time. Defendants have not yet completed their investigation, collection of information,
`
`discovery, or analysis relating to this action, and additional facts and information may require
`
`Defendants to supplement or modify these contentions.
`
`Invalidity Contentions, as required by P.R. 3-4, typically follow the production of
`
`conception and reduction to practice, design and development documents as well as documents
`
`evidencing disclosures or offers to sell the patented invention prior to the date of application for
`
`the patents-in-suit, as required by P.R. 3-2. Plaintiff’s production is deficient, and Plaintiff has
`
`referred to certain unnamed third parties regarding documents. Defendants have issued a
`
`subpoena to Blackberry, the original assignee of the patents-in-suit but have not yet received any
`
`documents in response to that subpoena. Likewise, Defendants have issued subpoenas to more
`
`than fifteen third parties for documents, instrumentalities, and testimony relating to the prior art
`
`listed below and in the Exhibits hereto, including prior art systems, such as, for example,
`
`Motorola’s MicroTac and StarTac devices. As such, Defendants reserve their right to amend
`
`these Invalidity Contentions when and if such documents are produced by Plaintiff, Blackberry,
`
`the inventors of the patents-in-suit, or some other third party.
`
`3
`
`

`

`
`
`FISI’s Infringement Contentions include multiple references to software. To the extent,
`
`consistent with 3(a) of the Discovery Order (Dkt. 64), Plaintiff has indicated that any claim
`
`element is a software limitation taking advantage of P.R 3-1(g), Defendants reserve the right to
`
`amend their Invalidity Contentions in accordance with P.R. 3-3(e).
`
`Separate and apart from the identifications of software limitations, FISI’s Infringement
`
`Contentions are deficient in multiple respects and do not provide Defendants with sufficient
`
`information to understand the bases for FISI’s infringement allegations or the alleged scope of
`
`the claims as FISI is applying them in making such allegations. For example, FISI failed to
`
`provide “a chart identifying specifically where each element of each asserted claim is found
`
`within each Accused Instrumentality.” In addition, Defendants understand that FISI has
`
`represented that “[t]he patents are not standard essential” and “this case is not about USB
`
`standards.” (See 2:17-cv-00145-JRG, Dkt. 46 Ex. A at 1-2). Consequently, Defendants are
`
`hindered from completely identifying prior art to meet FISI’s Infringement Contentions. To the
`
`extent that FISI’s Infringement Contentions are understandable, Defendants’ Invalidity
`
`Contentions are based, at least in part, on FISI’s apparent constructions of the Asserted Claims
`
`and FISI’s application of those claims. Likewise, FISI failed to produce its Infringement
`
`Contentions from other cases where the same patents are asserted, further hindering the scope of
`
`Defendants’ understanding.
`
`In addition, Defendants have not received or identified all of the documents that may be
`
`relevant to their Invalidity Contentions. Defendants also have not had the opportunity to take the
`
`depositions of the named inventors of the patents-in-suit and/or other persons having potentially
`
`relevant information. Defendants further are in the process of investigating prior art from third
`
`party sources believed to have knowledge, documentation, or corroborating evidence relating to
`
`4
`
`

`

`
`
`invalidity or prior art. It is likely that Defendants will hereafter discover additional prior art
`
`pertinent to the Asserted Claims of the patents-in-suit, and Defendants reserve their right to seek
`
`to amend and/or supplement these contentions within a reasonable time after becoming aware of
`
`additional prior art. Defendants also reserve their right to introduce and use such supplemental
`
`materials at trial.
`
`Furthermore, Defendants have had little or no discovery concerning the alleged
`
`conception and reduction to practice by the named inventors of the subject matter of the Patents-
`
`in-Suit. Defendants are diligently seeking and will continue diligently to seek documents from
`
`third parties in discovery that establish earlier dates of conception and reduction to practice, as
`
`appropriate, in order to demonstrate such third parties’ earlier dates of invention under 35 U.S.C.
`
`§ 102(g). Defendants therefore reserve the right to supplement these Invalidity Contentions with
`
`further information and documentation, if and when it becomes available, to support earlier dates
`
`of invention than what is alleged by FISI.
`
`Similarly, Defendants have had little or no discovery concerning the claimed priority
`
`dates for the patents-in-suit. FISI asserts that the claims of the ’111, ’586, ’766, and ’550 patents
`
`are entitled to a priority date of March 1, 2001 (i.e. the filing of provisional application
`
`60/273,021) and the claims of the ’319 and ’514 patents are entitled to a priority date of February
`
`21, 2003 (i.e. the filing of application 10/372,180). For the ’655 patent, FISI asserts that the
`
`claims are entitled to a priority date of December 13, 2005 (i.e. the filing of application
`
`11/299,701) but allegedly were conceived and reduced to practice no later than February 8, 2005.
`
`FISI offers no support for these assertions and they appear to be incorrect. For example,
`
`60/273,021 does not entitle FISI to a priority date of March 1, 2001 for the asserted claims of
`
`’111, ’586, ’766, and ’550 patents. Similarly, 60/330,486 may not entitle FISI to a priority date
`
`5
`
`

`

`
`
`of October 23, 2001 for all claims of the ‘111, ‘586, ‘766 and ‘550 patents. Likewise, FISI
`
`offers no support for its February 8, 2005 priority date for the ’655. Defendants further dispute
`
`the disclosures in the provisional and non-provisional filings cited support the purported full
`
`scope of the asserted claims. Defendants reserve their right to supplement and/or amend their
`
`Invalidity Contentions and their identification and production of prior art accordingly.
`
`Defendants also reserve their right to supplement and/or amend these Invalidity
`
`Contentions after the Court has construed disputed claim terms. Defendants’ ultimate
`
`contentions concerning the validity of the claims of the patents-in-suit may change based upon
`
`the Court’s construction of the claims or positions that FISI may take concerning infringement or
`
`validity issues after such construction. Moreover, given the inadequacies in FISI’s Infringement
`
`Contentions, Defendants have used their best efforts to understand how FISI is construing the
`
`Asserted Claims and applying those constructions in identifying invalidating prior art. Nothing
`
`contained in these Invalidity Contentions or any accompanying exhibits or claim charts,
`
`however, should be understood or deemed to be an express or implied admission or contention
`
`with respect to the proper construction or scope of any terms in the Asserted Claims, nor should
`
`they be understood to adopt FISI’s stated claim construction or its proposed scope of the
`
`Asserted Claims. Defendants’ Invalidity Contentions rely on FISI’s application of the Asserted
`
`Claims to the accused products under the principle that the scope of the claim must be the same
`
`for invalidity as it is for infringement.
`
`Defendants provide the information below and in the attached charts and document
`
`production in order to comply with Patent Rules 3-3 and 3-4. Defendants reserve the right to
`
`prove the invalidity of the asserted claims on bases other than those required to be disclosed in
`
`these Invalidity Contentions pursuant to Patent Rule 3-3. The production of documents that have
`
`6
`
`

`

`
`
`been identified in these Invalidity Contentions shall not be deemed an admission that such
`
`documents are admissible or that Defendants have waived any objections regarding the
`
`admissibility of such documents.
`
`Pursuant to the provisions of Patent Rule 3-3, Defendants identify specific portions of
`
`prior art references that disclose the elements of the asserted claims. Although Defendants have
`
`identified exemplary disclosures for each reference, each and every disclosure in the reference is
`
`not necessarily identified. The lack of a citation for an element should not be deemed an
`
`admission that the element is not disclosed or is not inherent in the reference. In an effort to
`
`focus the issues, Defendants identify only exemplary portions of cited references. It should be
`
`recognized that persons of ordinary skill in the art generally read a prior art reference as a whole
`
`and in the context of other publications and literature and in light of the knowledge of one of
`
`ordinary skill in the art. To understand and interpret any specific statement or disclosure within
`
`a prior art reference, such persons would rely on other information within the reference, along
`
`with other publications and their scientific or engineering knowledge. Defendants consequently
`
`reserve the right to rely upon other unidentified portions of the prior art references and on other
`
`publications and expert testimony as to the knowledge of a person of ordinary skill to provide
`
`context, and as aids to understanding and interpreting the portions that art identified. Defendants
`
`also reserve the right to rely on other portions of the prior art references, other publications, and
`
`the testimony of experts to establish that a person of ordinary skill in the art would have been
`
`motivated to modify or combine certain of the cited references so as to render the claims
`
`obvious. Further, where Defendants identify a particular figure in a prior art reference, the
`
`identification should be understood to encompass the caption and description of the figure and
`
`any text relating to the figure in addition to the figure itself. Similarly, where an identified
`
`7
`
`

`

`
`
`portion of text refers to a figure, the identification should be understood to include the figure as
`
`well. Furthermore, Defendants reserve the right to rely on the cross references provided in
`
`FISI’s P.R. 3-1 disclosures. Likewise, Defendants understand that FISI represented that “a large
`
`number of asserted dependent claims have similar limitations. Therefore the actual number of
`
`limitations for which Samsung needs to perform search is significantly smaller.” (2:17-cv-00145-
`
`JRG Dkt. 46 Ex. A at 20.) Defendants reserve the right to rely on disclosures made for “similar
`
`limitations.”
`
`Defendants further reserve the right to rely upon any applicable industry standards and
`
`prior art cited in the file histories, reexamination file histories, and any Inter Partes Review of
`
`the patents-in-suit and all related U.S. and foreign patent applications as invalidating references
`
`or to show the state of the art. Prior art not included in these Invalidity Contentions, whether
`
`known or unknown to Defendants, may become relevant based on subsequent events. In
`
`particular, Defendants are currently unaware of the extent, if any, to which Plaintiff will contend
`
`that limitations of the Asserted Claims are not disclosed in the prior art identified by Defendants.
`
`To the extent that such an issue arises, Defendants reserve the right to identify other known
`
`references that would anticipate or render obvious the allegedly missing limitation(s) of the
`
`Asserted Claims.
`
`Defendants further intend to rely on inventor and FISI admissions concerning the prior
`
`art relevant to the asserted patents found in, inter alia: the patents-in-suit, the patent prosecution
`
`histories (including reexaminations) for the patents-in-suit and related patents and/or patent
`
`applications; any deposition testimony of the named inventors on the patents-in-suit; and the
`
`papers filed and any evidence submitted by Plaintiff in connection with this litigation or other of
`
`8
`
`

`

`
`
`its past, current, or future litigations or administrative proceedings concerning or relating to one
`
`or more of the patents-in-suit.
`
`Defendants further reserve the right to supplement these contentions based on the
`
`invalidity contentions in Case Nos. 2:17-cv-00145-JRG and 3:17-cv-01827 (N.D. Tex.), as well
`
`as any supplements thereto. Defendants further note that FISI asserted 90 claims against LG and
`
`55 claims against Huawei, and Defendants intend to make reasonable efforts to try to and narrow
`
`the scope of these cases. Defendants contend that FISI does not intend to litigate all of the
`
`asserted claims and have failed to comply with P.R. 3-1(a). This prejudices Defendants by
`
`permitting FISI to focus on the claims it cares about while forcing Defendants to address claims
`
`which will not be presented at trial. Defendants reserve the right to supplement these contentions
`
`when FISI identifies the claims it actually intends to assert.
`
`II.
`
`IDENTIFICATION OF PRIOR ART PURSUANT TO P.R. 3-3(A)
`
`Subject to Defendants’ reservations, listed below is each item of prior art that Defendants
`
`contend anticipates, renders obvious, or otherwise evidences invalidity of each Asserted Claim of
`
`the Patents-in-Suit.
`
`A.
`
`Prior Art
`
`Defendants hereby identify the following prior art that anticipates or renders obvious the
`
`Asserted Claims of the Patents-in-Suit under 35 U.S.C. §§ 102(a), (b), and/or (e) and/or 35
`
`U.S.C. § 103:
`
`Prior Art (’111, ’586, ’766, and ’550 Patents)
`U.S. Patent No. 5,884,086 (Amoni ’086), filed April 15, 1997, issued March 16, 1999.
`U.S. Patent No. 5,925,942 (Theobald ’942), filed July 16, 1997, issued July 20, 1999.
`U.S. Patent No. 5,935,224 (Svancarek ’224), filed April 24, 1997, issued August 10, 1999.
`U.S. Patent No. 6,283,789 (Tsai ’789), filed March 16, 2000, issued September 4, 2001.
`
`9
`
`

`

`
`
`Prior Art (’111, ’586, ’766, and ’550 Patents)
`U.S. Patent No. 6,357,011 (Gilbert ’011), filed July 15, 1998, issued March 12, 2002.
`U.S. Patent No. 6,452,402 (Kerai ’402), filed December 1, 1999, issued September 17, 2002.
`U.S. Patent No. 6,531,845 (Kerai ’845), filed May 25, 2001, issued March 11, 2003.
`U.S. Patent No. 6,625,738 (Shiga ’738), filed December 6, 1999, issued September 23, 2003.
`U.S. Patent No. 6,625,790 (Casebolt ’790), filed October 1, 1999, issued September 23, 2003.
`U.S. Patent No. 6,633,932 (Bork ’932), filed September 14, 1999, issued October 14, 2003.
`U.S. Patent No. 6,668,296 (Dougherty ’296), filed June 30, 2000, issued December 23, 2003.
`U.S. Patent No. 6,701,401 (Lu ’401), filed November 7, 2000, issued March 2, 2004.
`U.S. Patent No. 6,798,173 (Hsu ’173), filed February 21, 2001, issued September 28, 2004.
`U.S. Patent No. 6,725,061 (Huchison ’061), filed January 12, 1999, issued April 20, 2004.
`U.S. Patent No. 6,836,814 (Takaoka ’814), filed March 19, 2001, issued December 28, 2004.
`U.S. Patent No. 6,904,488 (Matsumoto ’488), filed December 21, 2000, issued June 7, 2005.
`U.S. Patent No. 7,766,698 (De Iuliis ’698), filed October 22, 2001, issued August 3, 2010.
`U.S. Patent No. 5,932,989 (Thandiwe ’989 or Motorola ’989), filed May 4, 1998, issued
`August 3, 1999.
`U.S. Patent No. 5,859,522 (Theobald ’552), filed July 16, 1997, issued January 12, 1999.
`U.S. Patent Pub. No. 2001/0033649 (Rogers ’649), “Speakerphone accessory for a telephone
`instrument” by Steven Rogers, filed February 8, 2001, published October 25, 2001.
`EP 1006703 (Kerai ’703), “Portable electronic device” by Kanji Kerai, filed November 23,
`1999, published June 7, 2000.
`CN Patent No. CN2406404Y (Yang ’404), “Mobile phone charger with USB interface” by
`Boceng Yang, filed November 26, 1999, published November 15, 2000.
`Cypress CY7C63722/23 CY7C63742/43 enCoRe™ USB Combination Low-Speed USB &
`PS/2 Peripheral Controller (Cypress enCoRe or Cypress Datasheet), by Cypress
`Semiconductor Corporation, published May 25, 2000, including prior art public
`uses/sales/offers for sale of products described by the Cypress enCoRe or Cypress Datasheet.
`USB 2.0, USB Implementers Forum, April 27, 2000.
`U.S. Pat. No. 5,648,711 (“Hakkarainen ’711), “Method and Switching Arrangement for
`Identifying the Charger of Rechargeable Batteries of Portable Devices, filed May 4, 1995,
`issued July 15, 1997.
`U.S. Pat. No. 6,246,211 (Dalton ’211), “Smart Charger,” filed Jan. 19, 2000, issued Jun. 12,
`2001.
`
`10
`
`

`

`
`
`Prior Art (’111, ’586, ’766, and ’550 Patents)
`U.S. Pat. No. 6,665,803 (Lunsford ’803), “System and Method for Detection of an Accessory
`Device Connection Status,” filed Nov, 4, 2002, issued Dec. 16, 2003).
`U.S. Pat. No. 6,980,204 (Hawkins ’204), “Charging and Communication Cable System for A
`Mobile Computer Apparatus,” filed Oct. 14, 2001, issued Dec. 27, 2005.
`U.S. Pat. App 2004/0225804 (Intel ’804), “Power Supply with Bus Hub,” filed Dec. 5, 2000,
`published Nov. 11, 2004.
`ON Semiconductor SWITCHMODE™ Power Supply Reference Manual, Sept, 1999.
`U.S. Pat. No. 5,515,038, (Smith ’038), “Data Transmission System,” filed Nov. 15, 1993,
`issued May, 7, 1996.
`U.S. Pat. No. 6,218,787 (Murcko ’787), “Remote Dimming Control System for a Fluorescent
`Ballast Utilizing Existing Building Wireing, filed April 20, 1998, issued April 7, 2001.
`U.S. Pat. No. 6,377,163 (Deller ’163), “Power Line Communication Circuit,” filed September
`21, 2000, issued Apr. 23, 2002.
`U.S. Pat. No. 6,541, 878 (Cisco ’878), “Integrated RJ-45 Magnetics With Phantom Power
`Provision,” filed July 19, 2000, issued Apr. 1, 2003.
`
`
`Prior Art (Veselic Patents)
`U.S. Patent Nos. 7,525,291, 7,528,582, 7,759,906, 7,759,907, and 8,193,779 to Bruce R.
`Ferguson (Microsemi), provisional application No. 60/441,715, filed on Jan. 21, 2003.
`U.S. Patent No. 6,326,771 (O2 Micro ’771), filed Oct. 16, 2000, published Dec. 4, 2001.
`U.S. Patent No. 6,300,744 (Siliconix ’744), filed Feb. 10, 2000, published Oct. 9, 2001.
`U.S. Patent No. 6,950,950 (HP ’950), filed December 28, 2001, published July 3, 2003.
`U.S. Patent No. 6,222,347 (Apple ’347), filed April 30, 1998, published April 24, 2001.
`EP 0 623 985 (ST Micro ’985), filed January 28, 1994, published September 11, 1994.
`Linear LTC4410 (LC4410), USB Power Manager in ThinSOT (LTC4410 Manual), published
`2002, including prior art public uses/sales/offers for sale of products described by LTC4410
`manual, including LTC4410, under 35 U.S.C. § 102(a), (b) and/or (g).
`JP Pat. Appl. No. JP2002-49444 (Sony ’444), filed August 4, 2000, published February 15, 2002.
`Maxim, Advanced Chemistry-Independent, Level 2 Battery Chargers with Input Current Limiting
`(MAX1645 Manual), published January 2001, including prior art public uses/sales/offers for sale
`of products described by MAX1645 Manual, including MAX1645, MAX1645A, MAX1645B,
`under 35 U.S.C. § 102(a), (b) and/or (g).
`U.S. Patent No. 5,703,470 (Motorola ’470), filed May 29, 1996, published December 30, 1997
`
`11
`
`

`

`
`
`Prior Art (Veselic Patents)
`U.S. Pat. No. 5,625,275 (AST ’275), filed May 24, 1995, published April 29, 1997.
`U.S. Patent No. 7,402,981 (SigmaTel ’981), filed September 30, 2003 (provisional filed July 2,
`2003), published January 6, 2005.
`EP 1 447 897 B1 (O2 Micro ’897), filed February 10, 2004, published October 10, 2007.
`U.S. Patent Pub. No. 2004/0164708 A1 (Veselic ’319 Pub.), filed February 21, 2003, published
`August 26, 2004.
`U.S. Patent No. 7,489,109 (Intersil ’109), filed August 11, 2004 (provisional application June 23,
`2004), published February 10, 2009.
`U.S. Patent Pub. No. 2004/0164707 (Veselic ’686 Pub.), filed Feb. 21, 2003, published Aug. 26,
`2004.
`U.S. Patent No. 7,570,020 (Nat’l Semi ’020), filed September 30, 2005, published August 4,
`2009.
`Ti Datasheet Synchronous Switched-Mode, Li-Ion And Li-Polymer Charge-Management IC With
`Integrated Power FETs (BqSWITCHERTM) (Ti Bq24100 Datasheet), published November 2004,
`including prior art public uses/sales/offers for sale of products described by Ti Bq24100
`Datasheet, including Ti Bq24100, under 35 U.S.C. § 102(a), (b) and/or (g).
`U.S. Patent No. 6,362,610 (Yang ’610), filed August 14, 2001, published March 26, 2002.
`U.S. Pub. No. 2006/0033474 A1 (Analogic ’474), filed Aug. 11, 2004, published Feb. 16, 2006.
`U.S. Pub. No. 2006/0119320 A1 (Linear ’320), filed May 3, 2005 (provisional application
`December 3, 2004), published June 8, 2006.
`Universal Serial Bus Specification, Revision 2.0 (USB 2.0), published April 27, 2000.
`U.S. Patent No. 5,698,964 (Dell ’964), filed Oct. 20, 1995, published December 16, 1997.
`U.S. Patent No. 6,611,067 (NEC ‘067), filed May 15, 2001, published November 15, 2001.
`U.S. Pat. No. 5,723,970 to Bell (Linear ’970), filed April 5, 1996, published March 3, 1998.
`U.S. Patent No. 6,144,187 (Fairchild ’187), filed July 13, 1999, published Nov. 7, 2000.
`JP2000-029544 to Canon (Canon ’544), filed July 9, 1998, published January 28, 2000.
`U.S. Patent No. 5,576,609 (Dell ’609), filed April 20, 1995, published November 19, 1996.
`U.S. Patent No. 6,452,364 (Fujitsu ’364), filed March 22, 2000, published Sept. 17, 2002.
`U.S. Patent No. 6,357,011 (Gateway ’011), filed July 15, 1998, published March 12, 2002.
`U.S. Patent No. 5,721,481 (IBM ’481), filed March 8, 1996, published February 24, 1998.
`U.S. Patent No. 6,211,649 (Sourcenext ’649), filed March 17, 2000, published April 3, 2001.
`U.S. Patent No. 6,507,172 (Maxim ’172), filed March 19, 2001, published Sept. 19, 2002.
`
`12
`
`

`

`
`
`Prior Art (Veselic Patents)
`U.S. Patent No. 6,275,007 (Murata ’007), filed May 8, 2000, published August 14, 2001.
`U.S. Patent No. 6,498,461 (O2 Micro ’461), filed Sept. 7, 2001, published Dec. 24, 2002.
`U.S. Patent No. 5,963,015 (Samsung ’015), filed May 21, 1998, published October 5, 1999.
`U.S. Patent No. 7,020,786 (Dell ’786), filed July 23, 2002, published January 29, 2004.
`Maxim, Notebook CPU Step-Down Controller for Intel Mobile Voltage Positioning (IMVP-II)
`(MAX1718 Manual), published August 2002, including prior art public uses/sales/offers for sale
`of products described by MAX1718 Manual, including MAX1718, under 35 U.S.C. § 102(a), (b)
`and/or (g).
`On Semiconductor, production documentation for NCP1800 - Single-Cell Lithium Ion Battery
`Charge Controller (NCP1800), published August 2002, including prior art public uses/sales/offers
`for sale of products described by this product documentation.
`Roberge, Operational Amplifiers, Theory and Practice, John Wiley & Sons, Inc., published 1975.
`Frederiksen, Intuitive IC Op Amps, from Basics to Useful Applications, National’s
`Semiconductor Technology Series, published 1984.
`Jung, Op Amp Cookbook, HW Sams publisher, published 1974.
`Horowitz and Hill (“Horowitz”), the Art of Electronics, 2d Edition, Cambridge University Press,
`published 1989.
`National Semiconductor, High-Efficiency 3A Battery Chargers Use LM2576 Regulators - AN-
`946 Application Note (LM2576), published May 1994, including prior art public uses/sales/offers
`for sale of products described by this Application Note.
`National Semiconductor (now Texas Instruments), product documentation for DAC0808 8-Bit
`D/A Converter (DAC0808), published May 1999, including prior art public uses/sales/offers for
`sale of products described by this product documentation
`
`B.
`
`Prior Art Based On Derivation Under § 102(f)
`
`Defendants contend that one or more claims of the Patents-in-Suit may be invalid due to
`
`derivation under 35 U.S.C. § 102(f). It is plain from the specifications and the prosecution
`
`histories that the named inventors “stood on the shoulders of others” (e.g., USB-Implementers
`
`Forum and USB 2.0) at best and likely had access to numerous highly-pertinent prior art
`
`references in connection with their work, including those relating to USB power and signaling,
`
`and related documentation and communications. Indeed, USB 2.0 was highly pertinent prior art
`
`as demonstrated in the attached claim chart. The use of USB 2.0 for signaling was well known
`
`and discussed on the USB Implementers Forum internet bulletin boards in which one or more
`
`13
`
`

`

`
`
`named inventors (including Dan Radut and Jonathan Malton) actively participated. For example,
`
`a third party using the name the name “Johnny” posted to the USB Implementers Forum in a
`
`thread by Dan Radut:
`
`USB Implementers Forum.1 Michael DeVault of DeVaSys responded on August 22, 2001:
`
`
`
`
`1 https://web-
`beta.archive.org/web/20030121061058/http://www.usb.org:80/forums/developers/messages/173
`39.html
`
`14
`
`

`

`
`
`
`
`USB Implementers Forum.2 As Mr. DeVault explained, a bus powered device could tell it was
`
`connected without waiting for enumeration, including through the use of resistors to pull the
`
`input port high and using the state of the input port to determine connection status.
`
`Mr. Radut and the other named inventors copied the USB Implementers Forum language
`
`almost verbatim into their specification, e.g., “[a]fter recognizing a valid identification signal, the
`
`mobile device 10 draws power through the USB adapter 100 without waiting for enumeration or
`
`charge negotiation.” (’766 patent at 9:18-21 (emphasis added).). Moreover, Mr. Radut and the
`
`
`2 https://web-
`beta.archive.org/web/20030123080501/http://www.usb.org:80/forums/developers/messages/173
`46.html
`
`15
`
`

`

`
`
`other inventors copied the USB Implementers Forum language almost verbatim into the claims.
`
`For example:
`
`(’766 patent at Claim 11.).
`
`
`
`
`
`
`
`
`
`(’550 patent at Claim 3.). In addition to the patent being invalid under Section 102(f), these
`
`claims are anticipated or obvious as understood by a person of ordinary skill. Specifically, USB
`
`2.0 includes a USB Vbus line and USB communication path at least as understood by FISI. The
`
`USB Implementers Forum posting recognized it was possible to detect connection of a bus-
`
`powered device without “waiting for enumeration.” By detecting connection and drawing power
`
`(e.g. “bus-powered device”), this is unrestricted by the USB power limits imposed with respect
`
`to the staged enumeration process at least as understood by FISI. (E.g., USB 2.0 at §§ 7.2.1.4,
`
`7.3.2.) Indeed, the ability of devices to draw more current over USB was often discussed within
`
`the USB Implementers Forum:
`
`16
`
`

`

`
`
`USB Implementers Forum.3
`
`
`
`
`3 https://web-
`beta.archive.org/web/20010719092512/http://www.usb.org:80/forums/developers/messages/250
`1.html
`
`17
`
`

`

`
`
`USB Implementers Forum.4
`
`
`
`
`4 https://web-
`beta.archive.org/web/20020319131148/http://www.usb.org:80/forums/developers/messages/240
`6.html
`
`18
`
`

`

`
`
`
`
`USB Implementers Forum.5 The lack of enumeration as well as the identification process
`
`recognized by the USB Implementers Forum posting is also an abnormal condition, at least as
`
`understood by FISI.
`
`Accordingly, Defendants contend at least the terms “different than USB enumeration”,
`
`“without USB enumeration”, “abnormal”, “identification signal”, and similar terms were
`
`invented by those other than the named inventors, and thus each asserted patent containing those
`
`terms—including without limitation the ’111, ’586, ’766, and ’550 patents—is invalid under 35
`
`U.S.C. § 102(f). Moreover, despite participating in the USB Implementers Forum, none of the
`
`named inventors disclosed the USB 2.0 standard or the USB Implementers Forum discussion of
`
`it to the USPTO. Defendants contend this was material prior art, especially in light of the other
`
`references discussed herein, and reserve the right to assert inequitable conduct rendering the
`
`
`5 https://web-
`beta.archive.org/web/20030130175850/http://www.usb.org:80/forums/developers/messages/222
`6.html
`
`19
`
`

`

`
`
`asserted patents unenforceable once further discovery into Mr. Radut and the other named
`
`inventors can occur. Likewise, members of the USB Implementers Forum including at least Mr.
`
`DeVault and the authors of USB 2.0 (USB 2.0 at iii) are co-inventors and thus co-owners of the
`
`’111, ’586, ’766, and ’550 patents. As such, FISI lacks standing to sue on the ’111, ’586, ’766,
`
`and ’550 patents for failure to join all co-owners. See, e.g., Ethicon, Inc. v. U.S. Surgical Corp.,
`
`135 F. 3d 1456 (Fed. Cir. 1998) (affirming dismissal where third party found to be unnamed co-
`
`inventor and thus co-owner, thereby requiring dismissal for failure to join all co-owners).
`
`As another example, claim 10 of the ’586 patent recites “wherein the identification signal
`
`is a result of using a resistance between the D+ and D− data lines” but there is no support in the
`
`specification for this claim. Rather, based on FISI’s theory of infringement, the patentees appear
`
`to have taken “a resistance between the D+ and D- data lines” from the USB Battery Charging
`
`Specification and/or the Communication Standard of the PRC, YD/T 1591-2006, Technical
`
`Requirement and Test Me