David A. Nelson (pro hac vice)
`(Ill. Bar No. 6209623)
`davenelson@quinnemanuel.com
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`500 West Madison St., Suite 2450
`Chicago, Illinois 60661
`Telephone: (312) 705-7400
`Facsimile: (312) 705-7401
`Karen P. Hewitt (SBN 145309)
`kphewitt@jonesday.com
`Randall E. Kay (SBN 149369)
`rekay@jonesday.com
`Kelly V. O'Donnell (SBN 257266)
`kodonnell@jonesday.com
`JONES DAY
`4655 Executive Drive, Suite 1500
`San Diego, California 92121
`Telephone: (858) 314-1200
`Facsimile: (844) 345-3178
`Richard S. Zembek (Pro Hac Vice)
`richard.zembek@nortonrosefulbright.com
`NORTON ROSE FULBRIGHT US LLP
`1301 McKinney, Suite 5100
`Houston, TX 77010
`Telephone: (713) 651-5283
`Attorneys for Plaintiff Qualcomm Incorporated
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`CASE NO. 3:17-cv-2402-CAB-MDD
`QUALCOMM INCORPORATED’S
`AMENDED PATENT L.R. 3.1 AND
`3.2 DISCLOSURES
`
`QUALCOMM INCORPORATED,
`Plaintiff,
`
`vs.
`APPLE INCORPORATED,
`Defendant.
`
`AND RELATED COUNTERCLAIM
`
`Case No. Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`1
`
`APPLE 1025
`Apple v. Qualcomm
`IPR2018-01281
`
`

`

`QUALCOMM’S PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`Pursuant to Patent Local Rule 3.1 (“Rule 3.1”) and the Amended Case
`Management Order (Dkt. 116), Plaintiff Qualcomm Incorporated (“Qualcomm”)
`hereby makes the following Amended Disclosure of Asserted Claims and
`Infringement Contentions (“Rule 3.1 Disclosures”).
`PRELIMINARY STATEMENT
`These disclosures are based on information reasonably available to Qualcomm
`at this time. Because Qualcomm’s discovery efforts and investigation in connection
`with this case are ongoing, Qualcomm reserves the right to add, modify, amend, or
`otherwise supplement these Rule 3.1 Disclosures as appropriate, including in response
`to new information or allegations. Qualcomm reserves the right to rely on testimony
`by any witness with relevant information, including fact witnesses and experts.
`Nothing in these Rule 3.1 Disclosures shall be construed to waive rights or
`objections that otherwise might be available to Qualcomm, nor shall the information
`herein or documents produced pursuant to Rule 3.2 be deemed an admission of
`relevancy, materiality, or admissibility for any purpose whatsoever. Qualcomm
`further states that Defendant Apple Incorporated (“Apple”) has not produced all
`relevant documents and information concerning the products within the scope of this
`case (“Accused Products” or “Accused Instrumentalities”). Qualcomm expects Apple
`to promptly provide complete discovery concerning all products within the scope of
`this case.
`I.
`Patent Local Rule 3.1(a)
`Rule 3.1(a) requires Qualcomm to disclose: “Each claim of each patent in suit
`that is allegedly infringed by each opposing party.” In response to Rule 3.1(a),
`Qualcomm states that Apple infringes the following claims (the “Asserted Claims”)
`of U.S. Patent Nos. 7,834,591 (“the ’591 patent”), 8,229,043 (“the ’043 patent”),
`8,447,132 (“the ’132 patent”), 8,768,865 (“the ’865 patent”), 8,971,861 (“the ’861
`patent”), and 9,024,418 (“the ’418 patent”) (collectively, “the Asserted Patents”):
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-1-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`2
`
`

`

`’591 Patent Claims 1, 3, 4, 6, 8, 11, 12, 15, 18, 19, 21, 24, and 32 are infringed
`under at least 35 U.S.C. § 271 (a), (b), and (c)
`
`’043 Patent Claims 1, 2, 3, 6, 7, 17, and 21 are infringed under at least 35 U.S.C.
`§ 271 (a), (b), and (c)
`
`’132 Patent Claims 1, 5, 6, 13, 21, 23, and 33 are infringed under at least 35
`U.S.C. § 271 (a), (b), and (c)
`
`’865 Patent Claims 1, 3, 4, 5, 6, 21, and 22 are infringed under at least 35 U.S.C.
`§ 271 (a), (b), and (c)
`
`’861 Patent Claims 1, 4, 5, 10, 13, 14, and 30 are infringed under at least 35
`U.S.C. § 271 (a), (b), and (c)
`
`’418 Patent Claims 1, 2, 4, 5, 17, 18, 19, and 20 are infringed under at least 35
`U.S.C. § 271 (a), (b), and (c)
`
`As stated above, because Qualcomm’s discovery efforts and investigation in
`connection with this case are ongoing, Qualcomm reserves the right to add, modify,
`amend, or otherwise supplement these Rule 3.1 Disclosures as appropriate, including
`in response to new information or allegations, including based on review of
`confidential Apple and/or third party information. By way of example only,
`Qualcomm reserves the right to amend as permitted by the Patent Local Rules and/or
`seek leave from the Court, based on review of confidential Apple and/or third party
`information, to substitute or add claims, including Claims 5, 33, and 35 of the ’591
`Patent, Claims 5 and 20 of the ’043 Patent, Claims 8, 11, 14, 25, 26, 27, and 30 of the
`
`-2-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`3
`
`

`

`’132 Patent, Claims 18, 19, and 20 of the ’865 Patent, and Claims 6, 8, 10, and 11 of
`the ’418 Patent.
`
`II.
`
`Patent Local Rule 3.1(b)
`Rule 3.1(b) requires Qualcomm to disclose: “Separately for each asserted
`claim, each accused apparatus, product, device, process, method, act, or other
`instrumentality (‘Accused Instrumentality’) of each opposing party of which the party
`is aware. This identification must be as specific as possible. Each product, device
`and apparatus must be identified by name or model number, if known. Each method
`or process must be identified by name, if known, or by any product, device, or
`apparatus which, when used, allegedly results in the practice of the claimed method
`or process.” In response to Rule 3.1(b), Qualcomm states as follows:
`The Asserted Claims of the ’591 Patent are infringed by at least the iPhone 6s,
`the iPhone 6s Plus, the iPhone SE, the iPhone 7, the iPhone 7 Plus, the iPhone 8, the
`iPhone 8 Plus, the iPhone X, the iPad 5 (A1822), and the MacBook 1534 model
`(collectively, “the ’591 Patent Accused Products”).
`The Asserted Claims of the ’043 Patent are infringed by at least the iPhone 7,
`iPhone 7 Plus, iPhone 8, iPhone 8 Plus, and iPhone X (collectively, “the ’043 Patent
`Accused Products).
`The Asserted Claims of the ’132 Patent are infringed by at least iPhone or iPad
`devices running iOS 5.0 or above (including iPhone 5, 5s, 5c, 6, 6 Plus, 6s, and SE,
`iPad (3rd generation), iPad (4th generation), iPad Air, iPad Air 2, iPad (2017), iPad
`Mini, iPad Mini 2, iPad Mini 3, iPad Mini 4, iPad Pro (1st generation), iPad Pro (2nd
`generation)) (collectively, “the ’132 Patent Accused Products”).
`The Asserted Claims of the ’865 Patent are infringed by at least Apple devices
`running iOS 9 and above, including, but not limited to: iPhone 4S, iPhone 5, iPhone
`5C, iPhone 5S, iPhone 6, iPhone 6 Plus, iPhone 6S, iPhone 6S Plus, iPhone SE,
`iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPad Pro, iPad Air, iPad
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-3-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`4
`
`

`

`2 and later, iPad mini and later, and iPod Touch 5th gen. and later,1 as well as Apple
`devices running watchOS 4 and above, including, but not limited to: every generation
`of Apple Watch2 (collectively, “the ’865 Patent Accused Products”).
`Asserted Claims 1, 4, 10, and 13 of the ’861 Patent are infringed by at least
`Apple devices running iOS 8 and above and compatible with Apple watch software
`for iOS, including, but not limited to: iPhone 5, iPhone 5C, iPhone 5S, iPhone 6,
`iPhone 6 Plus, iPhone 6S, iPhone 6S Plus, iPhone SE, iPhone 7, iPhone 7 Plus, iPhone
`8, iPhone 8 Plus, and iPhone X (collectively, “the ’861 Patent Accused Products”).
`Asserted Claims 5, 14, and 30 are infringed by at least the ’861 Patent Accused
`Products in combination with Apple devices running watchOS, including, but not
`limited to: every generation of Apple Watch.
`The Asserted Claims of the ’418 Patent are infringed by at least Apple that
`include the A9 processor, including, but not limited to: iPhone 6s and iPhone 6s Plus;
`the A9x processor, including, but not limited, to certain variations of the iPad Pro; the
`A10 processor, including, but not limited to, the iPhone 7, and the iPhone 7 Plus; the
`A10x processor, including, but not limited to, certain variations of the iPad Pro and
`the Apple TV digital media player; and the A11 processor, including, but not limited
`to, the iPhone 8, iPhone 8 Plus, and the iPhone X (collectively, “the ’418 Patent
`Accused Products”).
`Additional detail is provided in the charts provided pursuant to Rule 3.1(c).
`
`1 https://everyi.com/by-capability/maximum-supported-ios-version-for-ipod-
`iphone-ipad.html (last accessed Feb. 26, 2018)and http://iossupportmatrix.com/ (last
`accessed Feb. 26, 2018) (listing devices compatible with iOS 9 and above).
`2 https://www.imore.com/my-apple-watch-compatible-watchos-4 (“Every Apple
`Watch made to date, from the original that launched in 2015 to the Series 3 coming
`out on September 22, is compatible with watchOS 4.”)
`-4-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`5
`
`

`

`III. Patent Local Rule 3.1(c)
`Rule 3.1(c) requires Qualcomm to disclose: “A chart identifying specifically
`where each element of each asserted claim is found within each Accused
`Instrumentality, including for each element that such party contends is governed by
`35 U.S.C. §112(6), the identity of the structure(s), act(s), or material(s) in the Accused
`Instrumentality that performs the claimed function.” In response to Rule 3.1(c),
`Qualcomm states as follows:
`Pursuant to Rule 3.1(c), Qualcomm has attached claim charts for each of the
`Asserted Patents as Amended Exhibits 591, 043, 132, 865, 861, and 418. Examples
`of documents showing infringement of the asserted claims of the Asserted Patents
`include but are not limited to the documents cited in Amended Exhibits 591, 043, 132,
`865, 861, and 418.
`All infringement contentions set forth herein for any independent patent claims
`are hereby incorporated by reference into the infringement contentions alleged for any
`dependent patent claims that depend on such independent claims, as if fully set forth
`therein.
`Qualcomm’s inclusion of any claim preamble in this claim chart should not be
`interpreted as an admission that the preamble is limiting. Qualcomm reserves the
`right to take the position that the claim preambles are limiting or not limiting on a
`claim-by-claim basis.
`As stated above in Qualcomm’s Preliminary Statement, Apple has not
`produced all relevant documents and information concerning the Accused Products
`within the scope of this case. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case.
`IV. Patent Local Rule 3.1(d)
`Rule 3.1(d) requires Qualcomm to disclose: “For each claim which is alleged
`to have been indirectly infringed, an identification of any direct infringement and a
`description of the acts of the alleged indirect infringer that contribute to or are
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-5-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`6
`
`

`

`inducing that direct infringement. Insofar as alleged direct infringement is based on
`joint acts of multiple parties, the role of each such party in the direct infringement
`must be described.” In response to Rule 3.1(d), Qualcomm states as follows:
`’591 Patent:
`As an initial matter, as stated above in Qualcomm’s Preliminary Statement,
`Apple has not produced documents and information concerning the Accused Products
`within the scope of this case, including documents and information required for
`Qualcomm to pursue and complete its analysis of induced and contributory
`infringement of the patent. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case. Qualcomm reserves
`the right to supplement its disclosure of infringement contentions after receiving the
`requested discovery from Apple.
`Based on information presently and reasonably available to Qualcomm,
`Qualcomm contends that Apple knowingly induces and/or contributes to the
`infringement of the Asserted Claims by others, including resellers, retailers, and end
`users of the Accused Products. Apple was informed at least as early as December 14,
`2011, that Summit Microelectronics’ TurboCharge™ technology was patented. Upon
`information and belief, Apple was aware of the ‘591 Patent at least as early as
`December 14, 2011.
`On information and belief, Apple tests, demonstrates, or otherwise operates the
`Accused Products in the United States, thereby performing the claimed methods and
`directly infringing any Asserted Claims requiring such operation. Similarly, Apple’s
`customers and the end users of the Accused Products test and/or operate the Accused
`Products in the United States in accordance with Apple’s instructions contained in,
`for example, its user manuals, thereby also performing the claimed methods and
`directly infringing the Asserted Claims requiring such operation.
`On information and belief, Apple also contributes to infringement of the patent
`by selling for importation into the United States, importing into the United States,
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-6-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`7
`
`

`

`and/or selling within the United States after importation the Accused Products and the
`non-staple constituent parts of those devices, which are not suitable for substantial
`non-infringing use and which embody a material part of the invention described in
`the patent. These mobile electronic devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Apple also
`contributes to the infringement of the patent by selling for importation into the United
`States, importing into the United States, and/or selling within the United States after
`importation components of the Accused Products, which are not suitable for
`substantial non-infringing use and which embody a material part of the invention
`described in the patent. These mobile devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Specifically, on
`information and belief, Apple sells the Accused Products to resellers, retailers, and
`end users with knowledge that the devices are used for infringement. End users of
`those mobile electronic devices directly infringe the Asserted Claims.
`’043 Patent:
`As an initial matter, as stated above in Qualcomm’s Preliminary Statement,
`Apple has not produced documents and information concerning the Accused Products
`within the scope of this case, including documents and information required for
`Qualcomm to pursue and complete its analysis of induced and contributory
`infringement of the patent. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case. Qualcomm reserves
`the right to supplement its disclosure of infringement contentions after receiving the
`requested discovery from Apple.
`Based on information presently and reasonably available to Qualcomm,
`Qualcomm contends that Apple knowingly induces and/or contributes to the
`infringement of the Asserted Claims by others, including resellers, retailers, and end
`users of the Accused Products. Apple has had knowledge of the patent, and its
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-7-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`8
`
`

`

`infringement of the patent, since at least November 29, 2017, when Qualcomm filed
`this action.
`On information and belief, Apple tests, demonstrates, or otherwise operates the
`Accused Products in the United States, thereby performing the claimed methods and
`directly infringing any Asserted Claims requiring such operation. Similarly, Apple’s
`customers and the end users of the Accused Products test and/or operate the Accused
`Products in the United States in accordance with Apple’s instructions contained in,
`for example, its user manuals, thereby also performing the claimed methods and
`directly infringing the Asserted Claims requiring such operation.
`On information and belief, Apple also contributes to infringement of the patent
`by selling for importation into the United States, importing into the United States,
`and/or selling within the United States after importation the Accused Products and the
`non-staple constituent parts of those devices, which are not suitable for substantial
`non-infringing use and which embody a material part of the invention described in
`the patent. These mobile electronic devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Apple also
`contributes to the infringement of the patent by selling for importation into the United
`States, importing into the United States, and/or selling within the United States after
`importation components of the Accused Products, which are not suitable for
`substantial non-infringing use and which embody a material part of the invention
`described in the patent. These mobile devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Specifically, on
`information and belief, Apple sells the Accused Products to resellers, retailers, and
`end users with knowledge that the devices are used for infringement. End users of
`those mobile electronic devices directly infringe the Asserted Claims.
`’132 Patent:
`As an initial matter, as stated above in Qualcomm’s Preliminary Statement,
`Apple has not produced documents and information concerning the Accused Products
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-8-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`9
`
`

`

`within the scope of this case, including documents and information required for
`Qualcomm to pursue and complete its analysis of induced and contributory
`infringement of the patent. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case. Qualcomm reserves
`the right to supplement its disclosure of infringement contentions after receiving the
`requested discovery from Apple.
`Based on information presently and reasonably available to Qualcomm,
`Qualcomm contends that Apple knowingly induces and/or contributes to the
`infringement of the Asserted Claims by others, including resellers, retailers, and end
`users of the Accused Products. Apple has had knowledge of the patent, and its
`infringement of the patent, since at least November 29, 2017, when Qualcomm filed
`this action.
`On information and belief, Apple tests, demonstrates, or otherwise operates the
`Accused Products in the United States, thereby performing the claimed methods and
`directly infringing any Asserted Claims requiring such operation. Similarly, Apple’s
`customers and the end users of the Accused Products test and/or operate the Accused
`Products in the United States in accordance with Apple’s instructions contained in,
`for example, its user manuals, thereby also performing the claimed methods and
`directly infringing the Asserted Claims requiring such operation.
`On information and belief, Apple also contributes to infringement of the patent
`by selling for importation into the United States, importing into the United States,
`and/or selling within the United States after importation the Accused Products and the
`non-staple constituent parts of those devices, which are not suitable for substantial
`non-infringing use and which embody a material part of the invention described in
`the patent. These mobile electronic devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Apple also
`contributes to the infringement of the patent by selling for importation into the United
`States, importing into the United States, and/or selling within the United States after
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-9-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`10
`
`

`

`importation components of the Accused Products, which are not suitable for
`substantial non-infringing use and which embody a material part of the invention
`described in the patent. These mobile devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Specifically, on
`information and belief, Apple sells the Accused Products to resellers, retailers, and
`end users with knowledge that the devices are used for infringement. End users of
`those mobile electronic devices directly infringe the Asserted Claims.
`’865 Patent:
`As an initial matter, as stated above in Qualcomm’s Preliminary Statement,
`Apple has not produced documents and information concerning the Accused Products
`within the scope of this case, including documents and information required for
`Qualcomm to pursue and complete its analysis of induced and contributory
`infringement of the patent. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case. Qualcomm reserves
`the right to supplement its disclosure of infringement contentions after receiving the
`requested discovery from Apple.
`Based on information presently and reasonably available to Qualcomm,
`Qualcomm contends that Apple knowingly induces and/or contributes to the
`infringement of the Asserted Claims by others, including resellers, retailers, and end
`users of the Accused Products. Apple has had knowledge of the patent, and its
`infringement of the patent, since at least November 29, 2017, when Qualcomm filed
`this action.
`On information and belief, Apple tests, demonstrates, or otherwise operates the
`Accused Products in the United States, thereby performing the claimed methods and
`directly infringing any Asserted Claims requiring such operation. Similarly, Apple’s
`customers and the end users of the Accused Products test and/or operate the Accused
`Products in the United States in accordance with Apple’s instructions contained in,
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-10-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`11
`
`

`

`for example, its user manuals, thereby also performing the claimed methods and
`directly infringing the Asserted Claims requiring such operation.
`On information and belief, Apple also contributes to infringement of the patent
`by selling for importation into the United States, importing into the United States,
`and/or selling within the United States after importation the Accused Products and the
`non-staple constituent parts of those devices, which are not suitable for substantial
`non-infringing use and which embody a material part of the invention described in
`the patent. These mobile electronic devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Apple also
`contributes to the infringement of the patent by selling for importation into the United
`States, importing into the United States, and/or selling within the United States after
`importation components of the Accused Products, which are not suitable for
`substantial non-infringing use and which embody a material part of the invention
`described in the patent. These mobile devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Specifically, on
`information and belief, Apple sells the Accused Products to resellers, retailers, and
`end users with knowledge that the devices are used for infringement. End users of
`those mobile electronic devices directly infringe the Asserted Claims.
`’861 Patent:
`As an initial matter, as stated above in Qualcomm’s Preliminary Statement,
`Apple has not produced documents and information concerning the Accused Products
`within the scope of this case, including documents and information required for
`Qualcomm to pursue and complete its analysis of induced and contributory
`infringement of the patent. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case. Qualcomm reserves
`the right to supplement its disclosure of infringement contentions after receiving the
`requested discovery from Apple.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-11-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`12
`
`

`

`Based on information presently and reasonably available to Qualcomm,
`Qualcomm contends that Apple knowingly induces and/or contributes to the
`infringement of the Asserted Claims by others, including resellers, retailers, and end
`users of the Accused Products. Apple has had knowledge of the patent, and its
`infringement of the patent, since at least November 29, 2017, when Qualcomm filed
`this action.
`On information and belief, Apple tests, demonstrates, or otherwise operates the
`Accused Products in the United States, thereby performing the claimed methods and
`directly infringing any Asserted Claims requiring such operation. Similarly, Apple’s
`customers and the end users of the Accused Products test and/or operate the Accused
`Products in the United States in accordance with Apple’s instructions contained in,
`for example, its user manuals, thereby also performing the claimed methods and
`directly infringing the Asserted Claims requiring such operation.
`On information and belief, Apple also contributes to infringement of the patent
`by selling for importation into the United States, importing into the United States,
`and/or selling within the United States after importation the Accused Products and the
`non-staple constituent parts of those devices, which are not suitable for substantial
`non-infringing use and which embody a material part of the invention described in
`the patent. These mobile electronic devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Apple also
`contributes to the infringement of the patent by selling for importation into the United
`States, importing into the United States, and/or selling within the United States after
`importation components of the Accused Products, which are not suitable for
`substantial non-infringing use and which embody a material part of the invention
`described in the patent. These mobile devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Specifically, on
`information and belief, Apple sells the Accused Products to resellers, retailers, and
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-12-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`13
`
`

`

`end users with knowledge that the devices are used for infringement. End users of
`those mobile electronic devices directly infringe the Asserted Claims.
`’418 Patent:
`As an initial matter, as stated above in Qualcomm’s Preliminary Statement,
`Apple has not produced documents and information concerning the Accused Products
`within the scope of this case, including documents and information required for
`Qualcomm to pursue and complete its analysis of induced and contributory
`infringement of the patent. Qualcomm expects Apple to promptly provide complete
`discovery concerning all products within the scope of this case. Qualcomm reserves
`the right to supplement its disclosure of infringement contentions after receiving the
`requested discovery from Apple.
`Based on information presently and reasonably available to Qualcomm,
`Qualcomm contends that Apple knowingly induces and/or contributes to the
`infringement of the Asserted Claims by others, including resellers, retailers, and end
`users of the Accused Products. Apple has had knowledge of the patent, and its
`infringement of the patent, since at least November 29, 2017, when Qualcomm filed
`this action.
`On information and belief, Apple contributes to infringement of the patent by
`selling for importation into the United States, importing into the United States, and/or
`selling within the United States after importation the Accused Products and the non-
`staple constituent parts of those devices, which are not suitable for substantial non-
`infringing use and which embody a material part of the invention described in the
`patent. These mobile electronic devices are known by Apple to be especially made
`or especially adapted for use in the infringement of the patent. Apple also contributes
`to the infringement of the patent by selling for importation into the United States,
`importing into the United States, and/or selling within the United States after
`importation components of the Accused Products, which are not suitable for
`substantial non-infringing use and which embody a material part of the invention
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-13-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`14
`
`

`

`described in the patent. These mobile devices are known by Apple to be especially
`made or especially adapted for use in the infringement of the patent. Specifically, on
`information and belief, Apple sells the Accused Products to resellers, retailers, and
`end users with knowledge that the devices are used for infringement. End users of
`those mobile electronic devices directly infringe the Asserted Claims.
`V.
`Patent Local Rule 3.1(e)
`Rule 3.1(e) requires Qualcomm to disclose: “Whether each element of each
`asserted claim is claimed to be literally present and/or present under the doctrine of
`equivalents in the Accused Instrumentality.” In response to Rule 3.1(e), Qualcomm
`states as follows:
`Upon information and belief and as explained in Qualcomm’s claim charts, the
`Accused Products literally include each limitation of each Asserted Claim of the
`Asserted Patents. As these contentions are preliminary in nature and discovery is
`ongoing, Qualcomm also reserves the right to allege infringement under the doctrine
`of equivalents based on continuing discovery. In particular, Qualcomm reserves the
`right to allege theories of infringement under the doctrine of equivalents after
`obtaining discovery regarding Apple’s theories of noninfringement.
`VI. Patent Local Rule 3.1(f)
`Rule 3.1(f) requires Qualcomm to disclose: “For any patent that claims priority
`to an earlier application, the priority date to which each asserted claim allegedly is
`entitled.” In response to Rule 3.1(f), Qualcomm states as follows:
`’132 Patent:
`Each of the Asserted Caims of the ’132 Patent is entitled to a priority date of
`no later than December 9, 2009.
`’865 Patent:
`Each of the Asserted Claims of the ’865 Patent is entitled to a priority date of
`no later than January 19, 2011.
`’861 Patent:
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`-14-
`Case No. 3:17-CV-02402-CAB-MDD
`QUALCOMM INCORPORATED’S AMENDED PATENT L.R. 3.1 AND 3.2 DISCLOSURES
`
`15
`
`

`

`Each of the Asserted Caims of the ’861 Patent is entitled to a priority date of
`no later than June 21, 2011.
`VII. Patent Local Rule 3.1(g)
`Rule 3.1(g) requires Qualcomm to disclose: “If a party claiming patent
`infringement asserts or wishes to preserve the right to rely, for any purpose, on the
`assertion that its own apparatus, product, device, process, method, act, or other
`instrumentality practices the claimed invention, the party must identify, separately for
`each asserted claim, each such apparatus, product, device, process, method, act, or
`other instrumentality that incorporates or reflects that particular claim.” In response
`to Rule 3.1(g), Qualcomm states as follows:
`At this time, Qualcomm is not claiming that its own instrumentalities practice
`the claimed inventions