THE HONORABLE JAMES L. ROBART
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
` SRC LABS LLC and SAINT REGIS
`MOHAWK TRIBE,
`
`Plaintiffs,
`
`Case No. 2:18-cv-00321-JLR
`
`v.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`MICROSOFT CORPORATION’S
`PRELIMINARY INVALDITY
`CONTENTIONS
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 1
`
`

`

`Pursuant to Local Patent Rule 121 and this Court’s Standing Order for Patent Cases,
`
`defendant Microsoft Corporation (“Microsoft”), by and through counsel, hereby serves its
`
`Preliminary Invalidity Contentions (“Invalidity Contentions”) on plaintiffs SRC Labs, LLC and
`
`Saint Regis Mohawk Tribe (collectively, “SRC”) regarding: claims 1-7, 11, 12, 15, and 21 of U.S.
`
`Patent No. 6,076,152 (“152 Patent”); claims 1-7, 11, 12, 15, and 21 of U.S. Patent No. 6,247,110
`
`(“110 Patent”); claims 1-5, 10-13, 18, and 25 of U.S. Patent No. 6,434,687 (“687 Patent”); claims 1,
`
`8, 9, 17, 18, 21, 22, and 23 of U.S. Patent No. 7,225,324 (“324 Patent”); claims 1, 2, 13, and 15 of
`
`U.S. Patent No. 7,421,524 (“524 Patent”); and claims 1, 8, 9, 17, 18, 21, 22, and 23 of U.S. Patent
`
`No. 7,620,800 (“800 Patent”) (collectively, the “Asserted Claims” of the “Asserted Patents”).
`
`Pursuant to Local Patent Rule 122, Microsoft also serves its accompanying document production
`
`concurrently herewith.
`
`I.
`
`INVALIDITY CONTENTIONS
`
`The Court has not yet construed any of the terms in the Asserted Patents. Accordingly, these
`
`contentions are based on Microsoft’s present understanding of the Asserted Claims and, where
`
`possible, SRC’s apparent construction of the claims in its Infringement Contentions, dated June 15,
`
`2018. Microsoft’s Invalidity Contentions, including the attached invalidity claim charts, may reflect
`
`alternative positions dependent upon claim construction and scope. These Invalidity Contentions are
`
`not an admission by Microsoft that the accused products, including any current or past versions of
`
`these products or Microsoft’s technology, are covered by the asserted claims under any reasonable or
`
`even conceivable construction or that the accused technology infringes even if SRC’s current
`
`contentions were accepted. Further, by including prior art that anticipates or renders obvious claims
`
`based on SRC’s claim construction or any other claim construction, Microsoft is not adopting SRC’s
`
`claim construction or any other claim construction. Microsoft’s Invalidity Contentions are made in a
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 2
`
`

`

`variety of alternatives and do not represent Microsoft’s agreement with SRC’s apparent applications
`
`or view as to the meaning, definiteness, written description support for, or enablement of any claim
`
`contained therein.
`
`Microsoft reserves the right to amend these disclosures and associated document production,
`
`should SRC provide any information that it failed to provide in its Local Patent Rule 120
`
`disclosures, should SRC amend its disclosures in any way, should the Court’s claim construction
`
`order make amendment necessary, should additional information about the prior art come to light, or
`
`should additional prior art come to light. To the extent that SRC’s Local Patent Rule 120 disclosures
`
`lack the specificity required under the Local Patent Rules as to the specifics of certain aspects of
`
`SRC’s infringement positions, Microsoft provides these Invalidity Contentions consistent with the
`
`case schedule currently in place but does so without waiving any right to receive from SRC such full
`
`and complete specific infringement disclosures as should have been provided from the outset.
`
`Microsoft’s compliance with the current schedule should not be viewed as waiver of any rights
`
`pertaining to SRC’s Local Patent Rule 120 disclosures. Furthermore, if SRC revises its Infringement
`
`Contentions to address any deficiencies that may be identified by Microsoft, Microsoft reserves the
`
`right to amend these Invalidity Contentions.
`
`Moreover, Microsoft reserves the right to revise its ultimate contentions concerning the
`
`invalidity of the asserted claims, which may change depending upon the Court’s construction of the
`
`asserted claims, discovery, any findings as to the priority date of the asserted claims, and/or positions
`
`that SRC may take concerning claim construction, infringement, and/or invalidity issues. Microsoft
`
`hereby provides disclosures and related documents pertaining only to the asserted claims as
`
`identified by SRC in its Local Patent Rule 120 disclosures.
`
`Prior art not included in this disclosure, whether known or not known to Microsoft, may
`
`become relevant. In particular, Microsoft is currently unaware of the extent, if any, to which SRC
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 3
`
`

`

`may contend that limitations of the Asserted Patents are not disclosed in the prior art identified by
`
`Microsoft. To the extent that such an issue arises, Microsoft reserves the right to identify other
`
`references that would explain or render obvious the allegedly missing limitation(s). Further, because
`
`discovery has begun only recently and because Microsoft has not yet completed its search for and
`
`analysis of relevant prior art, Microsoft reserves the right to revise, amend, and/or supplement the
`
`information provided herein, including identifying, charting, and relying on additional references,
`
`should Microsoft’s further search and analysis yield additional information or references.
`
`Additionally, Microsoft reserves the right to present additional prior art or evidence of prior
`
`art located during the course of third-party discovery or further investigation and to amend or
`
`supplement its Invalidity Contentions to the extent that such discovery or investigation or other case
`
`development yields information forming the basis for such amended or supplemental contentions.
`
`These Invalidity Contentions are limited to Microsoft’s current positions regarding the
`
`grounds of invalidity specifically called for in Local Patent Rule 121. Microsoft does not believe
`
`that it is required to include herein any explanation or contentions regarding any other defense that
`
`Microsoft may wish to assert in this action. Microsoft reserves the right to assert and pursue all
`
`other defenses that may be available, including all of the affirmative defenses pled in its answer, any
`
`future amended answer, or any other grounds.
`
`A.
`
`Identity of Each Item of Prior Art
`
`Subject to Microsoft’s reservation of rights, Microsoft identifies each item of prior art that
`
`anticipates or renders obvious one or more of the Asserted Claims in the attached Prior Art Index
`
`submitted herewith. (See Appendix A, infra.)
`
`Additionally, many of the prior art references are related patent applications and issued
`
`patents that contain substantially the same subject matter (e.g., published U.S. patent applications,
`
`and issued U.S. patents, foreign applications or issued patents). Any citation to or quotation from
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 4
`
`

`

`any of these patent applications or patents, therefore, should be understood as encompassing any
`
`parallel citation to the same subject matter in other related or corresponding applications or patents.
`
`Microsoft also reserves the right to later rely upon all references or portions of references provided
`
`in Appendix A to supplement or amend its disclosures contained herein. Also, to the extent not
`
`expressly mentioned herein, Microsoft incorporates by reference (1) any and all prior art contained
`
`or identified in documents produced thus far by SRC to Microsoft in this case; (2) any and all
`
`additional materials regarding invalidity that should have been produced to Microsoft but have not
`
`been produced to date, to the extent that any exist; and (3) any prior art of which the named
`
`inventor(s) of the Asserted Patents are aware and/or on which they contend the alleged invention of
`
`the Asserted Patents build upon or improve.
`
`Each disclosed item of prior art is evidence of a prior invention and making of the invention
`
`in the United States by another under 35 U.S.C. § 102(g), as evidenced by the named inventor,
`
`authors, organizations, and publishers involved with each such reference, with the circumstances
`
`described and reflected in each reference including publications and system implementation
`
`references. Microsoft further intends to rely on admissions of the named inventors concerning the
`
`prior art, including statements found in the Asserted Patents, their prosecution histories, related
`
`patents and/or patent applications, any deposition testimony, and the papers filed and any evidence
`
`submitted by SRC in conjunction with this litigation.
`
`B. Whether Prior Art Anticipates or Renders Obvious
`
`Subject to Microsoft’s reservation of rights, Microsoft identifies in the attached Prior Art
`
`Invalidity Charts prior art references that anticipate the Asserted Claims under at least 35 U.S.C. §§
`
`102(a), (b), (e), and/or (g), either expressly or inherently, and/or render obvious the Asserted Claims
`
`under 35 U.S.C. § 103 either alone or in combination with other references. Each Asserted Claim is
`
`anticipated by, and/or obvious in view of, one or more items of prior art identified in these
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 5
`
`

`

`disclosures, alone or in combination. Tables identifying ways in which the prior art references cited
`
`herein anticipate and/or render obvious the Asserted Claims are provided below.
`
`Much of the art identified in the attached exhibits/charts reflects common knowledge and the
`
`state of the art at the time of the earliest filing date of the Asserted Patents. Microsoft may rely on
`
`additional citations, references, expert testimony, fact testimony and other corroborating evidence,
`
`and other material to provide context and background illustrating the knowledge of a person of
`
`ordinary skill in the art at the time of the claimed inventions and/or to aid in understanding the cited
`
`portions of the references and/or cited features of the systems. Microsoft may also rely on expert
`
`testimony explaining relevant portions of references, relevant hardware or software products or
`
`systems, and other discovery regarding these subject matters. Additionally, Microsoft may rely on
`
`other portions of any prior art reference for purposes of explaining the background and general
`
`technical subject area of the reference.
`
`Where an individual reference is cited with respect to all elements of an Asserted Claim,
`
`Microsoft contends that the reference anticipates the claim under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g) and also renders obvious the claim under 35 U.S.C. § 103, both by itself in view of the
`
`knowledge of a person of ordinary skill in the art and in combination with the other cited references
`
`to the extent the reference is not found to disclose one or more claim elements. A single prior art
`
`reference, for example, can establish obviousness including where the differences between the
`
`disclosures within the reference and the claimed invention would have been obvious to one of
`
`ordinary skill in the art. For example, “[c]ombining two embodiments disclosed adjacent to each
`
`other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v.
`
`Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). To the extent SRC contends that an embodiment
`
`within a particular item of prior art does not fully disclose all limitations of a claim, Microsoft
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 6
`
`

`

`accordingly reserves its right to rely on other embodiments in that prior art reference, or other
`
`information, to show single reference obviousness under 35 U.S.C. § 103(a).
`
`Where an individual reference is cited with respect to fewer than all elements of an Asserted
`
`Claim, Microsoft contends that the reference renders obvious the claim under 35 U.S.C. § 103(a) in
`
`view of each other reference and combination of references that discloses the remaining claim
`
`element(s), as indicated in the claim charts submitted herewith and in the discussion below. “Under
`
`§ 103, the scope and content of the prior art are to be determined; differences between the prior art
`
`and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art
`
`resolved. Against this background, the obviousness or nonobviousness of the subject matter is
`
`determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007), quoting Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). Exemplary motivations to combine references are
`
`discussed below and/or in the accompanying charts. Microsoft reserves the right to rely upon any
`
`references or assertions identified herein in connection with Microsoft’s contention that each
`
`Asserted Claim is invalid under 35 U.S.C. § 103 and to rely upon expert testimony addressing such
`
`references and assertions. The fact that prior art is identified to anticipate the Asserted Claims
`
`presents no obstacle in also relying on that reference as a basis for invalidity based on obviousness.
`
`It is established that “a rejection for obviousness under § 103 can be based on a reference which
`
`happens to anticipate the claimed subject matter.” In re Meyer, 599 F.2d 1026, 1031 (C.C.P.A.
`
`1979). To the extent any prior art item cited above may not fully disclose a limitation of an Asserted
`
`Claim or is alleged by SRC to lack disclosure of the limitation, such limitation is present and
`
`identified in another prior art item as shown in the attached claim charts.
`
`Many of the cited references cite or relate to additional references and/or products, services,
`
`or projects. Many of the cited references also cite software, hardware, or systems. Microsoft may
`
`rely upon such cited additional references and copies or exemplars of such software, hardware, or
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 7
`
`

`

`systems. Microsoft will produce or make available for inspection any such cited references,
`
`software, hardware, or systems that it intends to rely upon. Microsoft may also rely upon the
`
`disclosures of the references cited and/or discussed during the prosecution of the Asserted Patents
`
`and/or the assertions presented regarding those references.
`
`Microsoft reserves the right to further streamline and reduce the number of anticipation or
`
`obviousness references relied upon with respect to a given Asserted Claim and to exchange or
`
`otherwise modify the specific references relied upon for anticipation and within each obviousness
`
`combination for each Asserted Claim. Discovery is at an early stage and SRC has not provided any
`
`contentions or documentation with respect to claim limitations that are allegedly lacking or not
`
`obvious in the prior art. Third party discovery is underway, but not complete. Nonetheless, the
`
`record to date establishes that each limitation of the Asserted Claims was well-known to those of
`
`ordinary skill in the art before the filing dates of the respective non-provisional applications from
`
`which each Asserted Patent claims priority, as detailed below. As explained in detail throughout
`
`these Contentions, the Asserted Claims of the Asserted Patents are anticipated by, and/or obvious in
`
`view of, the prior art references listed in Appendix A.
`
`1.
`
`Anticipation
`
`Pursuant to Local Patent Rule 121, Defendants identify the following prior art now known to
`
`Defendants to anticipate at least one of the asserted claims of the Asserted Patents under at least 35
`
`U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently as understood by a person having
`
`ordinary skill in the art. In some instances, Defendants have treated certain prior art as anticipatory
`
`where certain elements are inherently present, and in particular where elements are inherently
`
`present based on Plaintiff’s apparent claim construction in its Infringement Contentions. Invalidity
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 8
`
`

`

`claim charts for these references with respect to the Asserts Patents are attached to these Invalidity
`
`Contentions.
`
`a.
`
`152 Patent
`
`1. US Patent No. 5,574,930 to Halverson et al. (issued November 12, 1996).
`
`2. Halverson, Richard Peyton, Jr., Ph.D, The Functional Memory Approach to the Design of
`Custom Computing Machines, August 1994.
`
`3. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the machine described in the two references cited
`above.
`
`4. U.S. Patent No. 5,678,021 by Pawate et al. (issued October 14, 1997).
`
`5. U.S. Patent No. 6,185,704 by Pawate et al. (issued February 6, 2001, provisional filed
`April 11, 1997).
`
`6. “YARDS: FPGA/MPU Hybrid Architecture for Telecommunication Data Processing”
`Tsutsui et al.
`
`7. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the YARDS and/or ANT devices described in the
`reference cited above.
`
`8. U.S. Patent No. 6,470,380 by Yoshizawa et al. (issued October 22, 2002, filed October
`21, 1997).
`
`9. “Splash 2: FPGAs in a custom Computing Machine,” D.A. Buell, J. M. Arnold, and W. J.
`Kleinfelder, IEEE Computer Society, 1996.
`
`10. The pre-critical date or pre-invention date, public knowledge, offer for sale, sale or prior
`invention of any version of the Splash 2 system described in the reference cited above.
`
`11. Prism II: “PRISM-II Compiler and Architecture,” M. Wazlowski et al., in Proceedings of
`the IEEE Workshop on FPGAs for Custom Computing Machines. 5-7 April, 1993.
`
`12. The pre-critical date or pre-invention date pubic use, public knowledge, offer for sale,
`sale or prior invention of any version of the PRISM-II system described in the reference
`cited above.
`
`13. U.S. Patent No. 5,671,355 to Collins (issued September 23, 1997).
`
`14. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the Collins system described in the reference
`cited above.
`
`15. U.S. Patent No. 5,835,734 to Alkalaj (issued November 10, 1998).
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 9
`
`

`

`16. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the Alkalaj system described in the reference
`cited above
`
`17. “Programmable Active Memories: Reconfigurable Systems Come of Age” by Vuillemin
`et al. (“Vuillemin”)
`
`b.
`
`110 Patent
`
`1. The prior art cited above for the 152 Patent.
`
`c.
`
`687 Patent
`
`1. “The Architecture of the Obelix - An Improved Internet Search Engine,” P. Knezevic et
`al., Naval Postgraduate School, Proceedings of the 33rd Annual Hawaii International
`Conference on System Sciences (HICSS) Jan. 4-7, 2000, Maui, HI, USA, pp. 2145-2155
`
`2. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale, or prior invention or, or derivation from, of any version of the Obelix system
`described in the three references cited above.
`
`3. U.S. Patent No. 6,326,806 H. Fallside et al. (issued December 4, 2001, filed March 29,
`2000).
`
`4. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale, or prior invention of any version of the Fallside system described in the reference
`cited above.
`
`5. “A Web Based Multiuser Operating System for Reconfigurable Computing,” to O.
`Diessel et al. in Proceedings of the Association for Computing Machinery (ACM),
`published during a conference held on April 12-16, 1999
`
`6. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale, or prior invention of any version of the Space 2 system described in the reference
`above.
`
`7. “Networking Requirements and Solutions for a TV WWW Browser,” to T. David et al.,
`submitted to the Virginia Polytechnic Institute and State University on September 17,
`1997
`
`8. U.S. Patent No. 6,370,527 to A. Singhal et al. (issued April 9, 2002, filed December 29,
`1998)
`
`9. U.S. Patent No. 6,795,448 to P. Lee et al. (issued September 21, 2004, filed March 2,
`2000)
`
`10. U.S. Patent No. 5,887,165 to S. Martel et al. (issued March 23, 1999)
`
`11. U.S. Patent No. 6,101,180 to P. Donahue et al. (issued August 8, 2000)
`
`12. U.S. Patent No. 5,870,769 to Y. Freund (issued February 9, 1999)
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 10
`
`

`

`13. A press release entitled “Xilinx Unveils Internet Reconfigurable Logic,” (“Xilinx Press
`Release”), published on November 10, 1998.
`
`14. “An Open Platform for Development of Network Processing Modules in
`Reprogrammable Hardware,” to J. Lockwood in IEC DesignCon 2001 (“FPX”),
`published during a conference held in January of 2001.
`
`d.
`
`324 Patent
`
`1. “Splash 2: FPGAs in a custom Computing Machine,” D.A. Buell, J. M. Arnold, and W. J.
`Kleinfelder, IEEE Computer Society, 1996.
`
`2. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the Splash 2 system described in the reference
`cited above.
`
`3. “Evaluation of the Streams-C C-to-FPGA Compiler: An Applications Perspective,” J.
`Frigo et al., in Proceedings of the Association for Computing Machinery (ACM),
`February 11-13, 2001.
`
`4. “PCI-based WILDFIRE Reconfigurable Computing Engines,” B. K. Fross et al., in
`Proceedings of the International Society for Optics and Photonics (SPIE) Vol. 2914,
`October 21, 1996.
`
`5. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the WILDFIRE system described in the reference
`cited above.
`
`6. U.S. Patent No. 6,182,206,“Dynamically Reconfigurable Computing using a Processing
`Unit Having Changeable Internal Hardware Organization,” filed February 26, 1998;
`priority date April 17, 1995.
`
`7. “REMARC: Reconfigurable Multimedia Array Coprocessor,” T. Miyamori and K.
`Olukotun, in IEICE Transactions on Information and Systems E82-D, Volume 82, pages
`389-397, 1998.
`
`8. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the REMARC system described in the reference
`cited above.
`
`9. “Computing Multidimensional DFTs Using Xilinx FPGAs,” C. Dick, in Proceedings of
`the 8th International Conference on Signal Processing Applications and Technology,
`September 13-16, 1998
`
`10. “The Fast Fourier Transform on a Reconfigurable Processor,” G. Donohoe, J. Purviance,
`and P. Yeh, in Proceedings of the NASA Earth Sciences Technology Conference, June
`11-13, 2002.
`
`11. U.S. Patent No. 6,883,084 (issued on April 19, 2005, provisional filed July 25, 2001).
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 11
`
`

`

`e.
`
`524 Patent
`
`1. “YARDS: FPGA/MPU Hybrid Architecture for Telecommunication Data Processing”
`Akihiro Tsutsui and Toshiaki Miyazaki, FPGA ’97 (“Tsutsui”), presented and published
`at the 1997 ACM Fifth International Symposium on Field-Programmable Gate Arrays in
`California on February 9-11, 1997.
`
`2. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the YARDS and/or ANT devices described in the
`reference cited above.
`
`3. “Pilchard—A Reconfigurable Computing Platform With Memory Slot Interface,” P. H.
`W. Leong, M. P. Leong, O. Y. H. Cheung, et al.,, in Proceedings of the 9th Annual IEEE
`Symposium on Field-Programmable Custom Computing Machines (FCCM ’01), pp.
`170–179, Rohnert Park, California, USA, April 29, 2001-May 2, 2001.
`
`4. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the Pilchard system described in the reference
`cited above.
`
`5. U.S. Patent No. 5,671,355 to Collins (issued September 23, 1997).
`
`6. The pre-critical date or pre-invention date public use, public knowledge, offer for sale,
`sale or prior invention of any version of the Collins system described in the reference
`cited above.
`
`7. U.S. Patent No. 5,835,734 to Alkalaj et al. (issued on November 10, 1998, filed on
`September 23, 1997)
`
`f.
`
`800 Patent
`
`1. The prior art cited above for the 324 Patent.
`
`2.
`
`Obviousness
`
`Pursuant to Local Patent Rule 121, Defendants identify the following prior art references and
`
`systems now known to Defendants that either alone or in combination with other prior art (including
`
`any of the above-identified anticipatory prior art and the additional prior art disclosed in this section)
`
`render one or more of the asserted claims of the Asserted Patents invalid as obvious under 35 U.S.C.
`
`§ 103. Invalidity claim charts for these references with respect to the Asserted Patents are attached to
`
`these Invalidity Contentions. Defendants further identify combinations of prior art (including any of
`
`the above-identified anticipatory prior art and the additional prior art disclosed in this section) that
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 12
`
`

`

`render one or more of the asserted claims of the Asserted Patents invalid as obvious under 35 U.S.C.
`
`§ 103. In certain instances, the suggested obviousness combinations are provided in the alternative to
`
`Defendants’ anticipation contentions and are not to be construed to suggest that any reference
`
`included in the combinations is not by itself anticipatory.
`
`Each prior art reference may be combined with one or more other prior art references to
`
`render obvious the Asserted Claims in combination, as explained in more detail below. The
`
`disclosures of these references also may be combined with information known to persons skilled in
`
`the art at the time of the alleged invention, and understood and supplemented in view of the common
`
`sense of persons skilled in the art at the time of the alleged invention, including any statements in the
`
`intrinsic record of the asserted patents and related applications.
`
`A person of ordinary skill would have been motivated to combine the identified prior art
`
`based on the nature of the problem to be solved, the teachings of the prior art, and the knowledge of
`
`persons of ordinary skill in the art. The identified prior art references, including portions cited in the
`
`Prior Art Invalidity Charts, address the same or similar technical issues and suggest the same or
`
`similar solutions to those issues as the Asserted Claims. On such basis, on an element-by-element
`
`basis, Microsoft expressly intends to combine one or more prior art items identified in Appendix A
`
`with each other to address any further contentions from SRC that a particular prior art item
`
`supposedly lacks one or more elements of an Asserted Claim. In other words, Microsoft contends
`
`that each charted prior art item can be combined with other charted prior art items when a particular
`
`prior art item lacks or does not explicitly disclose an element or feature of an Asserted Claim. The
`
`suggested obviousness combinations described below are not to be construed to suggest that any
`
`reference included in the combinations is not anticipatory. Further, to the extent that SRC contends
`
`that any of the anticipatory prior art fails to disclose one or more limitations of the Asserted Claims,
`
`Microsoft reserves the right to identify other prior art references that, when combined with the
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 13
`
`

`

`anticipatory prior art, would render the claims obvious despite an allegedly missing limitation.
`
`Microsoft will further specify the motivations to combine the prior art, including through reliance on
`
`expert testimony, at the appropriate later stage of this lawsuit.
`
`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 Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
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`(2007): “The combination of familiar elements according to known methods is likely to be obvious
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`when it does no more than yield predictable results.” The Supreme Court further held that, “[w]hen a
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`work is available in one field of endeavor, design incentives and other market forces can prompt
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`variations of it, either in the same field or a different one. If a person of ordinary skill can
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`implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a
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`technique has been used to improve one device, and a person of ordinary skill in the art would
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`recognize that it would improve similar devices in the same way, using the technique is obvious
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`unless its actual application is beyond his or her skill.” Id. at 417.
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`To the extent not explicitly disclosed by the prior art, the Asserted Claims of the patents-in-
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`suit are nothing more than a combination of standard, conventional elements already existing and
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`well-known at the time of the purported invention, combined according to known methods to
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`achieve predictable results. The Supreme Court has further held that “in many cases a person of
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`ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id.
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`at 420. It is sufficient that a combination of elements was “obvious to try” holding that, “[w]hen
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`there is a design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, a person of ordinary skill has good reason to pursue the known
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`options within his or her technical grasp. If this leads to the anticipated success, it is likely the
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`product not of innovation but of ordinary skill and common sense.” Id. at 421. “In that instance the
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`fact that a combination was obvious to try might show that it was obvious under § 103.” Id. Finally,
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`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 14
`
`

`

`the Supreme Court recognized that “[g]ranting patent protection to advances that would occur in the
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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:
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`1)
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`2)
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`3)
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`4)
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`5)
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`6)
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`7)
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`Combining prior art elements according to known methods to yield predictable
`results;
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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
`same way;
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`Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
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`“Obvious to try”—choosing from a finite number of identified, predictable solutions,
`with a reasonable expectation of success;
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`Known work in one field of endeavor may prompt variations of it for use in either the
`same field or a different one based on design incentives or other market forces if the
`variations would have been predictable to one of ordinary skill in the art; and
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`Some teaching, suggestion, or motivation in the prior art that would have led one of
`ordinary skill to modify the prior art reference or to combine prior art reference
`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 not
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`discussed more specifically should not be interpreted as an admission or concession that it does not
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`apply. To the contrary, the discussion below simply provides more explanation of these specific
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`rationales.
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`Microsoft further contends 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. Microsoft reserves its right to rely on the
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`simultaneous or near-simultaneous independent invention by others as further evidence of the
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`obviousness of the Asserted Claims.
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`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2052, p. 15
`
`

`

`Each limitation of the Asserted Claims was well known to those of ordinary skill in the art
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`before the filing dates of the respective non-provisional applications to which each Asserted Patent
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`claims priority, as detailed below and in the attached charts.
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`The elements recited in the Asserted Cl