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`John P. Schnurer, Bar No. 185725
`JSchnurer@perkinscoie.com
`Joseph P. Reid, Bar No. 211082
`JReid@perkinscoie.com
`Thomas N. Millikan, Bar No. 234430
`TMillikan@perkinscoie.com
`Yun (Louise) Lu, Bar No. 253114
`LLu@perkinscoie.com
`James Young Hurt, Bar No. 312390
`JHurt@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, California 92130-2080
`Telephone: 858.720.5700
`Facsimile: 858.720.5799
`
`Attorneys for Defendants Coolpad
`Technologies, Inc. and Yulong Computer
`Communications and Counterclaim Plaintiff
`Coolpad Technologies, Inc.
`
`[Counsel for co-defendants identified on
`signature page]
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
`BELL NORTHERN RESEARCH,
`LLC,
`
` C.A. No. 3:18-cv-1783-CAB-BLM
`(lead case)
`
`Plaintiff,
`
`DEFENDANTS’ SECOND AMENDED
`JOINT INVALIDITY CONTENTIONS
`
`v.
`
`COOLPAD TECHNOLOGIES, INC.
`AND YULONG COMPUTER
`COMMUNICATIONS,
`
`Defendants.
`
`
`
`Judge: Hon. Cathy Ann Bencivengo
`
`
`
`
`
`Bell Northern Research, LLC, Exhibit 2011, Page 1 of 20
`
`

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`BELL NORTHERN RESEARCH,
`LLC,
`
`Plaintiff,
`
`v.
`
`HUAWEI DEVICE (DONGGUAN)
`CO., LTD, HUAWEI DEVICE
`(SHENZHEN) CO., LTD., and
`HUAWEI DEVICE USA, INC.,
`
`Defendants.
`
`BELL NORTHERN RESEARCH,
`LLC,
`
`Plaintiff,
`
`
`
`
`
`C.A. No. 3:18-cv-1784-CAB-BLM
`
`DEFENDANTS’ SECOND AMENDED
`JOINT INVALIDITY CONTENTIONS
`
`Judge: Hon. Cathy Ann Bencivengo
`
`
`
`C.A. No. 3:18-cv-1786-CAB-BLM
`
`DEFENDANTS’ SECOND AMENDED
`JOINT INVALIDITY CONTENTIONS
`
`v.
`
`Judge: Hon. Cathy Ann Bencivengo
`
`ZTE CORPORATION,
`ZTE (USA) INC., and
`ZTE (TX), INC.,
`
`
`
`
`
`
`
`Defendants.
`
`
`
`2
`
`Bell Northern Research, LLC, Exhibit 2011, Page 2 of 20
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`Pursuant to S.D. Cal. Patent Local Rule 3.6, and the Rules and Orders of this
`
`Court, Defendants Coolpad Technologies, Inc., Yulong Computer Communications,
`
`Huawei Device (Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co., Ltd., Huawei
`
`Device USA, Inc., ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc.
`
`(collectively, “Defendants”) hereby serve their Second Amended Joint Invalidity
`
`Contentions (“Invalidity Contentions”) on Plaintiff Bell Northern Research, LLC
`
`(“BNR”) in support of their allegations of invalidity of United States Patent Nos.
`
`7,319,889 (“’889 Patent); 8,204,554 (“’554 Patent); 7,990,842 (“’842 Patent”);
`
`8,416,862 (“’862 Patent”); 7,957,450 (“’450 Patent”); 6,941,156 (“’156 Patent);
`
`10
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`8,792,432 (“’432 Patent”); and 7,039,435 (“’435 Patent”) (collectively, the “Asserted
`
`11
`
`Patents”). While all of the claims collectively asserted against the Defendants are
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`12
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`addressed below, each Defendant hereby submits these Invalidity Contentions only
`
`13
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`with respect to the patents that BNR has asserted against each such Defendant.
`
`14
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`15
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`I. INTRODUCTION AND RESERVATION OF RIGHTS
`
`These Invalidity Contentions are based on information currently available to
`
`16
`
`Defendants. Defendants’ investigation and analysis of prior art is ongoing, and they
`
`17
`
`reserve the right to supplement or modify these Invalidity Contentions in a manner
`
`18
`
`consistent with the Federal Rules of Civil Procedure and the Court’s rules.
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`19
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`Defendants’ Invalidity Contentions do not constitute an admission that any
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`20
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`current, past, or future version of the accused products infringe the Asserted Patents
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`21
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`either literally or under the doctrine of equivalents. Unless otherwise stated,
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`Defendants have relied on the broad claim constructions of the asserted claims that
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`23
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`BNR has implicitly adopted in its Disclosure of Asserted Claims and Infringement
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`24
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`Contentions (“Infringement Contentions”) and amendments or supplements thereto, to
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`the extent any construction can be inferred from BNR’s Infringement Contentions.
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`Such reliance should not be taken to mean that Defendants understand, or are adopting
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`27
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`or agreeing with, BNR’s apparent constructions. Defendants expressly do not do so
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`and reserve their right to contest them.
`
`
`
`3
`
`Bell Northern Research, LLC, Exhibit 2011, Page 3 of 20
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`Defendants’ Invalidity Contentions are made in the alternative, and should not
`
`be interpreted to reply upon, or in any way affect, the non-infringement arguments
`
`Defendants intend to assert in this case.
`
`Although citations are made to exemplary passages in the prior art, Defendants
`
`reserve the right to rely upon additional passages that also may be applicable, or that
`
`may become applicable in light of any judicially ordered claim construction, changes
`
`in Plaintiff’s infringement contentions, and/or information obtained during remaining
`
`discovery. To the extent additional information regarding the prior art is available or
`
`becomes available from any related USPTO Inter Partes Review proceedings, which
`
`10
`
`are all hereby incorporated by reference, Defendants reserve the right to rely upon such
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`11
`
`additional information or applicable passages.1 Where Defendants cite and rely on a
`
`12
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`U.S. patent, Defendants necessarily cite, rely upon and incorporate by reference as
`
`13
`
`additional prior art each and every foreign priority patent (and the applications for
`
`14
`
`those foreign priority patents) cited in the identified U.S. patent.
`
`15
`
`In these Invalidity Contentions (in either this cover pleading or in the Invalidity
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`16
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`Claim Charts attached as exhibits hereto), reference to “one of ordinary skill,” “skilled
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`17
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`artisan” or any other similar term refers to a person of ordinary skill in the art at the
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`time of the alleged invention, as laid out in 35 U.S.C. § 103, for whichever particular
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`19
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`patent-in-suit is being discussed.
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`
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`1 Petitions for Inter Partes Review have been filed in the following related IPR
`
`proceedings: IPR2019-01172 (Huawei ’554), IPR2019-01174 (“Huawei ’842),
`
`IPR2019-01175 (Huawei ’889), IPR2019-01185 (Huawei ’156), IPR2019-01186
`
`(Huawei ’435), IPR2019-01319 (Coolpad/ZTE ’554), IPR2019-01320 (Coolpad/ZTE
`
`’889), IPR2019-01345 (ZTE/Coolpad ’842), IPR2019-01346 (ZTE/Coolpad ’156),
`
`IPR2019-01365 (ZTE ’435), IPR2019-01437 (ZTE/Coolpad ’842), IPR2019-01438
`
`(ZTE ’862), IPR2019-01439 (Huawei ’862).
`
`
`
`4
`
`Bell Northern Research, LLC, Exhibit 2011, Page 4 of 20
`
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`These Invalidity Contentions are based on information currently available to
`
`Defendants. Defendants’ investigation and analysis is ongoing, and Defendants
`
`reserve the right to supplement or modify these Invalidity Contentions in a manner
`
`consistent with the Federal Rules of Civil Procedure and the Court’s rules. Because
`
`Defendants’ investigation regarding the invalidity of the asserted patents is not yet
`
`complete, certain defenses, including, for example, non-patentable subject matter
`
`under 35 U.S.C. §101, knowledge or use by others under 35 U.S.C. § 102(a), public
`
`use and/or on-sale bar under 35 U.S.C. § 102(b), derivation or prior inventorship under
`
`35 U.S.C. §§ 102(f)/(g), inequitable conduct, unenforceability, and estoppel, etc. may
`
`10
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`only become apparent as additional information becomes available. Defendants have
`
`11
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`not yet had the opportunity to conduct sufficient fact discovery regarding their
`
`12
`
`unenforceability defenses. To the extent that during discovery any evidence is
`
`13
`
`produced that supports a contention that the ’889, ’554, ’842, ’862, ’450, ’156, ’432,
`
`14
`
`and/or ’435 patents are unenforceable due to inequitable conduct during prosecution of
`
`15
`
`the ’889, ’554, ’842, ’862, ’450, ’156, ’432, and/or ’435 patents or for any other
`
`16
`
`reason, Defendants reserve all rights to amend and/or supplement their Invalidity
`
`17
`
`Contentions to include such unenforceability contentions.
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`18
`
`In particular, and without limitation, Defendants reserve the right to identify
`
`19
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`other art or to supplement their disclosures or contentions for at least the following
`
`20
`
`reasons:
`
`21
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`(i) Defendants’ position on the invalidity of particular claims will depend on
`
`22
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`any claim construction from the Court, any findings as to the priority date of the
`
`23
`
`asserted claims, any findings as to the level of skill attributable to a person of ordinary
`
`24
`
`skill in the art, and/or positions that BNR or expert witness(es) may take concerning
`
`25
`
`claim construction, infringement, and/or invalidity.
`
`26
`
`(ii) Defendants have not yet completed discovery from Plaintiff. Depositions
`
`27
`
`of the persons involved in the drafting and prosecution of the asserted patents, and of
`
`28
`
`the named inventors, for instance, will likely reveal information that affects the
`
`
`
`5
`
`Bell Northern Research, LLC, Exhibit 2011, Page 5 of 20
`
`

`

`
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`disclosures and contentions herein.
`
`(iii) Defendants have not yet completed discovery from third parties who have
`
`information concerning the prior art cited herein, and possibly additional prior art.
`
`Such discovery may also reveal information that affects the disclosures and
`
`contentions herein.
`
`(iv)
`
`If BNR modifies any assertion or contention in its Infringement
`
`Contentions, or presents any new assertion or contention relevant to these Invalidity
`
`Contentions, Defendants reserve the right to supplement or otherwise amend these
`
`Invalidity Contentions.
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`Defendants’ claim charts cite to particular teachings and disclosures of the prior
`
`11
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`art as applied to features of the asserted claims. However, persons having ordinary
`
`12
`
`skill in the art generally view an item of prior art in the context of other publications,
`
`13
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`literature, products, and their own experience and understanding. As such, the cited
`
`14
`
`portions in Defendants’ claim charts are exemplary only. Where Defendants cite to a
`
`15
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`particular figure in a reference, the citation should be understood to encompass the
`
`16
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`caption and description of the figure and any text relating to the figure. Similarly,
`
`17
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`where Defendants cite to particular text referring to a figure, the citation should be
`
`18
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`understood to include the figure and caption as well. Furthermore, Defendants reserve
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`19
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`the right to rely on uncited portions of the prior art references and on other publications
`
`20
`
`and expert testimony as aids in understanding and interpreting the cited portions, as
`
`21
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`providing context thereto, as additional evidence that the prior art discloses a claim
`
`22
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`limitation or the invention as a whole, as evidence of the state of the art at a particular
`
`23
`
`time, and/or as evidence of the obviousness factor of contemporaneous development
`
`24
`
`by others. Defendants further reserve the right to rely on uncited portions of the prior
`
`25
`
`art references, other publications, and testimony, including expert testimony, to
`
`26
`
`establish bases for combination of prior art references that render the charted claims
`
`27
`
`obvious. Defendants also reserve the right to rely upon any documentary or
`
`28
`
`testimonial evidence of the existence of any systems that embodied or practiced the
`
`
`
`6
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`Bell Northern Research, LLC, Exhibit 2011, Page 6 of 20
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`disclosures found in the accompanying invalidity charts, for example as discussed in
`
`the prior art references cited herein, as such systems may qualify as prior art under 35
`
`U.S.C. § 102(g). To the extent that any claim term or judicially ordered claim
`
`construction invokes the printed matter doctrine, Defendants also reserve the right to
`
`amend their Invalidity Contentions to contend that such a claim limitation should be
`
`given no patentable weight.
`
`The references discussed in the claim charts may disclose the elements of the
`
`charted claims explicitly and/or inherently, and/or they may be relied upon to show the
`
`state of the art in the relevant time frame. Obviousness combinations are provided in
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`10
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`the alternative to Defendants’ anticipation contentions and are not to be construed to
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`11
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`suggest that any reference included in any combination is not by itself anticipatory.
`
`12
`
`Prior art patents or publications included in these Invalidity Contentions may be
`
`13
`
`related (e.g., as a divisional, continuation, continuation-in-part, parent, child, or other
`
`14
`
`relation or claim of priority) to earlier or later filed patents or publications, may have
`
`15
`
`counterparts filed in other jurisdictions, or may incorporate (or be incorporated by)
`
`16
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`other patents or publications by reference. The listed patents or publications are
`
`17
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`intended to be representative of these other patents or publications, to the extent they
`
`18
`
`exist. On information and belief, each listed publication or invention became prior art
`
`19
`
`at least as early as the dates given.
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`20
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`Moreover, as certain prior art systems and inventions are described in multiple
`
`21
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`related patents or publications with similar or identical specifications or disclosures, to
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`22
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`the extent Defendants have identified a citation in one reference, Defendants reserve
`
`23
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`the right to rely on parallel or similar citations in related patents or publications.
`
`24
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`Persons of ordinary skill in the art would read a prior art reference and understand
`
`25
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`prior art inventions as a whole and in the context of other publications, literature, and
`
`26
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`technologies. Therefore, to understand and interpret any specific statement or
`
`27
`
`disclosure of a potential prior art reference or invention, such persons would rely on
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`28
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`other information within the reference or invention, along with other publications and
`
`
`
`7
`
`Bell Northern Research, LLC, Exhibit 2011, Page 7 of 20
`
`

`

`
`
`their general scientific knowledge.
`
`Defendants also incorporate, in full, all prior art references cited in the Asserted
`
`Patents, all references incorporated by reference into those references, and the Asserted
`
`Patents’ prosecution history.
`
`In addition to the prior art identified below and in the accompanying invalidity
`
`claim charts, Defendants incorporate by reference any additional invalidity
`
`contentions, identified prior art, or invalidity claim charts disclosed at any date by any
`
`party to any litigation or U.S. Patent & Trademark Office proceeding involving the
`
`asserted patent or any related patent, including, without limitation, any parties’
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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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`8
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`9
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`10
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`invalidity contentions (including all amendments/supplementations), and expert reports
`
`11
`
`(including all amendments/supplementations), and any references identified in any
`
`12
`
`reexamination request or proceeding relating to any of the Asserted Patents.
`
`13
`
`Defendants may further rely on any prior art references or documents relating to the
`
`14
`
`validity of the asserted patents, ever known or identified by or to Plaintiff, the named
`
`15
`
`inventors of the asserted patents, assignees of the asserted patents, or any person
`
`16
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`substantively involved in the prosecution of the asserted patents.
`
`17
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`18
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`II. IDENTIFICATION OF PRIOR ART
`
`Pursuant to Patent L.R. 3.3, and subject to Defendants’ reservation of rights,
`
`19
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`Defendants identify at least the following prior art now known to Defendants to
`
`20
`
`anticipate and/or render obvious the charted claims of the ’889 Patent, ’554 Patent,
`
`21
`
`’842 Patent, ’862 Patent, ’450 Patent, ’156 Patent, ’432 Patent, and ’435 Patent. As
`
`22
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`explained in their reservation of rights, Defendants have, in certain instances, applied
`
`23
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`the prior art in accordance with BNR’s improper assertions of infringement and
`
`24
`
`improper application of the asserted claims. Defendants do not agree with BNR’s
`
`25
`
`application, however, and deny infringement.
`
`26
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`The below-identified references presently known to Defendants anticipate
`
`27
`
`and/or render obvious one or more of the charted claims of the ’889 Patent, ’554
`
`28
`
`Patent, ’842 Patent, ’862 Patent, ’450 Patent, ’156 Patent, ’432 Patent, and ’435 Patent.
`
`
`
`8
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`Bell Northern Research, LLC, Exhibit 2011, Page 8 of 20
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`
`
`254. International Publication No. WO2004025983A1 (“Tolli”) March 25,
`2004
`May 29, 2008
`
`June 25, 2009
`
`June 6, 2003
`
`2009
`
`2004
`
`November 8,
`2006
`August 23-27,
`2010
`
`January 17-21,
`2011
`
`October 8,
`2013
`February 25,
`2014
`
`255. International Publication No. WO2008063109A1
`(“Kazmi”)
`256. International Publication No. WO2009077310A1
`(“Lefebvre”)
`257. “CR’s to TS 34.123-1 v5.3.0 Related to RRC Package 1
`and 2 Test Cases,” Technical Specification Group
`Terminals TSGT#20(03)0101, Meeting #20,
`Hämeenlinna, Finland, 4.
`258. Fodor et al., “Chapter 4 – Architecture and Protocol
`Support for Radio Resource Management (RRM),” Taylor
`& Framcis Group LLC
`259. Mino et al., “Identification and Definition of Cooperation
`Schemes between RANs - First Draft.”
`260. European Patent Application Publication No. EP 1 720
`373 A1 (“Jeong II”)
`261. Nokia Corporation, “Addition of Optimised RACH
`Message Types,” 3GPP TSG RAN WG2 Meeting #71,
`R2-104524, Madrid, Spain, August 23-27, 2010.
`262. Nokia Corporation, “RACH Signalling Optimisation
`Considerations,” 3GPP TSG RAN WG2 Meeting #72 bis,
`R2-110304, Dublin, Ireland, January 17-21, 2011.
`263. U.S. Patent No. 8,553,563 (“Suzuki”)
`
`264. U.S. Patent No. 8,660,559 (“Tamura”)
`
`H. Prior Art References for the ’435 Patent
`
`Pursuant to Patent L.R. 3.3, the tables below identify the prior art items that
`
`Defendants presently assert anticipate and/or render obvious the charted claims of the
`
`’435 Patent. Where applicable, this includes information about any alleged knowledge
`
`of use of the invention in this country prior to the date of invention of the ’435 Patent.
`
`
`
`U.S. Patents or Patent Publications
`
`265. U.S. Patent No. 5,541,609 (“Stutzman”)
`266. U.S. Patent No. 6,018,646 (“Myllymaki”)
`
`Date of Issue
`or Publication
`July 30, 1996
`January 25,
`2000 (filed
`
`
`
`31
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`Bell Northern Research, LLC, Exhibit 2011, Page 9 of 20
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`
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`267. U.S. Pat. No. 5,390,338 (“Bodin”)
`
`268. U.S. Patent No. 6,456,856 (“Werling”)
`
`Other Printed Publications
`
`269. International Application Publication No. WO 95/03549
`(“Carter”)
`270. International Application Publication No. WO 02/05443
`A2 (“Irvin”)
`
`271. European Patent Application Publication No. EP 1 091
`498 A1 (“Baiker”)
`
`August 22,
`1997)
`February 14,
`1995
`September 24,
`2002 (filed
`July 26, 1999)
`
`Date of
`Publication
`February 2,
`1995
`January 17,
`2002
`(filed June 20,
`2001,
`designating the
`U.S., claiming
`priority to U.S.
`Patent
`Application
`No.
`09/612,034
`filed July 7,
`2000)
`April 11, 2001
`
`
`Prior Art Systems or Offers for Sale
`
`272. Admitted Prior Art Devices and
`Systems of the ’435 Patent (“’435
`APA”)
`
`Using or
`Offering Party
`Various
`
`Date of Use or
`Offer for Sale
`By September
`28, 2001
`
`In addition to the above prior art references, Defendants identify the following
`
`patents, printed publications, product literature, and other materials that are pertinent to
`
`invalidity of the asserted claims. Defendants may rely on these references as
`
`invalidating prior art, evidence of the knowledge of those skilled in the art, and/or
`
`
`
`32
`
`Bell Northern Research, LLC, Exhibit 2011, Page 10 of 20
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`evidence to support a motivation to combine or modify other prior art. Defendants
`
`reserve all rights to supplement or modify these invalidity contentions and to rely on
`
`these references to prove invalidity of the asserted claims in a manner consistent with
`
`the Federal Rules of Civil Procedure and the Rules of this Court.
`
`
`
`Additional Prior Art References
`
`273. Japanese Patent Application Publication No. JP 61-
`258550 A (“Murata”)
`274. U.S. Patent No. 4,636,741 (“Mitzlaff”)
`
`275. European Patent Application Publication No. EP 0 652
`645 A1 (“Fischer”)
`276. Mobile Station-Base Station Compatibility Standard for
`Dual-Mode Wideband Spread Spectrum Cellular System +
`Telecommunications Systems Bulletin: Support for 14.4
`kbps Data Rate and PCS Interaction for Wideband Spread
`Spectrum Cellular Systems, TIA/EIA/IS-95-A + TSB74
`(1996).
`(“TIA/EIA/IS-95-A”)
`277. Federal Communication Commission, Guidelines for
`Evaluating the Environmental Effects of Radiofrequency
`Radiation, FCC 96-326 (1996).
`(“FCC 96-326”)
`278. European Patent Application Publication No. EP 0 752
`735 A1 (“Müller”)
`279. William C. Y. Lee, Mobile Communications Engineering:
`Theory and Applications (McGraw Hill 1997).
`[incorporated by reference in ‘435 patent] (“Lee”)
`280. European Patent Application Publication No. EP 0 843
`421 A2 (“Pirhonen”)
`281. International Application Publication No. WO 98/29968
`A2 (“Bradley”)
`282. U.S. Patent No. 5,805,067 (“Bradley II”)
`
`283. U.S. Patent No. 5,815,820 (“Kiem”)
`
`Date of Issue
`or Publication
`November 15,
`1986
`January 13,
`1987
`October 4,
`1994
`February 27,
`1996
`
`August 1, 1996
`
`January 8,
`1997
`October 1,
`1997
`
`May 20, 1998
`
`July 9, 1998
`
`September 8,
`1998
`September 29,
`1998
`
`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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`8
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`9
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`10
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`11
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`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
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`27
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`28
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`
`
`33
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`Bell Northern Research, LLC, Exhibit 2011, Page 11 of 20
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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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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`22
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`23
`
`24
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`25
`
`26
`
`27
`
`28
`
`
`
`
`
`284. International Application Publication No. WO 99/05753
`A1 (“Gumussoy”)
`285. 3GPP2, Physical Layer Standard for cdma2000 Spread
`Spectrum Systems, C.S0002-0 v. 1 (1999).
`(“C.S0002-0 v1”)
`286. Robert F. Cleveland, Jr., Jerry L. Ulcek, Federal
`Communication Commission Office of Engineering and
`Technology, Questions and Answers about Biological
`Effects and Potential Hazards of Radiofrequency
`Electromagnetic Fields, OET Bulletin 56, Fourth Edition
`(1999).
`(“OET Bulletin 56”)
`287. U.S. Patent No. 5,949,369 (“Bradley III”)
`
`288. U.S. Patent No. 5,999,142 (“Jang”)
`
`289. U.S. Patent No. 6,002,943 (“Irvin II”)
`
`290. European Patent Application Publication No. EP 0 977
`304 A1 (“Werling II”)
`291. National Radiological Protection Board Independent
`Expert Group on Mobile Phones, Report on Mobile
`Phones and Health (Chairman Sir William Stewart, 2000).
`(“Stewart”)
`292. U.S. Patent No. 6,072,784 (“Agrawal”)
`293. U.S. Patent No. 6,087,994 (“Lechter”)
`294. United Kingdom Patent Application No. GB 2 350 235 A
`(“Schemel”)
`295. Maria Blettner, Gabriele Berg, Are Mobile Phones
`Harmful?, Acta Oncologica, 2000, 39:8, at 927-930.
`(“Blettner”)
`296. U.S. Patent No. 6,195,562 (“Pirhonen II”)
`
`297. U.S. Patent No. 6,255,996 (“Wallace”)
`298. International Application Publication No. WO 01/56110
`A1 (“Jahn”)
`299. U.S. Patent No. 6,408,187 (“Merriam”)
`
`300. U.S. Patent No. 6,498,924 (“Vogel”)
`
`34
`
`February 4,
`1999
`July 1999
`
`August 1999
`
`September 7,
`1999
`December 7,
`1999
`December 14,
`1999
`February 2,
`2000
`April 28, 2000
`
`June 6, 2000
`July 11, 2000
`November 22.
`2000
`2000
`
`February 27,
`2001
`July 3, 2001
`August 2, 2001
`
`June 18, 2002
`(filed May 14,
`1999)
`October 24,
`2002 (filed
`
`Bell Northern Research, LLC, Exhibit 2011, Page 12 of 20
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`

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`22
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`26
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`
`
`301. U.S. Patent Application Publication No. 2003/0064761 A1
`(“Nevermann”)
`
`October 27,
`1998, issued
`December 24,
`2002)
`April 3, 2003
`(filed
`September 28,
`2001)
`
`III. STATUTORY BASIS FOR INVALIDITY
`
`As explained below, and in the referenced claim charts, the charted claims of the
`
`’889 Patent, ’554 Patent, ’842 Patent, ’862 Patent, ’450 Patent, ’156 Patent, ’432
`
`Patent, and ’435 Patent are invalid for anticipation and/or obviousness. In some
`
`instances, Defendants may have treated certain prior art as anticipatory where certain
`
`elements are expressly, implicitly, or inherently present based on BNR’s apparent
`
`claim construction in BNR’s infringement contentions. Defendants reserve the right to
`
`contend that each of the anticipatory references renders the claims obvious either in
`
`view of the reference alone or in combination with other references. The identification
`
`of any patent or patent application should be deemed an identification of any
`
`counterpart patent or application; the identification of any article should be deemed a
`
`disclosure of any substantially similar article if published in some other form; and the
`
`identification of any patent or article should be deemed an identification of any product
`
`described therein.
`
`A. Invalidity Claim Charts for the ’889 Patent
`
`The table below correlates exhibit numbers to the prior art items that Defendants
`
`presently assert anticipate and/or render obvious the charted claims of the ’889 Patent.
`
`
`Exhibit No.
`A1
`A2
`A3
`A4
`A5
`A6
`
`Base Prior Art Reference / Prior Art System
`Fukiharu 598
`Numazawa
`Miyashita
`Seo
`Perez
`Mantyjarvi
`
`
`
`35
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`Bell Northern Research, LLC, Exhibit 2011, Page 13 of 20
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`

`

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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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`8
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`9
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`in some instances, prioritization of intra-frequency measurements included in TS
`
`25.331 leads to unwanted outcomes and suggests prioritization of inter-frequency
`
`measurements in those instances. R2-105713 at section 2 (“Even in Release 7 the
`
`message size with RACH Measurement Results included . . . is 169 bits long – this
`
`means UE needs to omit monitored set RACH measurement results in order not to
`
`exceed the maximum message size allowed in Rel-7 . . . . [According to Rel-7, when]
`
`limiting the number of included neighboring cells, the number of inter-frequency cells
`
`should be limited first i.e. interfrequency cells should be omitted before limiting the
`
`number of intra frequency cells. If the network wants the UE to report RACH
`
`10
`
`measurements of neighbor cells, then there is already a problem in Release 7. The
`
`11
`
`problem worsens in Rel-8, 9, and 10”). Given the problem posed in R2-105713 (G7), a
`
`12
`
`POSITA would have turned to Fong (G8), which teaches a solution wherein a base
`
`13
`
`station can transmit measurement reporting prioritization instructions to UEs. Fong at
`
`14
`
`14:28-33 (“In Release 8, the UE only includes in the measurement report sent to the
`
`15
`
`eNB the best or strongest maxReportCells cells that meet the measurement reporting
`
`16
`
`criteria. In one embodiment of this disclosure, the eNB may instruct a UE to prioritize
`
`17
`
`the cells to be included in the measurement report based on preferred CSG
`
`18
`
`membership.”).
`
`19
`
`20
`
`H. Invalidity Claim Charts for the ’435 Patent
`
`The table below correlates exhibit numbers to the prior art items that Defendants
`
`21
`
`presently assert anticipate and/or render obvious the charted claims of the ’435 Patent.
`
`22
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`23
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`24
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`25
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`26
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`28
`
`Exhibit No.
`H1
`H2
`H3
`H4
`
`H5
`H6
`H7
`
`Base Prior Art Reference / Prior Art System
`
`Irvin
`Myllymaki
`Baiker
`Stutzman
`Carter
`Bodin
`Werling
`
`Defendants assert that the items of prior art identified above in connection with
`
`
`
`67
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`Bell Northern Research, LLC, Exhibit 2011, Page 14 of 20
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`

`

`
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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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`8
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`9
`
`Exhibits H1 to H7 anticipate one or more of the charted claims of the ’435 Patent
`
`and/or render one or more of such claims obvious in view of their own disclosures and
`
`the knowledge, skill, and experience of a person of ordinary skill in the art.
`
`Defendants assert that the claims identified below as anticipated are anticipated under
`
`at least Plaintiff’s apparent interpretation of the claims that Plaintiff appears to have
`
`adopted to support its infringement contentions. Defendants further assert that at least
`
`the combinations of prior art identified below render obvious one or more of the
`
`asserted claims of the ’435 Patent. The identification of combinations below should
`
`not be taken to mean that the combinations are necessarily required to prove invalidity.
`
`10
`
`To the contrary, certain claims may be anticipated under one claim interpretation and
`
`11
`
`obvious under another. Further, if any element should be found to be missing from a
`
`12
`
`particular item of prior art, Defendants assert that that item of prior art could be
`
`13
`
`combined with other items of prior art that disclose that element.
`
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`
`1. Irvin (H1) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under at
`least Plaintiff’s apparent interpretation and its apparent interpretation of the
`claims that Plaintiff appears to rely upon for its infringement contentions. In
`addition, as further explained in Exhibit H1, claims 1, 2, 3, 6, and 8 are also
`rendered obvious by Irvin in combination with:
`
`a. Myllymaki (H2);
`
`b. Baiker (H3);
`
`c. Stutzman (H4); and
`
`d. Bodin (H6).
`
`2. Myllymaki (H2) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under
`at least Plaintiff’s apparent interpretation and its apparent interpretation of
`the claims that Plaintiff appears to rely upon for its infringement contentions.
`In addition, as further explained in Exhibit H2, claims 1, 2, 3, 6, and 8 are
`also rendered obvious by Myllymaki in combination with:
`
`a. Irvin (H1);
`
`b. Baiker (H3);
`
`
`
`68
`
`Bell Northern Research, LLC, Exhibit 2011, Page 15 of 20
`
`

`

`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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`8
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`10
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`11
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`12
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`14
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`
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`c. Stutzman (H4); and
`
`d. Bodin (H6).
`
`3. Baiker (H3) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under at
`least Plaintiff’s apparent interpretation and its apparent interpretation of the
`claims that Plaintiff appears to rely upon for its infringement contentions. In
`addition, as further explained in Exhibit H3, claims 1, 2, 3, 6 and 8 are also
`rendered obvious by Baiker in combination with:
`
`a. Irvin (H1);
`
`b. Myllymaki (H2);
`
`c. Stutzman (H4);
`
`d. Carter (H5); and
`
`e. Werling (H7).
`
`4. Stutzman (H4) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under at
`least Plaintiff’s apparent interpretation and its apparent interpretation of the
`claims that Plaintiff appears to rely upon for its infringement contentions. In
`addition, as further explained in Exhibit H4, claims 1, 2, 3, 6, and 8 are also
`rendered obvious by Stutzman in combination with:
`
`a. Irvin (H1);
`
`b. Myllymaki (H2); and
`
`c. Baiker (H3).
`
`5. Carter (H5) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under at
`least Plaintiff’s apparent interpretation and its apparent interpretation of the
`claims that Plaintiff appears to rely upon for its infringement contentions. In
`addition, as further explained in Exhibit H5, claims 1, 2, 3, 6 and 8 are also
`rendered obvious by Carter in combination with:
`
`a. Baiker (H3).
`
`6. Bodin (H6) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under at
`least Plaintiff’s apparent interpretation and its apparent interpretation of the
`claims that Plaintiff appears to rely upon for its infringement contentions. In
`addition, as further explained in Exhibit H6, claims 1, 2, 3, 6, and 8 are also
`
`69
`
`Bell Northern Research, LLC, Exhibit 2011, Page 16 of 20
`
`

`

`
`
`rendered obvious by Bodin in combination with:
`
`a. Irvin (H1).
`
`7. Werling (H7) anticipates or renders obvious claims 1, 2, 3, 6, and 8 under at
`least Plaintiff’s apparent interpretation and its apparent interpretation of the
`claims that Plaintiff appears to rely upon for its infringement contentions. In
`addition, as further explained in Exhibit H7, claims 1, 2, 3, 6, and 8 are also
`rendered obvious by Werling in combination with:
`
`a. Baiker (H3).
`
`A person of ordinary skill in the art would have been motivated to make the
`
`above-referenced combinations. Each of the references cited in an above-identified
`
`combination relates to aspects of making, using, and/or enabling the control and/or
`
`operation of, mobile telecommunications devices or portable cell phone d