IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FINTIV, INC.
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`v.
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`Plaintiff,
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`APPLE, INC.,
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`Defendant.
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`Civil Action No.: 6:18-cv-372-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF FINTIV, INC.’S INITIAL DISCLOSURE OF ASSERTED CLAIMS,
`ACCUSED INSTRUMENTALITIES, AND INFRINGEMENT CONTENTIONS
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`Apple Ex. 1033, p. 1
`Apple v. Fintiv
`IPR2020-00019
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`Pursuant to the Order Governing Proceedings – Patent Case, Plaintiff Fintiv, Inc.
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`(“Plaintiff”) hereby serves its Initial Disclosure of Asserted Claims, Accused Instrumentalities,
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`and Infringement Contentions on Defendant Apple, Inc. (“Defendant”).
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`I.
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`INITIAL INFRINGEMENT CONTENTIONS
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`A.
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`Identification of Asserted Claims
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`Plaintiff asserts that the Defendant infringes the following claims of U.S. Patent No.
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`8,843,125: claims 11, 13, 14, 16, 17, 18, 20, 21, 22, 23, 24, and 25.
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`The foregoing is based upon Plaintiff’s investigation to date, without the benefit of any
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`discovery from the Defendant and without the benefit of the Court’s claim construction. Plaintiff
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`reserves the right to add, delete, substitute or otherwise amend this list of Asserted Claims based
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`on discovery, the Court’s claim construction, or other circumstances, in a manner consistent with
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`the Federal Rules of Civil Procedures and the Local Rules of the Western District of Texas.
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`B.
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`Identification of Accused Instrumentalities
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`For each Asserted Claim, Plaintiff identifies the following Accused Instrumentalities of
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`which it is aware. For each Accused Instrumentality identified below, Plaintiff’s contentions apply
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`to the Accused Instrumentality and any other similar past, present, or future products, as well as
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`systems incorporating the Accused Instrumentalities or other products with the same or
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`substantially similar features.
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`This identification of Accused Instrumentalities is based on Plaintiff’s investigation to date,
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`without the benefit of any discovery from the Defendant and without the benefit of the Court’s
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`claim construction. Plaintiff reserves the right to add, delete, substitute or otherwise amend this
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`list of Accused Instrumentalities based on discovery, the Court’s claim construction, or other
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`circumstances, in a manner consistent with the Federal Rules of Civil Procedure and the Court’s
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`rule, including the Local Rules of the Western District of Texas.
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`Apple Ex. 1033, p. 2
`Apple v. Fintiv
`IPR2020-00019
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`U.S. Patent No. 8,843,125: Apple iPhone devices (including, at least, iPhone 6, 6 Plus,
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`6s, 6s Plus, SE, 7, 7 Plus, 8, 8 Plus, X, XR, XS, XS Max) and Apple Watch devices (including, at
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`least, Series 1, Series 2, Series 3, and Series 4) implementing the Apple Wallet Application and
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`any other devices that include functionality that is substantially similar to that described in Exhibit
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`A.
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`C.
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`Claim Charts
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`Exhibit A, attached hereto and incorporated by reference, is a claim chart identifying
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`specifically where each element of each asserted claim is found within each Accused
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`Instrumentality.
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`Plaintiff asserts that Defendant has directly infringed and continues to directly infringe the
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`Asserted Claims through Defendant’s Wallet Application as implemented in Apple iPhone devices
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`(including, at least, iPhone 6, 6 Plus, 6s, 6s Plus, SE, 7, 7 Plus, 8, 8 Plus, X, XR, XS, XS Max) and
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`Apple Watch devices (including, at least, Series 1, Series 2, Series 3, and Series 4).
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`Plaintiff further asserts that Defendant has indirectly infringed and continues to indirectly
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`infringe by contributing to and actively inducing infringement of one or more of the claims of the
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`Asserted Patent through Apple Wallet by users and developers. Plaintiff asserts that these third-
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`parties directly infringe at least one or more of the claims of the Asserted Patent through its use of,
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`implementation of, and/or integration with Apple Wallet. Defendant has notice of the Asserted
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`Patent at least as of the filing of the complaint in this matter. The Apple Wallet Application is
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`known by Defendant to be especially made or especially adapted for use to infringe the Asserted
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`Patent, and is not a staple article or commodity of commerce suitable for substantial non-infringing
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`uses. Defendant contributes to the infringement of the Asserted Patent by offering for sale, selling,
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`and importing the infringing devices to third parties, who use the infringing devices and/or practice
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`one or more claims of the Asserted Patent. Defendant actively induces infringement by
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`2
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`Apple Ex. 1033, p. 3
`Apple v. Fintiv
`IPR2020-00019
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`encouraging the use of the infringing devices in ways that infringe one or more claims of the
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`Asserted Patent. Defendant knew or should have known that such encouragement would induce
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`infringement. Such induced and/or contributory infringement has occurred at least since
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`Defendant became aware of the Asserted Patent.
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`As indicated in Exhibit A, Plaintiff asserts that some claim elements are hardware and
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`software limitations. Plaintiff reserves the right to supplement its contentions for those limitations
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`after it receives production of hardware specifications and source code from Defendant.
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`These preliminary
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`infringement contentions are based upon publicly-available
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`information, the limited discovery provided to date by Defendant, and Plaintiff’s investigation to
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`date, without the benefit of any substantial discovery from Defendant and without the benefit of
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`the Court’s claim construction. The Accused Instrumentalities involve confidential, proprietary
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`designs that are not publicly available, and Defendant has not yet provided discovery in this case
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`regarding the structure or operation of any of the Accused Instrumentalities. Discovery is ongoing,
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`and Plaintiff anticipates that the subject matter of these infringement contentions will be the subject
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`of further extensive expert discovery. Plaintiff anticipates that discovery may provide additional
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`evidence of Defendant’s infringement, may lead to the discovery of additional instances of
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`infringement, and may also enable identification of additional claims that are infringed by
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`Defendant. Plaintiff reserves the right to add, delete, substitute, or otherwise amend these
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`contentions based on discovery, the Court’s claim construction, or other circumstances, in a
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`manner consistent with the Federal Rules of Civil Procedure and the Court’s rules, including the
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`Local Rules of the Western District of Texas. Plaintiff reserves the right to further modify and/or
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`supplement these contentions with additional or different theories and/or additional or different
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`evidence.
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`3
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`Apple Ex. 1033, p. 4
`Apple v. Fintiv
`IPR2020-00019
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`D.
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`Literal Infringement or Infringement Under the Doctrine of Equivalents
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`Plaintiff alleges that each element of the Asserted Claims is found literally in the Accused
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`Instrumentalities. To the extent that Defendant alleges that one or more elements of the Asserted
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`Claims are not literally in the Accused Instrumentalities and/or to the extent the Court’s claim
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`construction alters our infringement analysis, Plaintiff alleges that the Accused Instrumentalities
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`infringe under the doctrine of equivalents and reserves the right to amend and/or supplement the
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`information and contentions in the accompanying Exhibit A accordingly.
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`These assertions are based upon Plaintiff’s investigation to date, without the benefit of any
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`discovery from the Defendant and without the benefit of the Court’s claim construction. Plaintiff
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`reserves the right to add, delete, substitute or otherwise amend this list of Asserted Claims based
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`on discovery, the Court’s claim construction, or other circumstances, in a manner consistent with
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`the Federal Rules of Civil Procedures and the Local Rules of the Western District of Texas.
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`E.
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`Priority Dates
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`Each of the Asserted Claims of the ’125 Patent is entitled to a priority date of no later than
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`December 30, 2010. The subject matter described by the Asserted Claims, however, may have
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`been conceived and reduced to practice prior to this priority date. Plaintiff’s investigation is
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`ongoing and Plaintiff reserves the right to assert that the claims are entitled to an invention date
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`that is earlier than the above date.
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`II.
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`PRODUCTION OF DOCUMENTS
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`Plaintiff’s investigation is ongoing and Plaintiff will supplement its document production
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`in the event additional responsive documents are located.
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`Plaintiff reserves the right to amend or supplement these Initial Infringement Contentions
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`and any exhibits attached hereto should further discovery, the Court’s claim construction, or other
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`circumstances so require.
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`4
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`Apple Ex. 1033, p. 5
`Apple v. Fintiv
`IPR2020-00019
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`Dated: May 20, 2019
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`RESPECTFULLY SUBMITTED,
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`By: /s/ J. Mark Mann
`J. Mark Mann (Texas Bar No. 12926150)
`mark@themannfirm.com
`G. Blake Thompson (Texas Bar No. 24042033)
`blake@themannfirm.com
`MANN | TINDEL | THOMPSON
`300 W. Main Street
`Henderson, Texas 75652
`913 Franklin Ave., Suite 201
`Waco, Texas 76701
`Telephone: (903) 657-8540
`Facsimile: (903) 657-6003
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`Andy Tindel (Texas Bar No. 20054500)
`atindel@andytindel.com
`MANN | TINDEL | THOMPSON
`112 E. Line Street, Suite 304
`Tyler, Texas 75702
`Telephone: (903) 596-0900
`Facsimile: (903) 596-0909
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`Craig D. Cherry (Texas Bar No. 24012419)
`ccherry@haleyolson.com
`HALEY & OLSON, P.C.
`100 N. Ritchie Road, Suite 200
`Waco, Texas 76701
`Telephone: (254) 776-3336
`Facsimile: (254) 776-6823
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`Jonathan K. Waldrop (CA Bar No. 297903)
`(Admitted in this District)
`jwaldrop@kasowitz.com
`Darcy L. Jones (CA Bar No. 309474)
`(Admitted in this District)
`djones@kasowitz.com
`Marcus A. Barber (CA Bar No. 307361)
`(Admitted in this District)
`mbarber@kasowitz.com
`John W. Downing (CA Bar No. 252850)
`(Admitted in this District)
`jdowning@kasowitz.com
`Heather S. Kim (CA Bar No. 277686)
`(Admitted in this District)
`hkim@kasowitz.com
`Jack Shaw (CA Bar No. 309382)
`(Admitted in this District)
`jshaw@kasowitz.com
`Gurtej Singh (CA Bar No. 286547)
`(Admitted in this District)
`gsingh@kasowitz.com
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`5
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`Apple Ex. 1033, p. 6
`Apple v. Fintiv
`IPR2020-00019
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`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, California 94065
`Telephone: (650) 453-5170
`Facsimile: (650) 453-5171
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`Daniel C. Miller (NY Bar No. 4232773)
`(pro hac vice)
`KASOWITZ BENSON TORRES LLP
`1399 New York Avenue NW, Suite 201
`Washington, DC 20005
`Telephone: (202) 760-3400
`Facsimile: (202) 760-3401
`Email: dcmiller@kasowitz.com
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`Rodney R. Miller (Texas Bar No. 24070280)
`(Admitted in this District)
`KASOWITZ BENSON TORRES LLP
`1349 West Peachtree Street N.W., Suite 1500
`Atlanta, Georgia 30309
`Telephone: (404) 260-6080
`Facsimile: (404) 260-6081
`Email: rmiller@kasowitz.com
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`Attorneys for Plaintiff
`FINTIV, INC.
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`CERTIFICATE OF SERVICE
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`A true and correct copy of the foregoing instrument was served or delivered electronically
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`to all counsel of record, on this 20th day of May, 2019.
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` /s/ J. Mark Mann
` J. Mark Mann
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`6
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`Apple Ex. 1033, p. 7
`Apple v. Fintiv
`IPR2020-00019
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