IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Case No. 2:19-cv-00025-JRG
`
`Jury Trial Requested
`
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`PLAINTIFF REMBRANDT WIRELESS TECHNOLOGIES, LP’S
`DISCLOSURES PURSUANT TO PATENT RULES 3-1 AND 3-2
`
`Pursuant to Local Patent Rules 3-1 and 3-2, Plaintiff Rembrandt Wireless Technologies,
`
`LP (“Rembrandt”) hereby provides its Disclosure of Asserted Claims and Infringement
`
`Contentions and accompanying Document Production to Defendant Apple Inc. Rembrandt
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`contends that all Apple products that practice Bluetooth Version 2.0 + EDR, Version 2.1 + EDR,
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`Version 3.0 + HS, Version 4.0 + LE, Version 4.1, Version 4.2, Version 5, or Version 5.1
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`(“Defendant’s Bluetooth EDR Products” or “Apple’s Bluetooth EDR Products”) fall within the
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`scope of the asserted claims of United States Patent No. 8,023,580 (“the ’580 Patent”) and the
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`asserted claim of United States Patent No. 8,457,228 (“the ’228 Patent”) as made, used, sold,
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`offered for sale and/or imported by Defendant and/or Defendant’s customers.
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`Rembrandt’s statements concerning Defendant’s Bluetooth EDR Products are based on
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`publicly available materials which identify Defendant’s products that practice Bluetooth Version
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`2.0 + EDR, Version 2.1 + EDR, Version 3.0 + HS, Version 4.0 + LE, Version 4.1, Version 4.2,
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`1
`
`Apple Exhibit 1018
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00033
`Page 00001
`
`
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Case No. 2:19-cv-00025-JRG
`
`Jury Trial Requested
`
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`§
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`PLAINTIFF REMBRANDT WIRELESS TECHNOLOGIES, LP’S
`DISCLOSURES PURSUANT TO PATENT RULES 3-1 AND 3-2
`
`Pursuant to Local Patent Rules 3-1 and 3-2, Plaintiff Rembrandt Wireless Technologies,
`
`LP (“Rembrandt”) hereby provides its Disclosure of Asserted Claims and Infringement
`
`Contentions and accompanying Document Production to Defendant Apple Inc. Rembrandt
`
`contends that all Apple products that practice Bluetooth Version 2.0 + EDR, Version 2.1 + EDR,
`
`Version 3.0 + HS, Version 4.0 + LE, Version 4.1, Version 4.2, Version 5, or Version 5.1
`
`(“Defendant’s Bluetooth EDR Products” or “Apple’s Bluetooth EDR Products”) fall within the
`
`scope of the asserted claims of United States Patent No. 8,023,580 (“the ’580 Patent”) and the
`
`asserted claim of United States Patent No. 8,457,228 (“the ’228 Patent”) as made, used, sold,
`
`offered for sale and/or imported by Defendant and/or Defendant’s customers.
`
`Rembrandt’s statements concerning Defendant’s Bluetooth EDR Products are based on
`
`publicly available materials which identify Defendant’s products that practice Bluetooth Version
`
`2.0 + EDR, Version 2.1 + EDR, Version 3.0 + HS, Version 4.0 + LE, Version 4.1, Version 4.2,
`
`1
`
`Apple Exhibit 1018
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00033
`Page 00001
`
`
`
`Version 5, and/or Version 5.1. At this time, Rembrandt has had no discovery to date from
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`Defendant. Rembrandt expects that additional ones of Defendant’s Bluetooth EDR Products will
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`be identified during discovery. Accordingly, Rembrandt reserves the right to supplement or alter
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`its disclosure herein based on additional information obtained through formal discovery or other
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`means concerning Defendant’s products.
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`I.
`
`P.R. 3-1(a) - Asserted Claims
`
`Pursuant to P.R. 3-1(a), and based on the information presently available to it, Rembrandt
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`contends that Apple currently infringes and/or has infringed (directly and/or indirectly) the
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`following Asserted Claims:
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` claims 2 and 59 of the ’580 Patent; and
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` claim 21 of the ’228 Patent.
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`Rembrandt expressly reserves the right to augment and supplement its identification of Asserted
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`Claims based on additional information obtained through discovery.
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`II.
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`P.R. 3-1(b) - Accused Products
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` Pursuant to P.R. 3-1(b), and based on information presently available to it, Rembrandt
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`asserts that the Apple Bluetooth EDR Products listed in Exhibit A are marketed and sold as
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`interoperable in accordance with Bluetooth Version 2.0 + EDR, Version 2.1 + EDR, Version 3.0
`
`+ HS, Version 4.0 + LE, Version 4.1, Version 4.2, Version 5, and/or Version 5.1, and as a result
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`satisfy each of the elements of the Asserted Claims. Moreover, Apple sells or otherwise transfers
`
`its Accused Bluetooth EDR Products to customers, actively encouraging them to use those
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`Accused Bluetooth EDR Products in a manner which induces and contributes to the infringement
`
`of the Asserted Claims.
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`2
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`IPR2020-00033 Page 00002
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`
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`Apple infringes the Asserted Claims as specified in the charts identified in section III,
`
`below. Rembrandt’s identification of accused products is merely exemplary, and Apple’s
`
`forthcoming products with the same or similar functionality as that identified in the attached charts
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`also infringe the Asserted Claims. Rembrandt expressly reserves the right to augment and
`
`supplement its identification of Asserted Claims and infringing products based on additional
`
`information obtained through formal discovery and as additional products are introduced.
`
`III.
`
`P.R. 3-1(c) - Claim Charts
`
`Pursuant to P.R. 3-1(c), Rembrandt’s detailed infringement assertions with respect to the
`
`Asserted Claims are contained in the charts labeled Exhibits B and C.
`
`IV. P.R. 3-1(d) - Doctrine of Equivalents
`
`Pursuant to P.R. 3-1(d), Rembrandt asserts that the claims are literally infringed as reflected
`
`in attached Exhibit B and C. Currently, Rembrandt knows of no specific limitations of the asserted
`
`claims where infringement depends on the doctrine of equivalents. To the extent Apple
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`successfully argues that any of the limitations are not literally present in the Accused Bluetooth
`
`EDR Products, the charts identify illustrative support for where the equivalent feature is found
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`under the doctrine of equivalents. Rembrandt expressly reserves the right to modify, augment,
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`and/or supplement its assertion of infringement under the doctrine of equivalents of any elements
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`of any of the asserted claims after discovery from Apple and/or third parties and/or after this Court
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`has set forth its construction of the asserted claims.
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`V.
`
`P.R. 3-1(e) - Priority Claim to an Earlier Application
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`Pursuant to P.R. 3-1(e), each of the Asserted Claims is entitled to a filing date of December
`
`5, 1997 because each is entitled to claim priority to U.S. Provisional Patent Application serial no.
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`60/067,562.
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`3
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`IPR2020-00033 Page 00003
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`VI. P.R. 3-1(f) - Own Products That Practice Inventions
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`Pursuant to P.R. 3-1(f), Rembrandt does not currently intend to rely on the assertion that
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`its apparatus, product, device, process, method, act, or other instrumentality practices any of the
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`claimed inventions.
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`VII. P.R. 3-2(a) – Documents Evidencing Disclosures, Sales or Offers to Sell
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`Pursuant to P.R. 3-2(a), Rembrandt is unaware of any documents that evidence any
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`discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to
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`sell, the claimed invention prior to the date of application for the patent in suit.
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`VIII. P.R. 3-2(b) – Documents Evidencing Conception, Reduction to Practice,
`Design and Development
`
`
`Pursuant to P.R. 3-2(b), the following documents evidence the conception, reduction to
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`practice, design, and development of each claimed invention and were created on or before the
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`December 5, 1997 priority date of the patents-in-suit: RIP00004310 – 4343, RIP00007848 – 7854,
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`and RIP00013197 – 13207.
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`P.R. 3-2(c) – File Histories of Patents-In-Suit
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`IX.
`
`Pursuant to P.R. 3-2(c), the following documents are copies of the file histories of the
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`patents-in-suit: RIP00000001 – 4309.
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`The following documents include reexamination proceedings and IPRs involving the ’580
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`and ’228 Patents: REM_USPTO_00000001 – 28863.
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`4
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`IPR2020-00033 Page 00004
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`
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`Date: April 26, 2019
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`Respectfully submitted,
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`
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`
` /s/ Eric J. Enger
`Michael F. Heim (Texas Bar No. 09380923)
`mheim@hpcllp.com
`Eric Enger (Texas Bar No. 24045833)
`eenger@hpcllp.com
`Christopher First (Texas Bar No. 24095112)
`cfirst@hpcllp.com
`Blaine Larson (Texas Bar No. 24083360)
`blarson@hpcllp.com
`HEIM, PAYNE & CHORUSH, LLP
`1111 Bagby St., Suite 2100
`Houston, Texas 77002
`Telephone: (713) 221-2000
`Facsimile: (713) 221-2021
`
`Demetrios Anaipakos (Texas Bar No. 00793258)
`danaipakos@azalaw.com
`Amir Alavi (Texas Bar No. 00793239)
`aalavi@azalaw.com
`Alisa Lipski (Texas Bar No. 24041345)
`alipski@azalaw.com
`Kyril Talanov (Texas Bar No. 24075139)
`ktalanov@azalaw.com
`AHMAD, ZAVITSANOS, ANAIPAKOS,
`ALAVI & MENSING, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`Telephone: 713-655-1101
`Facsimile: 713-655-0062
`
`T. John Ward, Jr.
`Texas Bar No. 00794818
`jw@wsfirm.com
`WARD & SMITH LAW FIRM
`1127 Judson Road, Suite 220
`Longview, TX 75601
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`
`ATTORNEYS FOR REMBRANDT WIRELESS
`TECHNOLOGIES LP
`
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`5
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`IPR2020-00033 Page 00005
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record are being served with a copy
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`of this document by e-mail on April 26, 2019.
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`/s/ Eric J. Enger
`Eric J. Enger
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`IPR2020-00033 Page 00006
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