`Joanna M. Fuller (SBN 266406)
`jfuller@fr.com
`FISH & RICHARDSON P.C.
`12390 El Camino Real
`San Diego, CA 92130
`Phone: (858) 678-5070 / Fax: (858) 678-5099
`
`Michael McKeon (DC Bar No. 459780; admitted pro hac vice)
`mckeon@fr.com
`Christian Chu (SBN 218336)
`chu@fr.com
`Stephen A. Marshall (DC Bar No. 1012870; admitted pro hac vice)
`smarshall@fr.com
`R. Andrew Schwentker (DC Bar No. 991792; admitted pro hac vice)
`schwentker@fr.com
`FISH & RICHARDSON P.C.
`1000 Maine Avenue SW
`Washington, D.C. 20024
`Phone: (202) 783-5070 / Fax: (202) 783-2331
`
`
`Attorneys for Defendants LG ELECTRONICS INC.,
`LG ELECTRONICS U.S.A., INC., and
`LG ELECTRONICS MOBILE RESEARCH U.S.A., LLC
`
`
`THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`BELL NORTHERN RESEARCH,
`LLC,
`
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC., LG
`ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILE
`RESEARCH U.S.A., LLC,
`
`
`Defendants.
`
`Case No. 3:18-cv-02864-CAB-BLM
`
`DEFENDANTS LG
`ELECTRONICS INC., LG
`ELECTRONICS U.S.A., INC., AND
`LG ELECTRONICS MOBILE
`RESEARCH U.S.A., LLC’S
`AMENDED INVALIDITY
`CONTENTIONS AND
`PRODUCTION OF DOCUMENTS
`PURSUANT TO PATENT LOCAL
`RULES 3.3 AND 3.6(b)
`
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`Bell Northern Research, LLC, Exhibit 2021, Page 1 of 130
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`

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`Pursuant to S.D. Cal. Patent Local Rules 3.3 and 3.6(b), and the Rules and
`
`Orders of this Court, Defendants LG Electronics Inc. (“LGE”), LG Electronics U.S.A.,
`
`Inc. (“LGEUS”), and LG Electronics Mobile Research U.S.A., LLC (“LGMR”)
`
`(collectively, “Defendants” or “LG”) hereby serve their Amended Invalidity
`
`Contentions (“Invalidity Contentions”) on Plaintiff Bell Northern Research, LLC
`
`(“Plaintiff” or “BNR”) in support of LG’s allegations of invalidity of United States
`
`Patent Nos. 7,945,285 (“the ’285 Patent”); 6,549,792 (“the ’792 Patent”); 8,416,862
`
`(“the ’862 Patent”); 7,957,450 (“the ’450 Patent”); 8,792,432 (“the ’432 Patent”); and
`
`7,039,435 (“the ’435 Patent”) (collectively, the “Asserted Patents”).
`
`Pursuant to the parties’ stipulation and the Court’s order, BNR’s allegations of
`
`infringement with respect to United States Patent Nos. 7,990,842 (“the ’842 Patent”)
`
`and 6,941,156 (“the ’156 Patent”) have been dismissed with prejudice, and LG’s
`
`allegations that the ’842 and ’156 Patents are invalid have been dismissed without
`
`prejudice. (See Dkt. No. 73.) Solely for that reason, LG has removed its invalidity
`
`contentions with respect to the ’842 and ’156 Patents.
`
`I.
`
`INTRODUCTION AND RESERVATION OF RIGHTS
`
`These Invalidity Contentions are based on information currently available to
`
`Defendants. Defendants’ investigation and analysis of prior art is ongoing, and they
`
`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.
`
`Defendants’ Invalidity Contentions do not constitute an admission that any
`
`current, past, or future version of the accused products infringe the Asserted Patents
`
`either literally or under the doctrine of equivalents. In many instances, Defendants
`
`have relied on the broad claim constructions of the Asserted Claims that Plaintiff has
`
`(1) implicitly adopted in its Disclosure of Asserted Claims and Infringement
`
`Contentions (“Infringement Contentions”) and amendments or supplements thereto, to
`
`the extent any construction can be inferred from Plaintiff’s Infringement Contentions,
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`Bell Northern Research, LLC, Exhibit 2021, Page 2 of 130
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`

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`and/or (2) explicitly adopted in its claim constructions disclosed pursuant to Patent
`
`Local Rules 4.1 and 4.2. Such reliance should not be taken to mean that Defendants
`
`understand, or are adopting or agreeing with, Plaintiff’s apparent constructions.
`
`Defendants expressly do not do so and reserve their right to contest them.
`
`Defendants’ Invalidity Contentions are made in addition to and/or in the
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`alternative to Defendants’ non-infringement positions, and should not be interpreted to
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`rely 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, Plaintiff’s validity contentions, and/or
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`information obtained during remaining discovery. Where Defendants cite and rely on
`
`a U.S. patent, Defendants necessarily cite, rely upon, and incorporate by reference as
`
`additional prior art each and every foreign priority patent (and the applications for
`
`those foreign priority patents) cited in the identified U.S. patent.
`
`In these Invalidity Contentions (in either this cover pleading or in the Invalidity
`
`Claim Charts attached as exhibits hereto), reference to “one of ordinary skill,” “skilled
`
`artisan,” or any other similar term refers to a person of ordinary skill in the art at the
`
`time of the alleged invention, as laid out in 35 U.S.C. § 103, for whichever particular
`
`Asserted Patent is being discussed.
`
`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 Patent Local Rule 3.6, the Federal Rules of Civil Procedure, and the
`
`Court’s rules. Because Defendants’ investigation regarding the invalidity of the
`
`Asserted Patents is ongoing, certain defenses, including, for example, non-patentable
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`Bell Northern Research, LLC, Exhibit 2021, Page 3 of 130
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`subject matter under 35 U.S.C. §101,1 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
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`estoppel, etc. may only become apparent as additional information becomes available.
`
`Defendants have not yet had the opportunity to conduct sufficient fact discovery
`
`regarding their unenforceability defenses. To the extent that during discovery any
`
`evidence is produced that supports a contention that any Asserted Patent is
`
`unenforceable due to inequitable conduct during prosecution or for any other reason,
`
`Defendants reserve all rights to amend and/or supplement their Invalidity Contentions
`
`to include such unenforceability contentions.2
`
`In particular, and without limitation, Defendants reserve the right to identify
`
`other art or to supplement their disclosures or contentions for at least the following
`
`reasons:
`
`(i) Defendants’ position on the invalidity of particular claims will depend on
`
`any claim construction from the Court, any findings as to the priority date of the
`
`Asserted Claims, any findings as to the level of skill attributable to a person of
`
`ordinary skill in the art, and/or positions that Plaintiff or expert witness(es) may take
`
`concerning claim construction, infringement, and/or invalidity.
`
`(ii) Defendants have not yet completed discovery from Plaintiff. Depositions
`
`of the persons involved in the drafting and prosecution of the Asserted Patents, and of
`
`the named inventors, for instance, will likely reveal information that affects the
`
`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
`
`
`1 Defendants note that Patent Local Rule 3.3 does not require the disclosure of
`contentions under 35 U.S.C. § 101 in a party’s Invalidity Contentions.
`2 Defendants note that Patent Local Rule 3.3 does not require the disclosure of
`unenforceability contentions in a party’s Invalidity Contentions.
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`Bell Northern Research, LLC, Exhibit 2021, Page 4 of 130
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`contentions herein.
`
`(iv)
`
`If Plaintiff 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.
`
`Defendants’ claim charts cite to particular teachings and disclosures of the prior
`
`art as applied to features of the Asserted Claims. However, persons having ordinary
`
`skill in the art generally view an item of prior art in the context of other publications,
`
`literature, products, and their own experience and understanding. As such, the cited
`
`portions in Defendants’ claim charts are exemplary only. Where Defendants cite to a
`
`particular figure in a reference, the citation should be understood to encompass the
`
`caption and description of the figure and any text relating to the figure. Similarly,
`
`where Defendants cite to particular text referring to a figure, the citation should be
`
`understood to include the figure and caption as well. Furthermore, Defendants reserve
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`the right to rely on uncited portions of the prior art references and on other publications
`
`and expert testimony as aids in understanding and interpreting the cited portions, as
`
`providing context thereto, as additional evidence that the prior art discloses a claim
`
`limitation or the invention as a whole, as evidence of the state of the art at a particular
`
`time, and/or as evidence of the obviousness factor of contemporaneous development
`
`by others. Defendants further reserve the right to rely on uncited portions of the prior
`
`art references, other publications, and testimony, including expert testimony, to
`
`establish bases for combination of prior art references that render the Asserted Claims
`
`obvious. Defendants also reserve the right to rely upon any documentary or
`
`testimonial evidence of the existence of any systems that embodied or practiced the
`
`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
`
`
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`Bell Northern Research, LLC, Exhibit 2021, Page 5 of 130
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`

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`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
`
`Asserted 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 the alternative to Defendants’ anticipation contentions and are not to be construed to
`
`suggest that any reference included in any combination is not by itself anticipatory.
`
`Prior art patents or publications included in these Invalidity Contentions may be
`
`related (e.g., as a divisional, continuation, continuation-in-part, parent, child, or other
`
`relation or claim of priority) to earlier or later filed patents or publications, may have
`
`counterparts filed in other jurisdictions, or may incorporate (or be incorporated by)
`
`other patents or publications by reference. The listed patents or publications are
`
`intended to be representative of these other patents or publications, to the extent they
`
`exist. On information and belief, each listed publication or invention became prior art
`
`at least as early as the dates given.
`
`Moreover, as certain prior art systems and inventions are described in multiple
`
`related patents or publications with similar or identical specifications or disclosures, to
`
`the extent Defendants have identified a citation in one reference, Defendants reserve
`
`the right to rely on parallel or similar citations in related patents or publications.
`
`Persons of ordinary skill in the art would read a prior art reference and understand
`
`prior art inventions as a whole and in the context of other publications, literature, and
`
`technologies. Therefore, to understand and interpret any specific statement or
`
`disclosure of a potential prior art reference or invention, such persons would rely on
`
`other information within the reference or invention, along with other publications and
`
`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.
`
`
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`Bell Northern Research, LLC, Exhibit 2021, Page 6 of 130
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`

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`
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`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 Patents or any related patent, including, without limitation, any parties’
`
`invalidity contentions (including all amendments/supplementations), and expert reports
`
`(including all amendments/supplementations), and any references identified in any
`
`reexamination request or proceeding relating to any of the Asserted Patents.
`
`Defendants may further rely on any prior art references or documents relating to the
`
`validity of the Asserted Patents, ever known or identified by or to Plaintiff, the named
`
`inventors of the Asserted Patents, assignees of the Asserted Patents, or any person
`
`substantively involved in the prosecution of the Asserted Patents.
`
`Defendants dispute that any of the Asserted Claims are entitled to the earlier
`
`priority dates asserted by Plaintiff. Defendants reserve the right to amend these
`
`Invalidity Contentions after any claim construction ruling or after discovery reveals
`
`priority dates inconsistent with those alleged by Plaintiff.
`
`Plaintiff has provided insufficient contentions regarding its allegations of
`
`infringement under the doctrine of equivalents. Plaintiff has not sufficiently provided
`
`any contentions that identify the basis for Plaintiff’s position regarding each limitation
`
`allegedly being infringed under the doctrine of equivalents and its alleged equivalent
`
`element in the accused products. Should leave to amend be granted to Plaintiff to add
`
`to its contentions any specific allegations of infringement under the doctrine of
`
`equivalents, Defendants reserve the right to amend or supplement these Invalidity
`
`Contentions as appropriate.
`
`II.
`
`PATENT LOCAL RULE 3.3(A) - IDENTIFICATION OF PRIOR ART
`
`Pursuant to Patent L.R. 3.3, and subject to Defendants’ reservation of rights,
`
`Defendants identify at least the following prior art now known to Defendants to
`
`anticipate and/or render obvious the Asserted Claims of the ’285 Patent, the ’792
`
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`Bell Northern Research, LLC, Exhibit 2021, Page 7 of 130
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`

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`
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`Patent, the ’862 Patent, the ’450 Patent, the ’432 Patent, and the ’435 Patent. As
`
`explained in their reservation of rights, Defendants have, in certain instances, applied
`
`the prior art in accordance with Plaintiff’s improper assertions of infringement and
`
`improper application of the Asserted Claims. Defendants do not agree with Plaintiff’s
`
`application, however, and deny infringement.
`
`
`
`Prior Art References for the ’285 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 Asserted Claims of
`
`the ’285 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
`
`’285 Patent.
`
`
`
`Patent or Patent
`Application No.
`International Application
`Publication No.
`WO99/43136 (“Rydbeck”)
`U.S. Patent No. 5,978,689
`(“Tuoriniemi”)
`U.S. Patent No. 6,871,048
`(“Takagaki”)
`U.S. Patent No. 6,430,530
`(“Ng”)
`U.S. Patent No. 6,006,115
`(“Wingate”)
`U.K. Patent Publication No.
`GB2290437 (“Maeda”)
`Japanese Patent Publication
`No. JPH11168534
`(“Yoshino”)
`U.K. Patent Publication No.
`GB2308775 (“Futami”)
`U.S Patent No. 6,192,340
`(“Abecassis”)
`U.S. Patent No. 5,724,091
`
`
`
`Country of Origin
`
`WIPO
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.K.
`
`Japan
`
`U.K.
`
`U.S.
`
`U.S.
`
`8
`
`Date of Issue
`(if Issued Patent)
`
`
`November 2, 1999
`
`March 22, 2005
`
`August 6, 2002
`
`December 21, 1999
`
`April 15, 1998
`
`
`
`
`
`February 20, 2001
`
`March 3, 1998
`
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`

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`
`
`(“Freeman”)
`U.S. Patent No. 7,123,936
`(“Rydbeck ’936”)
`International Application
`Publication No. WO
`97/20297 (“Enomoto”)
`U.S. Patent Publication No.
`2005/0054379 (“Cao”)3
`
`
`
`U.S.
`
`WIPO
`
`U.S.
`
`October 17, 2006
`
`
`
`
`
`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
`
`evidence to support a motivation to combine or modify other prior art. Defendants
`
`
`3 In the event the claims of the ’285 patent (including the terms “RF telephone
`handset” and “RF unit connected to a network”) are construed or applied to include
`devices beyond cordless telephones, the earliest possible priority date for the ’285
`patent would be the application filing date of February 16, 2010. See, e.g., Prosecution
`History of U.S. Patent No. 7,945,285, Feb. 16, 2010 Transmittal of New Application,
`at 16-17 (adding claims requiring, inter alia, an “RF telephone handset” and an “RF
`unit connected to a network”); id., Oct. 21, 2010 Amendment, at 2-4 (amending the
`specification to add language that generally parrots the language of the claims). While
`LG maintains that, even as amended, the disclosures and claims in the ’285 patent are
`directed exclusively to cordless telephones, BNR appears to contend (LG believes
`incorrectly) that the claims (which appeared for the first time in 2010) are broader than
`cordless telephones. Even BNR cannot dispute, however, that prior to February 16,
`2010, the only disclosures and claims in the related parent applications were directed
`to cordless telephones. Compare id. with Prosecution History of U.S. Patent No.
`7,945,284 (distinguishing the purported invention from other devices such as cellular
`phones) and Prosecution History of U.S. Patent No. 7,702,363 (same) and Prosecution
`History of Canadian Patent No. 2325244 (same) and Prosecution History of European
`Patent No. 1104150 (same). Therefore, to the extent any disclosures or claims in the
`’285 patent are construed or applied to be broader than cordless telephones, it must
`constitute new matter added in 2010 or later, and the ’285 patent would not be entitled
`to claim priority to any of the earlier dates of its related parent applications. In that
`case, Cao is prior art to the ’285 patent.
`
`
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`Bell Northern Research, LLC, Exhibit 2021, Page 9 of 130
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`
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`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 Patent or Patent
`Application
`Japanese Patent Publication
`No. JPH07170208 (“Ono”)
`Japanese Patent Publication
`No. JPH10276250
`(“Yamaura”)
`US Patent No. 4,467,140
`(“Fathauer”)
`U.S. Patent No. 6,332,175
`(“Birrell”)
`U.S. Patent No. 6,035,212
`(“Rotosker”)
`European Patent Publication
`No. EP0843252 (“Tran”)
`Korean Patent Publication No.
`KR19990078686 (“Min”)
`U.S. Patent No. 5,694,467
`(“Young”)
`U.S. Patent No. 5,870,678
`(“Matsushiro”)
`U.S. Patent No. 6,343,217
`(“Borland”)
`International Patent
`Publication No.
`WO9851124A1 (“Berger”)
`U.K. Patent Publication No.
`GB2277422A (“Noar”)
`
`
`
`Country of Origin
`
`Japan
`
`Japan
`
`U.S.
`
`U.S.
`
`U.S.
`
`Europe
`
`Korea
`
`U.S.
`
`U.S.
`
`U.S.
`
`WIPO
`
`U.K.
`
`Date of Issue
`(if Issued Patent)
`
`
`
`
`August 21, 1984
`
`December 18, 2001
`
`March 7, 2000
`
`
`
`
`
`December 12, 1997
`
`February 9, 1999
`
`January 29, 2002
`
`
`
`
`
`
`
`Prior Art References for the ’792 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 Asserted Claims of
`
`
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`10
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`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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`27
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`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 10 of 130
`
`

`

`
`
`the ’792 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
`
`’792 Patent.
`Patent or Patent
`Application No.
`U.S. Patent No. 5,742,666
`(“Alpert”)
`U.S. Patent No. 6,956,564
`(“Williams”)
`U.S. Patent No. 5,745,559
`(“Weir”)
`U.S. Patent No. 5,680,441
`(“Gallo”)
`U.S. Patent No. 5,703,931
`(“Martensson”)
`U.K. Patent Publication No.
`2329300 (“Hess”)
`European Patent Publication
`No. EP0812119 (“Alanara”)
`European Patent Publication
`No. EP0833537 (“Sato”)
`French Patent Publication
`No. 2,556,538 (“Le Hir”)
`Japanese Patent Publication
`No. H9-2661299 (“Kamijo”)
`
`
`
`Country of Origin
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.K.
`
`Europe
`
`Europe
`
`France
`
`Japan
`
`Date of Issue
`(if Issued Patent)
`April 21, 1998
`
`October 18, 2005
`
`April 28, 1998
`
`October 21, 1997
`
`December 30, 1997
`
`
`
`
`
`
`
`
`
`
`
`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
`
`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.
`
`
`
`11
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
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`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 11 of 130
`
`

`

`Date of Issue
`(if Issued Patent)
`October 17, 2000
`
`
`
`
`
`July 17, 1990
`
`December 14, 1999
`
`
`
`
`
`February 5, 1980
`
`November 6, 1990
`
`
`
`
`
`August 30, 1983
`
`
`
`March 12, 1985
`
`September 15, 1998
`
`
`
`Country of Origin
`
`U.S.
`
`U.S.
`
`Japan
`
`U.S.
`
`U.S.
`
`WIPO
`
`Europe
`
`U.S.
`
`U.S.
`
`Japan
`
`Japan
`
`U.S.
`
`Europe
`
`U.S.
`
`U.S.
`
`Canada
`
`12
`
`
`Additional Patent or
`Patent Application
`U.S. Patent No. 6,133,830
`(“D’Angelo”)
`U.S. Patent Publication No.
`2006/0279542 (“Flack”)
`Japanese Patent Publication
`No. JPH10174169
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`U.S. Patent No. 4,942,605
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`U.S. Patent No. 6,002,937
`(“Young”)
`International Application
`Publication No. WO9512177
`(“Plesko”)
`European Patent Publication
`No. EP0867850
`(“Andrews”)
`U.S. Patent No. 4,187,497
`(“Howell”)
`U.S. Patent No. 4,969,180
`(“Watterson”)
`Japanese Patent Publication
`No. JPH06291827
`(“Nishimura”)
`Japanese Patent Publication
`No. JPH 10154955
`(“Utsuki”)
`U.S. Patent No. 4,401,847
`(“Schneider”)
`European Patent Publication
`No. EP0833537 (“Sato”)
`U.S. Patent No. 4,504,701
`(“Luchessi”)
`U.S. Patent No. 5,809,123
`(“Reynolds”)
`Canadian Patent Publication
`No. CA2301159A1
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`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
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`22
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`23
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`24
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`25
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`26
`
`27
`
`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 12 of 130
`
`

`

`
`
`(“Koshima”)
`Japanese Patent Publication
`No. JPH11118506A
`(“Nakamura”)
`
`
`
`Japan
`
`
`
`
`
`Prior Art References for the ’862 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 Asserted Claims of
`
`the ’862 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
`
`’862 Patent.
`
`
`Patent or Patent
`Application No.
`U.S. Patent No. 7,236,748
`(“Li 748”)
`U.S. Patent No. 7,492,829
`(“Lin 829”)
`U.S. Patent Pub. No.
`2008/0108310 (“Tong”)
`U.S. Patent No. 7,280,625
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`U.S. Patent No. 7,570,696
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`U.S. Patent No. 8,320,301
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`U.S. Patent No. 7,710,925
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`U.S. Patent No. 7,289,770
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`U.S. Patent No. 7,362,822
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`U.S. Patent No. 7,312,750
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`
`
`
`
`
`Country of Origin
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`13
`
`Date of Issue
`(if Issued Patent)
`June 26, 2007
`
`February 17, 2009
`
`
`
`October 9, 2007
`
`August 4, 2009
`
`Nov. 27, 2012
`
`May 4, 2010
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`Oct. 30, 2007
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`April 22, 2008
`
`December 25, 2007
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 13 of 130
`
`

`

`Date of Publication
`1999
`
`Author/Publisher
`IEEE
`
`2004
`
`Fitton et al
`
`March 2004
`
`Roh
`
`October 1991
`
`Yang
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`14
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`Title of Publication
`IEEE Std 802.11a-1999,
`Part 11: Wireless LAN
`Medium Access Control
`(MAC) and Physical Layer
`(PHY) specifications: High-
`speed Physical Layer in the
`5 GHZ Band, IEEE-SA
`Standards Board (“IEEE
`802.11a-1999”)
`RECONFIGURABLE
`ANTENNA PROCESSING
`WITH MATRIX
`DECOMPOSITION USING
`FPGA BASED
`APPLICATION SPECIFIC
`INTEGRATED
`PROCESSORS to M.P.,
`Proceeding of the SDR 04
`Technical Conference and
`Product Exposition
`(“Fitton”)
`June Chul Roh and Bhaskar
`D. Rao, An Efficient
`Feedback Method for MIMO
`Systems with Slowly Time-
`Varying Channels, Roh and
`Rao, 2004 IEEE Wireless
`Communications and
`Networking Conference
`(IEEE Cat. No.04TH8733)
`(“Roh”)
`B. Yang and J. F. Bohme,
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`Of The Singular Value
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`
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`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 14 of 130
`
`

`

`
`
`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
`
`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 Patent or
`Patent Application
`U.S. Patent Application No.
`2004/087308 A1
`U.S. Patent Application No.
`2004/190636 A1
`U.S. Patent Application No.
`2004/203473 A1
`U.S. Patent Application No.
`2004/042427 A1
`U.S. Patent Application No.
`2004/219899 A1
`U.S. Patent Application No.
`2004/081131 A1
`U.S. Patent Application No.
`2004/165684 A1
`U.S. Patent Application No.
`2004/120411 A1
`U.S. Patent Application No.
`2003/181170 A1
`U.S. Patent Application No.
`2004/047426 A1
`European Patent Application
`No. EP1359684 A1
`U.S. Patent Application No.
`2004/100928 A1
`DE10254384 A1
`
`
`
`Country of Origin
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`Europe
`
`U.S.
`
`Germany
`
`15
`
`Date of Issue
`(if Issued Patent)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 15 of 130
`
`

`

`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`WIPO
`U.S.
`U.S.
`
`U.S.
`
`U.S.
`U.S.
`
`U.S.
`
`U.S.
`
`
`
`
`
`
`
`
`
`
`March 9, 2010
`
`
`
`
`July 30, 1996
`
`
`
`
`
`
`Date of Publication
`March 20, 2004
`
`Author/Publisher
`M.A. Sadrabadi
`
`2002
`
`2003
`
`A. Agrawal
`
`Love D. J.
`
`June 2003
`
`Matthias Stege
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`January 2004
`
`Defeng Huang
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`16
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`2004/085939 A1
`U.S. Patent Application No.
`2003/186650 A1
`U.S. Patent Application No.
`2004/209579 A1
`U.S. Patent Application No.
`2003/031264 A1
`WO2004008671 A1
`U.S. Patent No. 7,676,007
`U.S. Patent Application No.
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`U.S. Patent Application No.
`2006/0193298
`U.S. Patent No. 5,541,607
`U.S. Patent Application No.
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`U.S. Patent Application No.
`2003/0139196
`U.S. Patent Application No.
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`
`Additional Publication
`A New Method of Channel
`Feedback Quantization
`for High Data Rate MIMO
`Systems
`Transmit Optimization for
`Frequency Division Duplex
`Multi-Antenna Systems
`Limited Feedback Precoding
`for Spatial Multiplexing
`Systems Using Linear
`Receivers
`Multistratum-Permutation
`Codes for MIMO
`Communication
`Symbol-Based Space
`Diversity for Coded OFDM
`Systems
`
`
`
`
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
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`19
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`20
`
`21
`
`22
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`23
`
`24
`
`25
`
`26
`
`27
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`28
`
`Bell Northern Research, LLC, Exhibit 2021, Page 16 of 130
`
`

`

`1980
`
`1993
`
`1873
`
`1874
`
`1875
`
`1889
`
`Gilbert Strang
`
`G.W. Stewart
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`Eugenio Beltrami
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`Camille Jordan
`
`Camille Jordan
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`James Joseph Sylvester
`
`1889
`
`James Joseph Sylvester
`
`1889
`
`James Joseph Sylvester
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`1907
`
`Erhard Schmidt
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`17
`
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`Applications, Second
`Edition
`On the Early History of the
`Singular Value
`Decomposition
`Sulle Funzioni bilineari,
`Journal of Mathematics for
`the Use of the Students of
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`Memoire sur les forms
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`Essai sur la geometrie a n
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`A new proof that a general
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`linear function of squares)
`by means of a real
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`Messenger of Mathematics
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`bilinear quantic of the nth
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`1 2 3 4 5 6 7 8 9
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`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
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`28
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`Bell Northern Research, LLC, Exhibit 2021, Page 17 of 130
`
`

`

`1912
`
`Hermann Weyl
`
`
`
`Das asymptotische
`Verteilungsgesetz der
`Eigenwert linearer partieller
`Differentialgleichungen
`(miteiner Anwendung aufder
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`Hohlraumstrahlung), Math.
`Ann.
`
`
`
`
`
`Prior Art References for the ’450 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 Asserted Claims of
`
`the ’450 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
`
`’450 Patent.
`
`
`Patent or Patent
`Application No.
`U.S. Patent No. 7,236,748
`(“Li 748”)
`U.S. Patent No. 7,742,546
`(“Ketchum 546”)
`U.S. Patent No. 7,450,532
`(“Chae”)
`International Pub. No. WO
`2004/086712 A2 (“Walton
`712”)
`International Pub. No. WO
`2004/038