Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 1 of 179 PageID #:
` 5967
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`
`UNILOC 2017 LLC and UNILOC USA, INC.
`
`
`
`Plaintiffs,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`
`
`Case No. 2:18-cv-00502-JRG-RSP
`
`JURY TRIAL DEMANDED
`
`DEFENDANT GOOGLE LLC PATENT RULE 3-3
`INVALIDITY CONTENTIONS
`
`Uniloc Ex. 2003
`Google v. Uniloc
`IPR2020-00115
`p. 0
`
`

`

`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 2 of 179 PageID #:
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`Pursuant to Local Patent Rules (“P.R.”) 3-3 and 3-4, Defendant Google LLC (“Google” or
`
`“Defendant”) hereby serves its Invalidity Contentions and accompanying document production on
`
`Plaintiffs Uniloc 2017 LLC and Uniloc USA, Inc. (collectively, “Uniloc” or “Plaintiffs”).
`
`Google’s discovery and investigation in connection with this lawsuit are continuing, and thus these
`
`disclosures are based on information reasonably obtained to date in view of the set of claims
`
`currently asserted by Uniloc. Google reserves the right to supplement or modify these contentions,
`
`consistent with any Court order, Federal Rules, and/or Local Rules, including, but not limited to,
`
`P.R. 3-6.
`
`I.
`
`INTRODUCTION
`
`In this case, and based on Uniloc’s P.R. 3-1 Infringement Contentions, served on May 6,
`
`2019, Uniloc has asserted only claim 1 of U.S. Patent No. 8,407,609 (“’609 Patent” or “Patent-In-
`
`Suit”). Claim 1 of the Patent-In-Suit is referred to herein as the “asserted claim.”
`
`Defendant’s Invalidity Contentions are based in whole or in part on its present
`
`understanding of Uniloc’s contentions concerning the scope and construction of the asserted claim,
`
`including from Uniloc’s Infringement Contentions, and/or Defendant’s own understanding of the
`
`scope and construction of those claims. Uniloc’s Infringement Contentions are deficient at least
`
`insofar as they fail to articulate how any single accused product, system, or application (or its use)
`
`infringes each and every element of the asserted claim, and Defendant reserves the right to amend
`
`its Invalidity Contentions in response to any permissible supplementation or amendment of
`
`Uniloc’s Infringement Contentions. Defendant reserves the right to interpret these terms
`
`differently over the course of the litigation, and does not adopt any interpretations impliedly or
`
`expressly put forth in these contentions. Accordingly, Defendant’s Invalidity Contentions,
`
`including the attached invalidity claim charts, may reflect alternative positions as to claim
`
`1
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`

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`construction and scope. In particular, Defendant’s Invalidity Contentions may include contentions
`
`of invalidity solely under Uniloc’s apparent construction of the asserted claim. Nothing in this
`
`document is an admission that Defendant agrees with Uniloc’s constructions of the claim, Uniloc’s
`
`contentions, or that any claim, whether asserted or not, of the Patent-In-Suit is valid, enforceable,
`
`or infringed.
`
`The accompanying invalidity claim charts contain specific examples of prior art references,
`
`patents, knowledge, inventions, uses, sales, methods, and/or systems which included and/or
`
`disclosed, either expressly or inherently, each limitation of the asserted claim and/or examples of
`
`prior art references and systems in view of which a person of ordinary skill in the art would have
`
`considered each limitation, and the claimed combination of such limitations, obvious. Defendant
`
`endeavored to identify exemplary relevant portions and/or features of the identified prior art. The
`
`identified prior art, however, may contain additional descriptions of or alternative support for the
`
`claim limitations that may not be cited in those charts or elsewhere in the Invalidity Contentions.
`
`Defendant hereby provides notice that it may, and shall be entitled to, rely on un-cited portions or
`
`features of any identified prior art, other documents, witnesses, and expert testimony to provide
`
`context or to aid in understanding the identified prior art. Where Defendant cites to a particular
`
`figure in a reference, the citation should be understood to encompass the caption and related
`
`description(s) of the figure and any text relating to the figure. Similarly, where Defendant cites to
`
`particular text referring to a figure, the citation should be understood to include the figure and
`
`caption as well.
`
`Defendant reserves the right to amend these disclosures and associated document
`
`productions should Uniloc, for instance, later provide any information that it failed to provide in
`
`its P.R. 3-1 and 3-2 disclosures or should Uniloc amend its P.R. 3-1 or 3-2 disclosures in any way.
`
` 2
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`Defendant also reserves the right to revise its ultimate contentions concerning the invalidity of the
`
`asserted claim, which may change depending upon, e.g., any findings as to the priority date of the
`
`asserted claim, and/or positions that Defendant or any expert witness(es) may take concerning
`
`claim construction, infringement, and/or invalidity issues. Defendant hereby provides disclosures
`
`and related documents pertaining to only the asserted claim as identified by Uniloc in its May 6,
`
`2019 Infringement Contentions. Defendant reserves the right to modify, amend, or supplement
`
`these Invalidity Contentions to show the invalidity of any additional claims that the Court may
`
`allow Uniloc to later assert or to address any continued modification to the set of asserted claim.
`
`Defendant further reserves the right to supplement its P.R. 3-4 document production should it later
`
`find additional, responsive documents, software and/or source code, to the extent any such
`
`materials may be, are, or become relevant.
`
`Defendant further intends to rely on, and incorporates by reference herein, inventor
`
`admissions concerning the scope of the asserted claim, and prior art relevant to the asserted claim,
`
`found in, e.g.: the Patent-In-Suit; the patent prosecution history for the Patent-In-Suit, and related
`
`patents and/or patent applications; any deposition testimony of the inventor of, or other witnesses
`
`related to, the Patent-In-Suit; any previous testimony or statements of the inventor of the Patent-
`
`In-Suit, and any papers filed or any evidence produced or submitted by Uniloc or its affiliates in
`
`connection with this litigation, or any previous or parallel litigation, related to the Patent-In-Suit
`
`or related patents, or any parallel litigation against Defendant involving other patents purported to
`
`be owned and/or asserted by Uniloc. In particular, Defendant reserves the right to contend that the
`
`asserted claim is invalid in view of admitted prior art, or, to the extent the Defendant obtains
`
`evidence, that the inventor named in the Patent-In-Suit did not invent the subject matter claimed.
`
` 3
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`Should Defendant obtain such evidence, they will provide the name of the person(s) from whom
`
`and the circumstances under which the claimed invention or any part of it was derived.
`
`Prior art not included in these contentions, whether known or not known to Defendant or
`
`any other defendant that Uniloc may allege has infringed the Patent-In-Suit, may become relevant
`
`and, to the extent not already referred to herein, are incorporated by reference into these
`
`contentions. Furthermore, Defendant is currently unaware of the extent, if any, to which Uniloc
`
`will contend that limitations of the asserted claim are not disclosed in the prior art identified by
`
`Defendant. Defendant reserves the right to identify additional references that would render
`
`obvious the allegedly missing limitation(s) of the disclosed device or method. Discovery is
`
`ongoing, and Defendant has not completed its investigation into, search for, and analysis of
`
`relevant prior art, including, but not limited to, prior art systems. Defendant therefore reserves the
`
`right to revise, amend, and/or supplement the information provided herein, including identifying,
`
`charting, and relying on additional references, should Defendant’s continued investigation, search
`
`and analysis yield additional relevant information or references, consistent with the Patent Rules,
`
`the Federal Rules of Civil Procedure, and/or any other applicable Court order or authority.
`
`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. Accordingly, Defendant reserves the right to
`
`modify, amend and/or supplement these contentions with these related patents or publications, as
`
`well as other prior art references, upon further investigation.
`
` 4
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`Additionally, Defendant reserves the right to present additional items of prior art under
`
`35 U.S.C. §§ 102 and/or 103 located during the course of such discovery or further
`
`investigation, and to assert contentions of invalidity under, for instance, (pre-AIA) 35 U.S.C.
`
`§§ 102(c), (d), or (f), to the extent that such discovery or investigation yield information
`
`forming the basis for such contentions of invalidity. This includes, for instance, the issuance
`
`of subpoenas to third parties believed to have knowledge, documentation, and/or corroborating
`
`evidence concerning some of the prior art listed below and/or additional prior art. These third
`
`parties may include, without limitation, any relevant authors, inventors, developers, designers,
`
`corporate designees with knowledge, or assignees.
`
`In addition to the prior art identified below and the accompanying invalidity claim charts,
`
`Defendant also incorporates by reference as if set forth herein any additional invalidity contentions,
`
`identified prior art, or invalidity claim charts or arguments already disclosed or that will be
`
`disclosed at any later date in the present, parallel, or related litigation, foreign or domestic, by
`
`Defendant or any other individual or entity to any other litigation or U.S. Patent & Trademark
`
`Office (“USPTO”) proceeding involving the Patent-in-Suit or any related patent, including,
`
`without limitation, any invalidity contentions, applications, or petitions drafted, served, or filed (or
`
`that will be drafted, served, or filed) by any party, including those in any co-pending current, past
`
`or future litigations. Moreover, Defendant incorporates by reference any prior art identified and/or
`
`invalidity claim charts set forth in any petition, application or submission to the USPTO involving
`
`and/or challenging the validity of the Patent-In-Suit, including, but not limited, in any inter partes
`
`review petitions and/or proceedings involving the Patent-In-Suit.
`
`II.
`
`INVALIDITY CONTENTIONS
`
`A.
`
`Priority
`
` 5
`
`
`
`
`
`

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`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 7 of 179 PageID #:
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`In its Infringement Contentions, Uniloc contends the asserted claim of the Patent-In-Suit
`
`is entitled to a priority date of “not later than August 21, 2008.” As an initial matter, by including
`
`the “not later than” language in its priority claim, Uniloc has asserted an open-ended priority date
`
`in violation of this Court’s Patent Local Rules. Indeed, P.R. 3-1(c) requires that plaintiff identify
`
`“the priority date to which each asserted claim allegedly is entitled”―not a start date, end date, or
`
`date range. Accordingly, Uniloc can only assert―and is understood to only have asserted―a
`
`priority of date of August 21, 2008 for the Patent-In-Suit. Uniloc also incorporates by reference
`
`any identifications and analyses that any expert witness(es) may take concerning priority issues.
`
`To the extent that Uniloc is permitted to modify, and in fact modifies in any manner, the alleged
`
`date to which the Patent-In-Suit is entitled to priority, Defendant reserves the right to respond and
`
`challenge that date to the extent required by law to satisfy its burden.
`
`B.
`
`General State Of The Art At The Time Of The Alleged Invention
`
`The prior art references and systems identified in Section II.C below, as well as the
`
`admissions of prior art in the specification and “References Cited” on the face of the Patent-In-
`
`Suit, may provide background and context pertinent to the teachings, and interpretation of, the
`
`prior art referenced by
`
`the claim charts.
`
` The specification of
`
`the Patent-in-Suit
`
`discusses underlying technology, for example computing devices, memory, browsers applications,
`
`and streaming video, and admits that these were all well known and conventional at the time of
`
`the alleged invention. (See, e.g., ’609 Patent, 3:11-37, 4:57-62, 5:20-25.) Defendant reserves the
`
`right to rely on each and every admission of prior art in the specification of the Patent-in-Suit. In
`
`addition, Defendant intends to rely upon that prior art, including the “References Cited” on the
`
`face of the Patent-In-Suit, to demonstrate the general state of the art at the time of the alleged
`
`invention and as an indication of what one of ordinary skill in the art would have understood at a
`
`time prior to the date of the alleged invention embodied by the asserted claim of the Patent-In-
`
`
` 6
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`

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`Suit. This prior art identification is only exemplary and is not in any way intended to limit the
`
`scope of what one of ordinary skill in the art would have understood at the relevant time period of
`
`the alleged invention or the breadth of the state of the art to which the alleged invention of the
`
`Patent-In-Suit relates. Defendant reserves the right to rely upon additional prior art, information,
`
`and/or knowledge to demonstrate what one of ordinary skill in the art would have understood at
`
`the times prior to the date of the alleged invention of the asserted claim of the Patent-In-Suit and/or
`
`the state of the art to which that alleged invention relates.
`
`C.
`
`Patent Rule 3-3(a) Disclosure
`
`Pursuant to P.R. 3-3(a), and as detailed below and in the attached Exhibits, Defendant
`
`contends that the asserted claim of the Patent-In-Suit is invalid as anticipated and/or obvious, either
`
`expressly or inherently as understood by a person having ordinary skill in the art, under 35 U.S.C.
`
`§§ 102 and 103 over at least the following prior art.
`
`Prior Art Patents / Published Application
`Exhibit
`Reference
`Inventor
`(Chart)
`Author
`
`or
`
`1
`
`2
`3
`
`4
`
`U.S. 8,918,812
`
`Hayward
`
`U.S. 2004/0133467
`U.S. 8,577,996
`
`U.S. 7,383,229
`
`Siler
`Hughes
`
`Jacoby
`
`Filing Date
`
`June 17, 2003
`September
`20072
`October 6, 2003
`
`17,
`
`Date of Issuance
`or Publication
`or Public Use /
`Availability
`October 21, 2001 December
`20141
`July 8, 2004
`November
`2013
`June 3, 20083
`
`23,
`
`5,
`
`
`1 Hayward was published on March 4, 2004 as US 2004/0045040. Although Defendant has
`charted the Hayward patent, Defendant may instead rely upon the published Hayward
`application, which contains identical disclosures as the Hayward Patent.
`2 Hughes issued from a provisional application filed on September 18, 2007. The non-
`provisional application was filed on September 17, 2008. The provisional contains sufficient
`disclosure to accord Hughes the September 18, 2007 priority date.
`3 Jacoby was published on December 16, 2004 as US 2004/0254887. Although Defendant has
`charted the Jacoby patent, Defendant may instead rely upon the published Jacoby application,
`which contains identical disclosures as the Jacoby Patent.
`
`
` 7
`
`
`
`

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`Prior Art Patents / Published Application
`Exhibit
`Reference
`Inventor
`(Chart)
`Author
`
`or
`
`Filing Date
`
`Date of Issuance
`or Publication
`or Public Use /
`Availability
`June 2, 2015
`
`March 24, 2005
`
`29,
`
`18,
`
`December
`2004
`September
`2003
`May 15, 2001
`March 14, 2002
`
`January 31, 2002
`December
`18,
`2007
`August 20, 2002 April 3, 2003
`August 5, 2004
`February 3, 2006
`October 7, 2004
`April 14, 2005
`May 5, 2008
`April 19, 2011
`April 24, 20084
`May 5, 2011
`July 15, 1998
`July 16, 2002
`November 1, 2001 June 27, 2002
`March 31, 2006 March 15, 2007
`
`5
`
`6
`
`7
`8
`
`9
`10
`10
`10
`11
`12
`12
`12
`
`U.S. 9,047,624
`
`Des Jardins
`
`U.S. 2005/0066353
`
`Fransdonk
`
`U.S. 2002/0013897
`U.S. 7,310,609
`
`McTernan
`Middleton
`
`Davis
`U.S. 2003/0065770
`KR 10-2006-0011753 Lee
`U.S. 2005/0081238
`Hara
`U.S. 7,930,391
`Holt
`U.S. 2011/0107241
`Moore
`U.S. 6,421,675
`Ryan
`U.S. 2002/0083188
`Hericy
`U.S. 2007/0061412
`Karidi
`
`
`
`
`The Cisco Content
`Delivery
`Network
`
`4 Moore claims priority to a provisional application filed on April 24, 2008. The non-provisional
`application was filed on April 24, 2009. The provisional contains sufficient disclosure to accord
`Moore the April 24, 2008 priority date.
`
`
` 8
`
`
`
`Prior Art Publications
`Exhibit (Chart) Title
`
`12
`
`13
`
`14
`
`Relevance of Time
`Spent on Web Pages
`
`Technical Computing
`with Java: Java Tech
`
`Delivery
`Content
`Networks: Status and
`Trends
`
`14
`
`2005
`
`/
`
`Abbreviation
`
`Hofgesang
`
`Java Tech
`
`S.
`and
`
`/
`
`Vakali
`
`Author
`Publication
`Publisher
`Date
`August 20, 2006 Peter I.
`Hofgesang /
`WEBKDD ’06
`Clark
`S.
`Lindsay,
`Johnny
`Tolliver,
`Thomas
`Lindblad
`Cambridge
`University Text
`Nov.-Dec. 2003 A. Vakali; G.
`Pallis
`/ IEEE
`Internet
`Computing
`Cisco Systems Cisco
`
`2000
`
`

`

`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 10 of 179 PageID #:
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`Prior Art Publications
`Exhibit (Chart) Title
`
`Solution
`Enterprise
`Paper
`
`for
`
`the
`White
`
`Publication
`Date
`
`Author
`Publisher
`
`/
`
`Abbreviation
`
`15
`
`16
`
`Prior Art Systems
`Exhibit (Chart)
`Item Offered
`for
`Sale
`or
`Publicly Used
`or Known
`Akamai Content
`Delivery
`Network
`(“Akamai”)
`Microsoft
`Silverlight
`(“Microsoft
`Silverlight”)
`Netflix Watch
`Now
`System
`(“Netflix”)
`Microsoft Media
`9
`Series
`(“Microsoft
`Media Series”)
`Hulu
`System
`(“Hulu”)
`Amazon Video
`On
`Demand
`(“Amazon”)
`AOL
`Video,
`AOL Search and
`Singingfish
`System (“AOL”)
`
`17
`
`18
`
`19
`
`20
`
`21
`
`Date of Offer or
`Use
`or
`Information
`Was Known
`April 1999
`
`Identity of Person/Entity
`
`Akamai
`
`2007
`
`Microsoft
`
`January 2007
`
`Netflix
`
`January 2003, or
`before
`
`Microsoft
`
`March 2008
`
`Hulu
`
`July 2008
`
`Amazon
`
`2003
`
`Singingfish/AOL
`
`
`
`
`
`Each disclosed item of prior art is evidence of a prior invention and making of the invention
`
`in the United States by another under 35 U.S.C. § 102(g), as evidenced by the named inventors,
`
`authors, organizations, and publishers involved with each such reference, with the circumstances
`
`described and reflected in each reference including publications and system implementation
`
`references. Defendant further intends to rely on admissions of the named inventors concerning the
`
` 9
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`

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`prior art, including statements found in the Patent-in-Suit, its prosecution history, related patents
`
`and/or patent applications, any deposition testimony, and the papers filed and any evidence
`
`submitted by Plaintiffs in conjunction with this litigation.
`
`In addition to the references identified above, the prior art references and systems identified
`
`below, and the “References Cited” on the face of the Patent-In-Suit, may render obvious alone or
`
`in combination with any other reference cited herein the asserted claim of the Patent-In-Suit, as
`
`set forth in exemplary fashion in Exhibits 1-21; provide background and context pertinent to the
`
`teachings, and interpretation of, the prior art referenced by the claim charts identified above; and
`
`may also be indicative of the relevant state of the art and/or the knowledge of one of ordinary skill
`
`in the art at the time of inventions of the Patent-In-Suit, such that it demonstrates, for example, the
`
`lack of invention between the asserted claim and the prior art as well as teachings, suggestions and
`
`motivations to combine. The prior art is exemplary only, and is not in any way intended to limit
`
`the scope of what one of ordinary skill in the art would have understood at the time of the alleged
`
`invention.
`
`Furthermore, along with the references disclosed in these contentions, the exhibits thereto,
`
`the Patent-In-Suit and its prosecution history, and the common sense and understanding of those
`
`in the relevant field at the time of the alleged invention, invalidity may be demonstrated by the live
`
`testimony of relevant witnesses, who will be identified in accordance with the case schedule and
`
`as discovery in this matter proceeds. Such witnesses may be used, among other purposes, to
`
`discuss issues of prior art systems, prior art references, and the knowledge of one of ordinary skill
`
`in the art at the time of the alleged invention. Defendant further intends to seek discovery regarding
`
`the above-mentioned prior art systems, including, but not limited to, for instance, Netflix, Hulu,
`
`
`
`
`10
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`

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`Amazon, Microsoft, and AOL Systems, in addition to other systems that may be related to the
`
`Patent-In-Suit and printed publication references disclosed in these contentions.
`
`
`
`Defendant reserves the right to rely upon additional prior art, information, testimony,
`
`and/or knowledge to demonstrate what one of ordinary skill in the art would have understood prior
`
`to the date of the alleged invention of the asserted claim of the Patent-In-Suit.
`
`Reference
`
`U.S. 2010/0262986
`
`Inventor
`Author
`Adimatyam
`
`or
`
`Filing Date
`
`April 8, 2009
`
`Issuance or
`
`Date of
`Publication
`October 14, 2010
`
`U.S. 9,491,077
`
`U.S. 6,018,619
`
`U.S. 7,647,418
`
`Ahlers
`
`Allard
`
`Ash
`
`October 4, 2007
`
`November 8, 2016
`
`May 24, 1996
`
`January 25, 2000
`
`June 19, 2002
`
`January 12, 2010
`
`U.S. 2008/0086558
`
`Bahadori
`
`October 6, 2006
`
`April 10, 2008
`
`U.S. 2008/0086454
`
`Bahadori
`
`October 11, 2006
`
`April 10, 2008
`
`U.S. 9,003,012
`
`Balasubramanian March 16, 2009
`
`April 7, 2015
`
`Brown
`
`N/A
`
`October 15, 1996
`
`WWW
`Tracking
`Experience
`Users:
`form the Design of
`HyperVisVR
`
`WO2002/001381
`
`Bunch
`
`June 19, 2001
`
`January 3, 2002
`
`U.S. 2008/0288411
`
`Copley
`
`May 17, 2007
`
`November 20, 2008
`
`U.S. 6,643,696
`
`Davis
`
`December 11, 1998 November 4, 2003
`
`U.S. 2002/0059576
`
`Feininger
`
`October 5, 2001
`
`May 16, 2002
`
`U.S. 2008/0288629
`
`Fisher
`
`May 17, 2007
`
`November 20, 2008
`
`U.S. 6,766,370
`
`U.S. 8,749,426
`
`Glommen
`
`Hastings
`
`February 8, 2002
`
`July 20, 2004
`
`March 8, 2007
`
`June 10, 2014
`
`
`
`
`11
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`

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`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 13 of 179 PageID #:
` 5979
`
`Reference
`
`EP 1350392
`
`Inventor
`Author
`Hayward
`
`or
`
`Filing Date
`
`October 24, 2001
`
`Issuance or
`
`Date of
`Publication
`January 14, 2009
`
`U.S. 2004/0015398
`
`Hayward
`
`October 24, 2001
`
`January 22, 2004
`
`U.S. 2004/0051812
`
`Hayward
`
`July 2, 2001
`
`March 18, 2004
`
`U.S. 8,918,812
`
`U.S. 7,849,160
`
`Hayward
`
`Hayward
`
`October 24, 2001
`
`March 4, 20045
`
`October 24, 2001
`
`December 7, 2010
`
`U.S. 2012/0215599
`
`Hayward
`
`February 17, 2012
`
`August 23, 2012
`
`U.S. 8,799,968
`
`Ho
`
`April 20, 2007
`
`August 5, 2014
`
`U.S 8,924,390
`
`Hyman
`
`April 19, 2008
`
`December 30, 2014
`
`U.S. 2003/0123853
`
`Iwahara
`
`December 24, 2002
`
`July 3, 2003
`
`Performance Analysis
`for Java Websites
`
`U.S. 8,849,954
`
`Stacy Joines, Ruth
`Willenborg,
`and
`Ken
`Hygh
`/
`Addison-Wesley
`Kim
`
`U.S. 2009/0089110
`
`U.S. 9,898,753
`
`Lara
`
`Lara
`
`N/A
`
`2003
`
`October 15, 2004
`
`September 30, 2014
`
`September 27, 2007 April 2, 2009
`
`September 27, 2007 February 20, 2018
`
`U.S. 7,099,620
`
`Miller
`
`November 1, 2004 August 29, 2006
`
`U.S. 2011/0107241
`
`Moore
`
`April 24, 2009
`
`May 5, 2011
`
`U.S. 5,654,905
`
`Mulholland
`
`September 15, 1995 August 5, 1997
`
`U.S. 2005/0108095
`
`Perlmutter
`
`October 13, 2004
`
`May 19, 2005
`
`U.S. 2010/0241507
`
`Quinn
`
`July 2, 2008
`
`September 23, 2010
`
`U.S. 2007/0226432
`
`Rix
`
`January 18, 2007
`
`September 27, 2007
`
`
`5 Hayward was published on March 4, 2004 as US 2004/0045040 and issued on December 23,
`2014. Defendant hereby discloses the published Hayward application, which contains identical
`disclosures as the Hayward patent as prior art that it may rely on.
`
`
`12
`
`

`

`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 14 of 179 PageID #:
` 5980
`
`Reference
`
`U.S. 2005/0021731
`
`Inventor
`Author
`Sehm
`
`or
`
`Filing Date
`
`August 23, 2004
`
`Issuance or
`
`Date of
`Publication
`January 27, 2005
`
`U.S. 8,745,647
`
`Shin
`
`December 26, 2007
`
`June 3, 2014
`
`U.S. 2008/0089239
`
`Todd
`
`October 17, 2006
`
`April 17, 2008
`
`U.S. 9,418,172
`
`White
`
`April 10, 2009
`
`August 16, 2016
`
`
`
`Notably, YouTube was in existence well before the alleged invention of the Patent-in-Suit
`
`and, on information and belief, was operating at that time in similar ways to the present YouTube
`
`system. Google denies that YouTube infringes the asserted claim of the Patent-In-Suit. Google
`
`has produced archival source code for YouTube, which reveals the functionality of the YouTube
`
`system prior to the earliest priority date to which Uniloc claims priority for the asserted
`
`patent. Discovery is ongoing. Google reserves the right to produce and rely upon additional
`
`materials and testimony to prove the invalidity of the Patent-in-Suit in light of earlier uses of
`
`YouTube, additional materials or testimony of which Google becomes aware, positions taken by
`
`Uniloc, and/or the Court’s claim construction.
`
`In addition, Defendant intends to rely on all prior art references disclosed, listed and/or
`
`asserted as prior art to the Patent-In-Suit (or any patent related to the Patent-In-Suit) by any entity
`
`during the course of any other litigation (past, present/ongoing, or future) and/or any
`
`reexaminations, inter partes reviews, or other proceeding before the U.S. Patent & Trademark
`
`Office (past, present/ongoing, or future). And, as related to such references, Defendant
`
`incorporates by reference, and reserves the right to rely on in this case, any claim charts or
`
`invalidity analyses in any of those litigations and USPTO proceedings.
`
`As stated, Defendant incorporates by reference all invalidity contentions served or that will
`
`be served on Uniloc related to the Patent-In-Suit or any patent related to the Patent-In-Suit by any
`
`
`
`
`13
`
`

`

`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 15 of 179 PageID #:
` 5981
`
`defendant or party in other litigation (past, present/ongoing, or future; domestic or foreign).
`
`Defendant intends to rely on any additional prior art reference disclosed or discussed in any expert
`
`report, declaration, or opinion, concerning the invalidity of the Patent-In-Suit, in this action or any
`
`other action or proceeding, including, but not limited to proceedings before the USPTO.
`
`Defendant also intends to rely on references identified in the file history of the Patent-In-Suit, any
`
`related applications thereto, or related patents.
`
`D.
`
`Patent Rule 3-3(b) Disclosure
`
`The Patent-In-Suit is invalid because it fails to meet one or more of the requirements of
`
`patentability under Title 35, including, but not limited, to under §§ 102 and/or 103. The individual
`
`bases for invalidity, including whether and how each item of prior art anticipates or renders
`
`obvious, either inherently or explicitly, the asserted claim, are provided herein and in the charts
`
`attached herewith as Exhibits. Each of the foregoing listed prior art documents, the underlying
`
`work, and/or the underlying apparatus or method qualifies as prior art under one or more sections
`
`of 35 U.S.C. §§ 102 and/or 103.
`
`1.
`
`Anticipation and Single Reference Obviousness
`
`As set forth in Exhibit 1 and below, Hayward, anticipates the asserted claim of the ’609
`
`Patent by expressly or inherently disclosing each and every limitation of that claim. To the extent
`
`that Plaintiffs contend that Hayward does not anticipate any asserted claim, Defendant further
`
`contends that Hayward renders the asserted claim obvious either in view of the reference alone or
`
`in combination with other references. A corresponding claim chart for each reference is attached
`
`hereto as indicated in the “Exh. No.” column.
`
`
`
`
`14
`
`

`

`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 16 of 179 PageID #:
` 5982
`
`Exh.
`
`No
`
`1
`
`Prior Art Reference6
`
`Hayward
`
`2.
`
`Obviousness and Motivations to Combine
`
`The remaining references are obviousness references. Anticipation references may also be
`
`combined with obviousness references to make further obviousness combinations. It would have
`
`been obvious to a person of ordinary skill in the art, at the time of the claimed inventions of the
`
`’609 Patent, to combine one or more of the prior art references identified above. The disclosures
`
`of these references also may be combined with information known to persons skilled in the art at
`
`the time of the alleged invention, and understood and supplemented in view of the common sense
`
`of persons skilled in the art at the time of the alleged invention, including any statements in the
`
`intrinsic record of the Patent-in-Suit and related applications.
`
`A person of ordinary skill would have been motivated to combine the identified prior art
`
`based on the nature of the problem to be solved, the teachings of the prior art, and the knowledge
`
`of persons of ordinary skill in the art. The identified prior art references, including portions cited
`
`in the Invalidity Charts, address the same or similar technical issues and suggest the same or similar
`
`solutions to those issues as the asserted claim. The suggested obviousness combinations described
`
`below are not to be construed to suggest that any reference included in the combinations is not
`
`anticipatory. Further, to the extent that Plaintiffs contend that any of the anticipatory prior art fails
`
`to disclose one or more limitations of the asserted claim, Defendant reserves the right to identify
`
`
`6 To the extent third party discovery shows other prior art systems, including Netflix, Amazon,
`Hulu, AOL, and Microsoft are anticipatory, Defendant reserves the right to amend these
`contentions to specifically identify other anticipatory systems.
`
`
`15
`
`

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`Case 2:18-cv-00502-JRG-RSP Document 153-2 Filed 01/22/20 Page 17 of 179 PageID #:
` 5983
`
`other prior art references that, when combined with the anticipatory prior art, would render the
`
`claim obvious despite an allegedly missing limitation.
`
`A person of skill in the art would have been motivated to combine the identified prior art
`
`items. As the United States Supreme Court held in KSR International Company v. Teleflex, Inc.,
`
`550 U.S. 398, 416 (2007): “The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results.” The Supreme Court
`
`further held that, “[w]hen a work is available in one field of endeavor, design incentives and other
`
`market forces can prompt variations of it, either in the same field or a different one. If a person of
`
`ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the
`
`same reason, if a technique has been used to improve one device, and a person of ordinary skill in
`
`the art would recognize that it would improve similar devices in the same way, using the technique
`
`is obvious unless its actual application is beyond his or her skill.” Id. at 417.