`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`Case No. 2:19-cv-000126-JRG
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`UNILOC 2017 LLC,
`
`
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA, INC.
`and SAMSUNG ELECTRONICS CO. LTD,
`
`
`
`Defendants.
`
`PLAINTIFFS’ DISCLOSURE OF ASSERTED
`CLAIMS AND INFRINGEMENT CONTENTIONS
`
`Pursuant to P.R. 3-1 and 3-2, Plaintiff, Uniloc 2017 LLC (“Uniloc”) submits this
`
`disclosure of asserted claims and infringement contentions to Defendants, Samsung Electronics
`
`America, Inc. and Samsung Electronics Co., LTD. (collectively, “Samsung”):
`
`I.
`
`P.R. 3-1 Disclosure of Asserted Claims and Infringement Contentions
`
`
`
`a.
`
`SAMSUNG infringes at least claims 13 and 17 of U.S. Patent No. 7,136,999 (“the
`
`’999 Patent”) for at least the reasons set forth in the attached chart (Exhibit A).
`
`
`
`b.
`
`SAMSUNG infringes the ’999 Patent by making, using, selling, offering to sell,
`
`and importing electronic devices that include the Android Beam or Samsung S Beam features for
`
`sharing data such as photos and videos between such devices, including the following: Galaxy
`
`Note10/10+, Galaxy Fold, S10 5G, S10, S10+, S10e, S9, S9+, S8, S8+, S8 Active, S7, S7 Edge,
`
`S7 Active, S6, S6 Edge, S6 Edge+, S6 Edge+ Duos, S6 active, S6 Duos, S5, S5+, S5 LTE, S5
`
`Mini (LTE), S5 Sport, S5 Active, S5 Duos, S5 LTE-A, S4, S4 Active LTE, S4 Zoom, S4 mini, S
`
`III, S III Mini, C7, C7 Pro, C5, C5 Pro, A50, A9, A9 Pro, A8, A8+, A8s, A8 Star, A7, A6, A6+,
`
`J7 (Snapdragon), J6+, J5, J4+, J2, E7 LTE, Note FE, Note9, Note8, Note7, Note5, Note5 Duos,
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`3285096.v1
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`Page 1 of 17
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`SAMSUNG EXHIBIT 1013
`
`

`

`
`
`Note4, Note4 Duos, Note3 Neo, Note Edge, Alpha, Alpha (S801), Avant, Ace 4 LTE, Ace Style
`
`LTE, Mega2 and Xcover 3 (collectively the “Accused Instrumentalities”).
`
`
`
`c.
`
`Charts identifying specifically where each element of each asserted claim is found
`
`within each of the Accused Instrumentalities are provided in Exhibit A. This claim chart is
`
`based on information currently available to Uniloc.
`
`
`
`d.
`
`Assuming that the Court construes the claims as Uniloc has requested, Uniloc
`
`believes that each element is literally present. Uniloc may, however, revise these contentions to
`
`identify an element as present under the doctrine of equivalents if 1) the Court’s construction so
`
`requires; or 2) discovery – in particular, review of source code – reveals Samsung’s products
`
`operate differently than Uniloc had contended.
`
`
`
`e.
`
`Uniloc will amend these contentions, if merited by information obtained through
`
`discovery, or in response to the Court’s claim construction. In particular, because many of the
`
`claim elements are software limitations, Uniloc expects to substantially revise these contentions,
`
`after completion of source code inspection, as P.R. 3-1(g) allows.
`
`
`
`f.
`
`The asserted claims of the ’999 Patent claim priority to June 20, 2000.
`
`II.
`
`P.R. 3-2 Document Production Accompanying Disclosure
`
`
`
`Uniloc refers SAMSUNG to documents labeled UNILOC_SAMSUNG126_001-
`
`UNILOC_SAMSUNG126_321.
`
`
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`

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`
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`Date: September 6, 2019
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
` /s/ Kevin Gannon
`Paul J. Hayes
`Kevin Gannon
`Aaron S. Jacobs
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`Email: phayes@princelobel.com
`Email: kgannon@princelobel.com
`Email: ajacobs@princelobel.com
`
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`Tel: (817) 377-9111
`Fax: (817) 377-3485
`
`Shawn Latchford
`shawn@nbafirm.com
`Texas State Bar No. 24066603
`NELSON BUMGARDNER ALBRITTON P.C.
`111 West Tyler Street
`Longview, Texas 75601
`Tel: (903) 757-8449
`Fax: (903) 758-7397
`
`ATTORNEYS FOR THE PLAINTIFF
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that I have this day served the foregoing document on the parties in this case by
`
`causing a copy to be sent via electronic mail to their counsel of record.
`
`
`/s/ Brian A. Tollefson
`
`
`
`
`
`
`
`
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`
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`3285096.v1
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`Page 3 of 17
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`

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`EXHIBIT A
`
`EXHIBIT A
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`Page 4 of 17
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`

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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`Uniloc has prepared these contentions based on the opinion of those of skill in the art as to how the Accused Instrumentalities likely operate,
`based on statements of the Defendants and the characteristics of the technical standards to which Defendants claims to conform. Uniloc will
`update these contentions, upon confirmation through discovery of how the Accused Instrumentalities operate.
`
`Accused Instrumentalities: Samsung electronic devices that include the Android Beam or Samsung S Beam features for sharing data such as
`photos and videos between such devices, including, but not limited to, Galaxy Fold, S10 5G, S10, S10+, S10e, S9, S9+, S8, S8+, S8 Active,
`S7, S7 Edge, S7 Active, S6, S6 Edge, S6 Edge+, S6 Edge+ Duos, S6 active, S6 Duos, S5, S5+, S5 LTE, S5 Mini (LTE), S5 Sport, S5
`Active, S5 Duos, S5 LTE-A, S4, S4 Active LTE, S4 Zoom, S4 mini, S III, S III Mini, C7, C7 Pro, C5, C5 Pro, A50, A9, A9 Pro, A8, A8+,
`A8s, A8 Star, A7, A6, A6+, J7 (Snapdragon), J6+, J5, J4+, J2, E7 LTE, Note FE, Note9, Note8, Note7, Note5, Note5 Duos, Note4, Note4
`Duos, Note3 Neo, Note Edge, Alpha, Alpha (S801), Avant, Ace 4 LTE, Ace Style LTE, Mega2 and Xcover 3.
`
`Below, the accused functionality of the Accused Instrumentalities is explained by way of example, with reference to particular Samsung
`products. However, Uniloc believes that all the Accused Instrumentalities operate in substantially the same way in the relevant respects,
`because, inter alia, they all include Android Beam or S Beam technology.
`
`Claims of the ’999 Patent
`
`13 Pre. A method of
`authenticating first and second
`electronic devices, comprising:
`
`Accused Instrumentality
`
`The Accused Instrumentalities practice a method of authenticating first and second electronic devices.
`
`Android Beam technology provides a method to transfer data information between two devices running
`the Android operating system. See, e.g.,
`https://videos.support.samsung.com/detail/video/4876181605001
`
`Android Beam technology provides a data transfer process between two devices. Samsung mobile devices
`(e.g. Galaxy S8) provide settings to turn on/off the Android Beam feature. Android Beam feature can be
`turned on from the settings menu (Settings > Connections > NFC and payment > Android Beam), as
`shown below.
`
`
`
`3285097.v1
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`Source:
`http://downloadcenter.samsung.com/content/PM/201808/20180825051556973/EB/CKT_G950U_EN_F
`INAL 180806/toc.html#nfc and payment tid1e11593
`
`Android Beam technology implemented by the Accused Instrumentalities provides a peer-to-peer data
`exchange method between two Android-running Samsung devices. The technology uses Near Field
`Communication (or, NFC) within the two devices. Android Beam allows rapid short-range exchange of
`web bookmarks, contact information and other data. The devices are kept in proximity to start data
`exchange using Android Beam, as shown below.
`
`
`
`
`
`Fig. 1
`Source: https://developer.android.com/guide/topics/connectivity/nfc/nfc#p2p
`
`
`
`
`2
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`At least Android 4.1 includes Android Beam technology which enables devices to handover the
`connection to an alternate communication link (e.g. Bluetooth) to enable faster data exchange of larger
`payloads (e.g. images, audio files, etc.). See below.
`
`
`Source: https://developer.android.com/about/versions/android-4.1#AndroidBeam
`
`Android Beam uses Near Field Communication (or, NFC) link to initialize the data transfer process and
`authenticate first and second electronic devices. See below:
`
`
`
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`3285097.v1
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`
`
`Fig. 2
`Source: https://members.nfc-forum.org/apps/group public/download.php/18688/NFCForum-AD-
`BTSSP_1_1.pdf
`
`The Accused Instrumentalities also include S Beam, which works in the same manner as Android Beam
`but uses WiFi Direct rather than Bluetooth as the second link.
`https://www.samsung.com/in/support/mobile-devices/what-is-s-beam-in-samsung-smartphones/
`
`
`The Accused Instrumentalities practice a method that comprises upon link set-up over a first link,
`executing an authentication protocol by exchanging authentication information between the first and
`second electronic devices to initially authenticate communication between the first and second devices;
`
`4
`
`13a. upon link set-up over a
`first link, executing an
`authentication protocol by
`exchanging authentication
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`information between the first
`and second electronic devices
`to initially authenticate
`communication between the
`first and second devices;
`
`Accused Instrumentality
`
`Android Beam technology uses Near Field Communication (or, NFC) link as the initial (or first link)
`communication network for the data transfer. The specifications for the NFC use cases are provided by
`the NFC Forum. Android Beam is built using the NFC Forum standards for the information transfer, as
`shown.
`
`
`Source: http://nfc-forum.org/wp-content/uploads/2014/03/Android-NFC-Forum-Developer-Spotlight-
`2.pdf
`
`Android Beam employs NFC to start the data transfer process. See,
`https://www.youtube.com/watch?v=1jNINWqdj08
`
`The devices are kept close to each to establish an NFC link (or a first link). See Source:
`https://www.youtube.com/watch?v=1jNINWqdj08
`
`Generally, the connection over carriers (such as Bluetooth) requires manual authentication by entering
`the PIN on both the devices. But, using NFC, manual authentication is not required. The devices are
`handed over to the alternate carrier (e.g. Bluetooth) automatically using the NFC link.
`
`For example, the data transfer between the two devices automatically switches to the alternate connection
`(Bluetooth in this case) after the devices were kept close for the NFC link.
`
`See https://www.youtube.com/watch?v=1jNINWqdj08
`
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`3285097.v1
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`The NFC link established between the two closely kept devices carries the authentication information of
`the two devices. The authentication information is exchanged over the NFC link. For example, the two
`devices exchange the authentication information related to the alternate carrier (e.g. Bluetooth) handover
`process over the established NFC link.
`
`Source: https://members.nfc-forum.org/apps/group_public/download.php/18688/NFCForum-AD-
`BTSSP_1_1.pdf
`
`The NFC link (or, the first link) between the two devices is secured and authenticated.
`
`
`
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`3285097.v1
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`
`https://www.academia.edu/7737603/Connection_Handover_Technical_Specification_NFC_Forum
`
`The Accused Instrumentalities also include S Beam, which works in the same manner as Android Beam
`but uses WiFi Direct rather than Bluetooth as the second link.
`https://www.samsung.com/in/support/mobile-devices/what-is-s-beam-in-samsung-smartphones/
`
`
`The Accused Instrumentalities practice a method that comprises, later, when the first and second
`electronic devices are connected using a second link, exchanging the authentication information
`between the first and second electronic devices over the second link, then only allowing communication
`between the first and second devices if the first and second devices had initially been successfully
`authenticated.
`
`The Accused Instrumentalities establish an alternate connection (e.g. Bluetooth connection) after
`exchanging handover information over the first link (e.g. NFC link) when data transfer is performed using
`Android Beam.
`
`For example, the devices are kept back to back to start data transfer (e.g. image transfer) using Android
`Beam. When the NFC connection is established between the two devices by this action, a “Touch to
`beam” message is displayed on the sender device’s screen. After being touched, the devices start the
`data transfer on the alternate connection (e.g. Bluetooth) and the data transfer is performed over the
`
`7
`
`13b. later, when the first and
`second electronic devices are
`connected using a second link,
`exchanging the authentication
`information between the first
`and second electronic devices
`over the second link, then only
`allowing communication
`between the first and second
`devices if the first and second
`devices had initially been
`successfully authenticated.
`
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`second link. See, e.g., https://www.youtube.com/watch?v=1jNINWqdj08;
`https://www.youtube.com/watch?v=1jNINWqdj08
`
`
`That is, the Android Beam technology requires the devices to be placed near each other to establish an
`NFC link. The handover to an alternate connection (e.g. Bluetooth) takes place only when the devices
`have exchanged the authentication information over the NFC link initially. Bluetooth Secure Simple
`Pairing (or SSP) specification by NFC Forum (provides information about the connection handover from
`NFC to Bluetooth, as required in Android Beam) describes that the authentication information required
`for the connection handover from the NFC to an alternate carrier (e.g. Bluetooth) is transferred over the
`initially established NFC link.
`
`https://members.nfc-forum.org/apps/group public/download.php/18688/NFCForum-AD-
`BTSSP_1_1.pdf
`
`
`
`
`
`8
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`The authentication information shared over the NFC link is used (or, exchanged) by the devices for the
`authentication over the alternate network (e.g. Bluetooth). Communication between the first and second
`devices on the second link is only made after the first and second devices had initially been successfully
`authenticated.
`
`
`For example, when transferring an image file from a first device’s (e.g., Galaxy S8) Gallery to a second
`device (e.g., a Galaxy S9) using Android Beam, both the devices are tapped back-to-back after which, a
`“Touch to beam” message is displayed on the sender device (i.e. Galaxy S8), as shown below.
`
`
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`
`
`
`When the “Touch to beam” message on the sender device (i.e. Galaxy S8) is tapped, the image transfer
`(or, data transfer) is started. The Bluetooth within both the mobile devices is turned ON automatically for
`data transfer over Bluetooth communication link (or, the second link). The mobile devices are
`authenticated automatically over a secured Bluetooth link (or, the second link) after their initial
`communication over NFC link (or, the first link) after the mobile devices exchange authentication
`information over the NFC link. The mobile devices use the information for the authentication process
`over the second link (e.g. Bluetooth).
`
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`Accused Instrumentality
`
`
`
`
`
`
`The Accused Instrumentalities also include S Beam, which works in the same manner as Android Beam
`but uses WiFi Direct rather than Bluetooth as the second link.
`https://www.samsung.com/in/support/mobile-devices/what-is-s-beam-in-samsung-smartphones/
`
`
`The Accused Instrumentalities implement a communications system. See element 13pre above.
`
`11
`
`17pre. A communications
`system, comprising:
`
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`Claims of the ’999 Patent
`
`17a .a first electronic device;
`a second electronic device;
`
`17b. a first communications
`link over which the first and
`second electronic devices
`authenticate each other using a
`given protocol that includes a
`link set-up and the exchange of
`authentication information
`following the link set-up, the
`authentication information
`being used to initially
`authenticate communication
`between the first and second
`electronic devices; and
`
`17c. a second communications
`link over which the first and
`second electronic devices later
`authenticate each other using
`the exchange of the
`authentication information,
`then only allowing
`communication between the
`first and second devices if the
`first and second devices had
`initially been successfully
`authenticated, wherein said
`first communications link and
`said second communications
`link are different types of links.
`
`
`3285097.v1
`
`Accused Instrumentality
`
`The Accused Instrumentalities are electronic devices. Android Beam links a first Samsung electronic
`device with a second Samsung electronic device. See element 13pre above.
`
`The Accused Instrumentalities implement a first communications link (e.g., an NFC link) over which
`the first and second Samsung devices authenticate each other using a given protocol that includes a link
`set-up and the exchange of authentication information following the link set-up, the authentication
`information being used to initially authenticate communication between the first and second electronic
`devices.
`
`See element 13a above.
`
`The Accused Instrumentalities implement a second communications link (e.g., alternate communication
`link, such as, e.g., Bluetooth) over which the first and second electronic devices later authenticate each
`other using the exchange of the authentication information, then only allowing communication between
`the first and second devices if the first and second devices had initially been successfully authenticated,
`wherein said first communications link and said second communications link are different types of links.
`
`See elements 13b (i) and 13b (ii) above.
`
`12
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`Uniloc USA, LLC v. Samsung Electronics America, Inc., Case No. 19-cv-00126-JRG
`Exhibit A to Infringement Contentions – Claim Chart for U.S. Pat. No. 7,136,999
`
`
`
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