IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`OPTIS WIRELESS TECHNOLOGY, LLC,
`OPTIS CELLULAR TECHNOLOGY, LLC,
`UNWIRED PLANET, LLC, UNWIRED
`PLANET INTERNATIONAL LIMITED, AND
`PANOPTIS PATENT MANAGEMENT, LLC,
`
`Civil Action No. 2:19-cv-66-JRG
`
`Plaintiffs,
`
`JURY TRIAL
`
`v.
`
`APPLE INC.,
`
`Defendant
`
`PLAINTIFFS OPTIS WIRELESS TECHNOLOGY, LLC, OPTIS CELLULAR
`TECHNOLOGY, LLC, AND PANOPTIS PATENT MANAGEMENT, LLC’S P.R. 3-1
`AND 3-2 DISCLOSURE OF ASSERTED CLAIMS, INFRINGEMENT CONTENTIONS,
`AND ACCOMPANYING DOCUMENT PRODUCTION
`
`Plaintiffs Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, Unwired
`
`Planet, LLC, Unwired Planet International Limited, and PanOptis Patent Management, LLC
`
`(collectively, “Plaintiffs” or “PanOptis”) hereby submit their disclosure of asserted claims and
`
`infringement contentions and accompanying document production pursuant to local Patent Rules
`
`3-1 and 3-2 to Defendant Apple Inc. (“Apple” or “Defendant”), with respect to United States
`
`Patent Nos. 8,005,154, 8,019,332, 8,385,284, 8,411,557, 9,001,774, 8,102,833, and 8,989,290
`
`(“Patents-in-Suit”).
`
`PanOptis’ investigation is ongoing, and discovery is in its early stages. These disclosures
`
`are based on information available to PanOptis at this time. PanOptis reserves its rights to
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`supplement or modify the contentions and disclosure herein, particularly after discovery of
`
`documents and other discovery regarding Defendant’s Accused Instrumentalities. PanOptis also
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`APPLE 1017
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`reserves the right to assert additional claims of the Patents-in-Suit, accuse different
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`instrumentalities, or identify alternative literal and/or equivalent infringing elements in
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`Defendant’s Accused Instrumentalities.
`
`I.
`
`ASSERTED CLAIMS
`
`Pursuant to P.R. 3-1(a), PanOptis asserts that Defendant has infringed and continues to
`
`infringe at least the following claims:
`
`(cid:120) U.S. Patent No. 8,005,154 – Claims 33-34, 37-38
`
`(cid:120) U.S. Patent No. 8,019,332 – Claims 1-10
`
`(cid:120) U.S. Patent No. 8,385,284 – Claims 1-5, 8, 10-12, 14-18, 21, 23-25, 27-29
`
`(cid:120) U.S. Patent No. 8,411,557 – Claims 1-6, 9-10
`
`(cid:120) U.S. Patent No. 9,001,774 – Claims 6-10
`
`(cid:120) U.S. Patent No. 8,102,833 – Claims 1-14
`
`(cid:120) U.S. Patent No. 8,989,290 – Claims 10-13
`
`PanOptis reserves the right to seek leave of the Court to amend this list of asserted
`
`claims, particularly in view of further discovery or investigation and the Court’s claim
`
`construction.
`
`II.
`
`ACCUSED INSTRUMENTALITIES
`
`Pursuant to P.R. 3-1(b) PanOptis presently identifies the following Apple products, of
`
`which PanOptis is aware, as “Accused Instrumentalities” under all applicable subsections of 35
`
`U.S.C. §271 with respect to each asserted claim as follows:
`
`(cid:120) All Asserted Patents and Claims: iPad (3rd generation), iPad mini, iPad (4th
`
`generation), iPad Air, iPad mini 2 with Retina display, iPad Air 2, iPad mini 3,
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`iPad Pro (12.9-inch), iPad mini 4, iPad Pro (9.7-inch), iPad (5th generation), iPad
`
`Pro (12.9-inch) (2nd generation), iPad Pro (10.5-inch), iPad (6th generation), iPad
`
`Pro 11-inch, iPad Pro 12.9-inch (3rd generation), iPad Air (3rd generation), iPad
`
`mini (5th generation), iPhone 5, iPhone 5c, iPhone 5s, iPhone 6, iPhone 6 Plus,
`
`iPhone 6s, iPhone 6s Plus, iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone
`
`8 Plus, iPhone X, iPhone XS, iPhone XS Max, iPhone XR, Apple Watch Series 4.
`
`For iPads and Apple Watches, where cellular functionality is sold as an option,
`
`only the products sold with cellular functionality are accused.
`
`(cid:120) All Asserted Claims of U.S. Patent Nos. 8,385,284; 8,411,557; 8,019,332; and
`
`8,102,833: Apple Watch Series 3 when sold with cellular functionality, in
`
`addition to the accused instrumentalities listed in the paragraph above.
`
`These identifications are based on a preliminary understanding of information currently
`
`available to PanOptis, and PanOptis reserves the right to supplement these identifications as
`
`discovery proceeds.
`
`III. CLAIM CHARTS
`
`Pursuant to P.R. 3-1(c) PanOptis provides the attached charts that identify where each
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`limitation of each asserted claim is found in representative proof for each of the Accused
`
`Instrumentalities.1 Known names and/or model numbers corresponding to the Accused
`
`Instrumentalities are identified in reference to each of the asserted claims set forth in the attached
`
`claim charts. Non-limiting examples from exemplary iPhones and iPads are used to illustrate the
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`application of the claims to the Accused Instrumentalities. Similar documentation to that
`
`1 The references provided in the attached charts may be directed to particular releases of a given
`3GPP or other technical specification. It should be understood that references and contentions are
`exemplary in nature and do not limit infringement assertions to only those releases.
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`identified in the chart is identified for the other Accused Instrumentalities in Appendix A.
`
`PanOptis accuses products having the same or similar structures and/or features identified in the
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`representative claim charts and exhibits, including any versions of listed models. PanOptis
`
`reserves the right to identify additional Accused Instrumentalities, names and model numbers,
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`particularly in light of further discovery.
`
`These infringement contentions are prepared with public information and have not been
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`prepared with the benefit of discovery. Plaintiffs reserve the right to amend these contentions,
`
`including adding and/or amending a doctrine of equivalents analysis for any claim element of
`
`any asserted claim, as discovery progresses. Plaintiffs further reserve the right to update, amend,
`
`or supplement these contentions and/or to add Accused Instrumentalities, standard, or chipset
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`information, based on information received by Plaintiffs or otherwise produced by Apple,
`
`Qualcomm, Intel, or any other entity, in this litigation. Such information may include, but is not
`
`limited to, data sheets, design specifications, source code, testing information, reference designs,
`
`implementation and utilization information, and/or schematics. Plaintiffs’ citation of portions
`
`of the 3GPP LTE standard herein should not be interpreted to limit Plaintiffs’
`
`infringement proof in expert reports or at trial in any way. Plaintiffs’ citation of portions of
`
`the 3GPP LTE standard herein provides detailed notice of Plaintiffs’ theory of infringement, but
`
`Plaintiffs intend to rely on additional evidence including, but not limited to, data sheets, design
`
`specifications, source code, testing information, reference designs, implementation and
`
`utilization information, and/or schematics as proof of infringement in expert reports and at trial.
`
`IV. ACTS OF INFRINGEMENT
`
`While P.R. 3-1 does not specify identifying or detailing the nature of infringing acts
`
`under 35 U.S.C. § 271, PanOptis outlines here exemplary acts of infringement without limitation.
`
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`For the method claims in the claim charts, when Apple, its customers, retailers, or
`
`servicers, and/or other users turn on and use the Accused Instrumentalities in the U.S., or when
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`the Accused Instrumentalities are tested in the U.S., for cellular LTE transmissions, the claimed
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`methods are performed in the U.S. and thus directly infringed under 35 U.S.C. §271(a). The
`
`claimed methods are also performed and thus directly infringed under 35 U.S.C. §271(a) when
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`the Accused Instrumentalities are activated as part of design and development activities (e.g.
`
`interoperability, compliance, certification, reliability and quality control testing), and/or
`
`otherwise operated by Apple or other users of the Accused Instrumentalities, for cellular LTE
`
`transmissions. Apple is liable therefor directly and indirectly.
`
`For example, Apple is a direct infringer under 35 U.S.C. §271(a) of the method claims
`
`when the method is performed on the Accused Instrumentalities, because the Accused
`
`Instrumentalities are structured and programed by Apple to perform the infringing methods in
`
`ordinary intended use in cellular transmissions. Apple thusly directs and controls performance of
`
`the claimed methods in the US and is directly responsible therefor.
`
`Additionally, because Apple makes and sells the Accused Instrumentalities to perform
`
`the claimed methods in ordinary intended use in cellular transmissions, Apple is also liable as an
`
`inducer under 35 USC §271(b) for the performance of the claimed methods. Moreover, technical
`
`and/or user documentation is generally provided by Apple with the Accused Instrumentalities
`
`themselves, available on Apple’s website, provided at Apple conferences and trade shows, in
`
`advertisements or otherwise, directly or indirectly to the user, that instruct, describe, educate,
`
`encourage, and/or explain how to operate the Accused Instrumentalities for cellular LTE
`
`transmissions, thus inducing infringement with Apple’s knowledge under 35 U.S.C. § 271(b).
`
`See, e.g., https://www.apple.com/iphone/LTE/.
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`Apple is also liable as a contributor under 35 USC §271(c) for the performance of the
`
`claimed methods. Apple sells, offers for sale, and/or imports into the United States the accused
`
`hardware and/or software components comprising the Accused Instrumentalities, constituting
`
`material parts of the inventions of the asserted method claims, thus contributing to infringement
`
`under 35 U.S.C. § 271(c). These components are known by Apple to be especially made or
`
`especially adapted for use in infringement of the asserted method claims, and are not a staple
`
`article or commodity of commerce suitable for substantial noninfringing use.
`
`Moreover, because the Accused Instrumentalities are made to perform the claimed
`
`methods in ordinary intended use in cellular transmissions, Apple is selling, importing and/or
`
`making the claimed methods in the US and is directly responsible therefor under 35 U.S.C.
`
`§271(a).
`
`For the apparatus claims in the claim charts, Apple makes, sells, offers for sale, and/or
`
`imports into the US the claimed apparatus by way of the Accused Instrumentalities and thus
`
`directly infringes under 35 U.S.C. § 271(a).
`
`Also, when Apple, its customers, retailers, or servicers, and/or other users turn on and use
`
`the Accused Instrumentalities, or when the Accused Instrumentalities are tested, for cellular LTE
`
`transmissions, the claimed apparatus is used and so directly infringed under 35 U.S.C. § 271(a)
`
`by use. The claimed apparatus is also used and so directly infringed under 35 U.S.C. §271(a) by
`
`use when the Accused Instrumentalities are activated as part of design and development
`
`activities (e.g. interoperability, compliance, certification, reliability and quality control testing),
`
`and/or otherwise operated by Apple or other users of the Accused Instrumentalities, for cellular
`
`LTE transmissions. Apple is liable therefor directly and indirectly.
`
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`Because Apple makes and sells the Accused Instrumentalities, Apple is liable as inducer
`
`under 35 USC §271(b) for the use thereof by third parties. Moreover, technical and/or user
`
`documentation is generally provided with the Accused Instrumentalities themselves by Apple,
`
`available on Apple’s website, provided at Apple conferences and trade shows, in advertisements
`
`or otherwise, directly or indirectly to the user that instruct, describe, educate, encourage, and/or
`
`explain how to operate Accused Instrumentalities for cellular LTE transmissions, thus inducing
`
`infringement with Apple’s knowledge under 35 U.S.C. § 271(b). See,
`
`e.g.,
`
`https://www.apple.com/iphone/LTE/.
`
`Apple is also liable as a contributor under 35 USC §271(c) for the use thereof by third
`
`parties. Apple sells, offers for sale, and/or imports into the United States the accused hardware
`
`and/or software components comprising the Accused Instrumentalities, constituting material
`
`parts of the inventions of the asserted apparatus claims, thus contributing to infringement under
`
`35 U.S.C. § 271(c). These components are known by Apple to be especially made or especially
`
`adapted for use in infringement of the asserted apparatus claims, and are not a staple article or
`
`commodity of commerce suitable for substantial noninfringing use.
`
`Apple also is a direct infringer under 35 U.S.C. §271(a) of the asserted method and
`
`apparatus claims because Apple controls and/or directs third parties, including Apple’s
`
`customers and authorized retailers and servicers, to use the methods and apparatuses, for
`
`example via the pre-installed iOS, the pre-programed LTE baseband processor, Apple remote
`
`services, and all other Apple applications that run on iOS and communicate via cellular
`
`functionality, such as Phone, iTunes, Apple Maps, and the App Store. Apple conditions use and
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`receipt of the benefit of the claimed methods and apparatuses on use of the Accused
`
`Instrumentalities in an infringing manner, and Apple establishes the manner and/or timing of
`
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`doing so, by way of the foregoing conduct, thus further establishing Apple as a direct infringer
`
`under 35 U.S.C. §271(a).
`
`Apple is thus liable for infringement of the asserted method and apparatus claims directly
`
`and indirectly. See 35 U.S.C. §§ 271(a-c).
`
`V.
`
`RULE 3-1(D)-(F) DISCLOSURES
`
`A.
`
`Literal Infringement and Doctrine of Equivalents
`
`Infringement contentions for each of the Accused Instrumentalities are identified in the
`
`claim charts attached as Exhibits 1-7. PanOptis asserts that, under the proper construction of the
`
`asserted claims and their claim terms, every limitation of the asserted claims of the Patents-in-
`
`Suit is literally present in each of the Accused Instrumentalities. To the extent PanOptis currently
`
`contends that any limitation of the asserted claims may be found under the doctrine of
`
`equivalents, PanOptis’ contention is provided in the attached claim charts.
`
`To the extent that any limitation is subsequently found to be not literally present, or to the
`
`extent that Defendant argues that any limitation is not present in the Accused Instrumentalities,
`
`PanOptis asserts that each such limitation is present under the doctrine of equivalents because,
`
`inter alia, differences, if any, between such limitation and the Accused Instrumentalities are
`
`insubstantial and the Accused Instrumentalities perform the same function in the same way to
`
`achieve the same result as such limitations, and there is nothing in the file history or prior art that
`
`prevents a finding of equivalence. PanOptis reserves the right to amend its infringement
`
`contentions to assert infringement under the doctrine of equivalents with additional specificity,
`
`particularly in light of the Court’s claim constructions and Defendant’s contentions.
`
`
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`B.
`
`Priority Dates
`
`Pursuant to P.R. 3-1(e), PanOptis asserts that each of the asserted claims of United States
`
`Patent No. 8,005,154 is entitled to a priority date at least as early as December 22, 2006.
`
`PanOptis asserts that each of the asserted claims of United States Patent No. 8,019,332 is
`
`entitled to a priority date at least as early as March 7, 2008.
`
`PanOptis asserts that each of the asserted claims of United States Patent No. 8,385,284 is
`
`entitled to a priority date at least as early as December 20, 2007.
`
`PanOptis asserts that each of the asserted claims of United States Patent No. 8,411,557 is
`
`entitled to a priority date at least as early as March 20, 2006.
`
`PanOptis asserts that each of the asserted claims of United States Patent No. 9,001,774 is
`
`entitled to a priority date at least as early as April 21, 2005.
`
`PanOptis asserts that each of the asserted claims of United States Patent No. 8,102,833 is
`
`entitled to a priority date at least as early as November 13, 2007.
`
`PanOptis asserts that each of the asserted claims of United States Patent No. 8,989,290 is
`
`entitled to a priority date at least as early as June 27, 2007.
`
`PanOptis reserves the right to assert conception and reduction-to-practice dates earlier
`
`than the priority dates asserted above.
`
`VI.
`
`PLAINTIFFS’ RULE 3-2 PRODUCTION OF DOCUMENTS
`
`PanOptis is producing documents corresponding to each of the categories set forth in P.R.
`
`3-2 with these contentions. PanOptis has used its best efforts to identify responsive P.R. 3-2.
`
`Discovery is at an early stage, and PanOptis reserves the right to supplement its document
`
`production to identify additional responsive documents. To the extent additional responsive
`
`
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`9
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`documents are identified during the course of discovery, PanOptis will promptly supplement its
`
`production.
`
`PanOptis is not aware of any documents corresponding to P.R. 3-2(a) at the current time.
`
`PanOptis reserves the right to amend its contentions and P.R. 3-2(a) production to the extent
`
`allowed and appropriate in this regard as discovery proceeds.
`
`Documents responsive to P.R. 3-2(b) may be found at the following production numbers:
`
`POAP_00003235 – POAP_00003249.
`
`PanOptis further identifies the documents bearing the following production numbers as
`
`responsive to P.R. 3-2(c):
`
`(cid:120) U.S. Patent No. 8,005,154 File History: POAP_00000001-00000178
`
`(cid:120) U.S. Patent No. 8,019,332 File History: POAP_00000179-00000680
`
`(cid:120) U.S. Patent No. 8,385,284 File History: POAP_00001118-00002016
`
`(cid:120) U.S. Patent No. 8,411,557 File History: POAP_00002017-00002180
`
`(cid:120) U.S. Patent No. 9,001,774 File History: POAP_00002941-00003234
`
`(cid:120) U.S. Patent No. 8,102,833 File History: POAP_00000681-00001117
`
`(cid:120) U.S. Patent No. 8,989,290 File History: POAP_00002181-00002940
`
`
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`Dated: June 17, 2019.
`
`/s/ Samuel F. Baxter
`
`Samuel F. Baxter (cid:3013) Lead Counsel
`Texas State Bar No. 1938000
`sbaxter@McKoolSmith.com
`Jennifer Truelove
`Texas State Bar No. 24012906
`jtruelove@McKoolSmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, TX 75670
`Telephone: (903) 923-9000
`Telecopier: (903) 923-9099
`
`Kevin L. Burgess
`Texas State Bar No. 24006927
`kburgess@McKoolSmith.com
`Steven J. Pollinger
`Texas State Bar No. 24011919
`spollinger@McKoolSmith.com
`Christine M. Woodin
`Texas State Bar No. 24100051
`cwoodin@McKoolSmith.com
`MCKOOL SMITH, P.C.
`300 W. 6th Street Suite 1700
`Austin, TX 78701
`Telephone: (512) 692-8700
`Telecopier: (512) 692-8744
`
`Mike McKool
`Texas State Bar No. 13732100
`mmckool@McKoolSmith.com
`Holly E. Engelmann
`Texas State Bar No. 24040864
`hengelmann@mckoolsmith.com
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
`Telephone: (214) 978-4000
`Telecopier: (214) 978-4044
`
`11
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`

`

`Jason Sheasby (pro hac vice)
`jsheasby@irell.com
`Hong Zhong, PhD
`hzhong@irell.com
`Elliot Z. Chen (pro hac vice)
`echen@irell.com
`IRELL & MANELLA LLP
`1800 Ave of the Stars, Suite 900
`Los Angeles, CA 90064
`Telephone: (310) 203-7096
`Facsimile: (310) 203-7199
`
`Ingrid M. Haslund Petersen (pro hac vice)
`ipetersen@irell.com
`IRELL & MANELLA LLP
`840 Newport Center Dr., Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Facsimile: (949) 717-6359
`
`M. Jill Bindler
`Texas Bar No. 02319600
`jbindler@grayreed.com
`GRAY REED & MCGRAW LLP
`1601 Elm Street, Suite 4600
`Dallas, Texas 75201
`Telephone: (214) 954-4135
`Facsimile: (469) 320-6901
`
`ATTORNEYS FOR PLAINTIFFS
`OPTIS WIRELESS TECHNOLOGY,
`LLC, OPTIS CELLULAR
`TECHNOLOGY, LLC, AND PANOPTIS
`PATENT MANAGEMENT, LLC
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the above and foregoing document has
`
`been served on all counsel of record via the Court’s ECF system on June 17, 2019.
`
`/s/ Samuel F. Baxter
`Samuel F. Baxter
`
`12
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