IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`PACT XPP SCHWEIZ AG,
`
`Plaintiff,
`
`v.
`
`INTEL CORPORATION,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 19-1006-RGA
`
`INTEL CORPORATION’S INITIAL INVALIDITY CONTENTIONS
`
`
`
`PACT - Ex. 2023.0001
`
`

`

`Defendant Intel Corporation (“Intel”) hereby provides by and through its attorneys its
`
`Initial Invalidity Contentions for United States Patent Nos. 7,928,763 (“the ’763 Patent”),
`
`8,301,872 (“the ’872 Patent”), 8,312,301 (“the ’301 Patent”), 8,471,593 (“the ’593 Patent”),
`
`8,686,549 (“the ’549 Patent”), 8,819,505 (“the ’505 Patent”), 9,037,807 (“the ’807 Patent”),
`
`9,075,605 (“the ’605 Patent”), 9,170,812 (“the ’812 Patent”), 9,250,908 (“the ’908 Patent”),
`
`9,436,631 (“the ’631 Patent”), and 9,552,047 (“the ’047 Patent”) (collectively the “patents-in-
`
`suit”). The citation of prior art and the accompanying exhibits are being disclosed as, and should
`
`be construed as nothing more than, Intel’s Invalidity Contentions, and may, in part, be based on
`
`PACT XPP Schweiz AG’s (“Plaintiff” or “PACT”) apparent view as to the scope of the asserted
`
`claims as reflected in its Infringement Contentions. Intel does not accept Plaintiff’s apparent
`
`reading of the claims as reflecting the proper scope of the claims. These documents are not
`
`intended to reflect Intel’s claim construction positions, which will be disclosed pursuant to the
`
`Scheduling Order in this case. Furthermore, PACT’s infringement contentions assert more than
`
`the permitted 180 claims allowed by this Court’s Scheduling Order (D.I. 120 at 5) due to its
`
`selection of multiple-dependent claims. See 10-15-2019 C. Lawless Ltr to S. Li. By setting forth
`
`its invalidity grounds with respect to all of PACT’s asserted claims, Intel does not waive and
`
`hereby expressly reserves all rights to challenge PACT’s assertion of claims that exceed the
`
`number expressly allowed by this Court.
`
`Intel’s Initial Invalidity Contentions reflect present knowledge and contentions, and Intel
`
`reserves the right, to the extent permitted by the Court and the applicable statutes and rules, to
`
`modify and supplement its Initial Invalidity Contentions in the event that additional invalidity
`
`grounds are identified, whether in response to any amendment by Plaintiff of its Infringement
`
`Contentions, otherwise becoming aware of additional prior art or further material information,
`
`-1-
`
`PACT - Ex. 2023.0002
`
`

`

`including, without limitation, discovery from Plaintiff or third parties; discovery concerning the
`
`alleged priority, conception, and reduction to practice dates for any of the asserted claims; the
`
`Court’s claim construction order; or any other basis in law or in fact. Additionally, Intel reserves
`
`the right to modify its contentions should any of the claim limitations be construed, whether
`
`previously construed or not, by the Court.
`
`Intel’s Initial Invalidity Contentions are made in a variety of alternatives and do not
`
`represent Intel’s agreement or view as to the meaning, definiteness, written description support
`
`for, or enablement of any claim contained therein. Given that the Court has not yet made any
`
`claim construction ruling in this action, Intel’s Invalidity Contentions are made in a variety of
`
`alternatives, and are not intended to necessarily be consistent with each other and/or Intel’s other
`
`contentions in this action, and should not be otherwise construed. Intel’s contentions herein are
`
`not, and should in no way be seen as, admissions or adoptions as to any particular claim scope or
`
`construction, or as any admission that any particular claim element is met in any particular way.
`
`Intel objects to any attempt to imply claim constructions from any identification of potential prior
`
`art. Additionally, Intel’s Initial Invalidity Contentions may use Plaintiff’s improper assertions of
`
`infringement and improper applications of the claims to understand Plaintiff’s view of the scope
`
`of the asserted claims. Intel does not agree with Plaintiff’s application of the claims and denies
`
`infringement. Further, to the extent an accused product or feature comprises or arises from prior
`
`art, Intel contends, without admitting purported infringement, that the patents-in-suit are
`
`anticipated and/or made obvious in light of that prior art and Plaintiff’s own Infringement
`
`Contentions.
`
`In those instances where Intel asserts that the claims are invalid under 35 U.S.C. § 112
`
`(e.g., no written description, not enabled, and/or indefinite), Intel has applied the prior art in part
`
`-2-
`
`PACT - Ex. 2023.0003
`
`

`

`
`
`in accordance with Intel’s assumptions that PACT: (1) contends those claims are definite, (2) finds
`
`written description support for those claims, and (3) contends that those claims are enabled.
`
`However, Intel’s prior art invalidity contentions do not necessarily represent Intel’s agreement or
`
`view as to the meaning, definiteness, written description support for, or enablement of any claim
`
`contained therein, or that the patents-in-suit properly disclose structures corresponding to functions
`
`in claims governed by 35 U.S.C. § 112 ¶ 6. In fact, Intel notes numerous grounds for invalidity
`
`on such bases below.
`
`Much of the art identified in the attached exhibits reflects common knowledge and the state
`
`of the art before the filing date of the patents-in-suit. In many instances where a particular
`
`contention calls for combining references, any one of a number of references can be combined.
`
`The inclusion of certain exemplary combinations of prior art references does not exclude other
`
`combinations based upon the claim charts attached hereto.
`
`Each of the asserted claims of the patents-in-suit is anticipated by and/or obvious in view
`
`of one or more of the items of prior art identified herein alone or in combination with other prior
`
`art references. None of the contentions contained herein shall be construed as an admission that
`
`any asserted claim satisfies the requirements of 35 U.S.C. § 112.
`
`I.
`
`THE ’763 PATENT
`
`Claims 1, 2-10, 12-22, 24-26, 28, 30-31 of the ’763 Patent (the “Asserted ’763 Patent
`
`Claims”) have been asserted by Plaintiff in this litigation.1
`
`
`1 With respect to all patents-in-suit, pursuant to the Court’s Scheduling Order (D.I. 20), Intel has
`only provided invalidity contentions for the asserted claims of the patents-in-suit. Should
`Plaintiff later attempt to assert claims that they have not previously identified, Intel reserves the
`right to contend that any newly-asserted claims are invalid.
`
`-3-
`
`PACT - Ex. 2023.0004
`
`