IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`UNILOC 2017 LLC,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Case No. 6:19-CV-00532-ADA
`
`APPLE INC.’S PRELIMINARY INVALIDITY CONTENTIONS AND
`ADDITIONAL DISCLOSURES PURSUANT TO AGREED SCHEDULING ORDER
`
`Uniloc Ex. 2003
`Apple v. Uniloc
`IPR2020-00854
`p. 0
`
`

`

`Pursuant to the Agreed Scheduling Order (Dkt. No. 18) and the Court’s Order Governing
`
`Proceedings – Patent Case (Dkt. No. 11), Defendant Apple Inc. (“Apple”) submits the following
`
`Preliminary Invalidity Contentions and additional disclosures to Plaintiff Uniloc 2017 LLC
`
`(“Uniloc”).
`
`I.
`
`PRELIMINARY MATTERS
`
`The Preliminary Invalidity Contentions address claims 1, 2, 3, 6, 7, 8, 10, 11, 12, 13, 14,
`
`16, 17, 18, 20, and 21 of U.S. Patent No. 6,467,088 (the “’088 patent”), which are the only claims
`
`alleged by Uniloc to be infringed by Apple in Uniloc’s Preliminary Infringement Contentions.
`
`Should the Court allow Uniloc to later assert infringement of additional claims not asserted in
`
`Uniloc’s Preliminary Infringement Contentions, or to supplement its infringement contentions
`
`with additional infringement theories with respect to the asserted claims, Apple reserves the right
`
`to supplement its Preliminary Invalidity Contentions to assert invalidity of those additional claims
`
`and/or to assert invalidity based on the additional infringement theories. Apple also reserves the
`
`right to supplement its Preliminary Invalidity Contentions in response to information learned in
`
`fact or expert discovery, including identification of additional prior art. Apple’s Preliminary
`
`Invalidity Contentions are based in whole or in part on its present understanding of the asserted
`
`claims and Uniloc’s Infringement Contentions, including the priority date of the ’088 patent as
`
`asserted by Uniloc in its Infringement Contentions. Apple’s Invalidity Contentions are
`
`responsive at least to the same level of specificity of Uniloc’s Infringement Contentions.
`
`Apple’s Invalidity Contentions may also take into account Uniloc’s apparent claim constructions,
`
`to the extent Uniloc’s constructions can be gleaned from Uniloc’s Infringement Contentions.
`
`Such apparent constructions may be inconsistent with the constructions that Apple ultimately
`
`will proffer in this case. By including prior art that would anticipate or render obvious the
`
`asserted claims of the ’088 patent based on Uniloc’s disclosed and apparent claim constructions,
`
`1
`
`

`

`or based on any other particular claim construction, Apple is not adopting Uniloc’s claim
`
`constructions, nor is Apple admitting to the accuracy of any particular claim construction. The
`
`Court has established separate deadlines for the parties’ proposed claim constructions, and Apple
`
`will disclose its proposed constructions according to those deadlines. Solely for purpose of these
`
`Preliminary Invalidity Contentions, Apple may, if necessary, apply alternative, and even
`
`inconsistent, claim construction positions. Apple reserves all rights to amend these Invalidity
`
`Contentions after the Court issues its claim construction ruling, or if the Court permits Uniloc to
`
`amend its Infringement Contentions.
`
`Apple, however, does not concede that Uniloc’s Infringement Contentions provide the
`
`requisite level of specificity, and Apple provides these Invalidity Contentions without waiving
`
`any right to receive from Uniloc full and complete specific infringement contentions. Moreover,
`
`nothing herein admits in any way that any of the accused products, or any of Apple’s other
`
`products, infringe any of the asserted claims.
`
`A.
`
`Incorporation by Reference of Related Invalidity Contentions and
`Disclosures
`
`Apple expressly incorporates by reference as if fully set forth herein, and intends to rely
`
`on, each of the contentions, charts, prior art references, and other statements made or disclosed in
`
`the following petitions for inter partes review, including but not limited to the documents
`
`produced as APL-UNILOC532-PA-0000001 - APL-UNILOC532-PA-0000898:
`
`Case
`IPR2020-00023
`IPR2019-00056
`
`Petitioners
`Microsoft Corporation
`Apple Inc.
`
`Filing Date
`October 11, 2019
`October 17, 2018
`
`Apple also incorporates by reference as if fully set forth herein all contentions, charts,
`
`prior art references, and other statements relating to any ground of invalidity identified by any
`
`potential or actual licensee to the ’088 patent and by any party in any other past, present, or
`
`2
`
`

`

`future litigation involving the ’088 patent or patents related to the ’088 patent. Apple also
`
`incorporates by reference all grounds of invalidity identified in any present or future
`
`reexamination, inter partes review, covered business method (CBM) patent review, or other
`
`post-issuance review by the Patent and Trademark Office of the ’088 patent. Apple also
`
`incorporates by reference the production of documents associated with any grounds for invalidity
`
`for the ’088 patent identified in this paragraph. Apple also incorporates any grounds of
`
`invalidity known to Uniloc or any affiliated party whether or not disclosed.
`
`Apple also requests that all such contentions from every case involving the ’088 patent be
`
`produced to Apple as soon as possible after they are served on, or become known to, Uniloc.
`
`B.
`
`Ongoing Investigation
`
`Apple’s discovery and investigation in connection with this lawsuit is continuing. Thus,
`
`these Invalidity Contentions are based on information obtained to date. Among other things,
`
`discovery is still underway, witnesses remain to be deposed, and the Court has not yet construed
`
`any terms of the ’088 patent. Accordingly, Apple’s Invalidity Contentions are subject to
`
`modification, amendment, or supplementation in accordance with the Agreed Scheduling Order
`
`(Dkt. No. 18), the Local Rules of the Western District of Texas, and/or the Federal Rules of Civil
`
`Procedure as this action progresses and additional information is obtained.
`
`II.
`
`LEVEL OF PERSON OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art as of the claimed priority date of the ’088 patent
`
`would have had a at least a Bachelor’s Degree in computer science, computer engineering, or a
`
`related subject or the equivalent, and two years of experience working with databases, computer
`
`networks, and related technologies.
`
`III.
`
`IDENTIFICATION OF PRIOR ART
`
`Apple identifies the following prior art to the ’088 patent. Apple contends that the prior
`
`3
`
`

`

`art disclosed below generally all relate to methods and systems for updating or reconfiguring
`
`software and/or hardware componentsin an electronic device and collectively, they are all
`
`relevantat least as background ofthe art to each of the ’088 patent asserted claims, irrespective
`
`of the sub-section in which they are expressly cited. Apple expressly reserves the rightto at least
`
`use and rely on anyof thepriorart cited herein to establish or otherwise support Apple’s
`
`contentions as to what was known in the state of the art during the pertinent time frame for the
`
`°088 patent.
`
`A.
`
`Prior Art Patents and Published Patent Applications
`
`The following prior art patents and published patent applications invalidate the asserted
`
`claims of the ’088 patent:
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`Software Program for
`1.|5,124,909 Frank W. June 23, 1992
`
`Providing Cooperative
`Blakely, et
`Processing Between Personal
`al.
`Computers and a Host
`
`Computer
`Expert and Data Base
`Alexandru
`December29,
`2.|5,175,800
`System and Method for
`Galis, etal.
`1992
`
`Communications Network
`
`
`
`1994
`
`
`
`
`3.
`
`|S okie
`
`Wayne O.
`Evans
`
`May 31, 1994
`
`Dynamically Adapting
`Multiple Versions on System
`Commandsto a Single
`Operating System
`Data Processing Method and
`Christopher|June 7, 1994
`4.|5,319,770
`Apparatus for Verifying
`T. Lehman
`Adapter Description File
`
`Choices
`
`Methodof Operating a Data
`October 25,
`3.|5,359,730
`Processing System Having a
`Dynamic Software Update
`Facility
`
`

`

`
`
`6.|5,423,023 US Method and Apparatus for James C. June 6, 1995
`
`
`Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`
`
`
`Providing a User
`Batch,etal.
`Configurable System which
`Integrates and Managesa
`Plurality of Different Task
`
`and Software Tools
`
`
`
`
`7.|5,564,051 US Automatic Update ofStatic Harry October8,
`
`and DynamicFiles at a Halliwell, et|1996
`
`Remote Network Nodein
`al.
`
`
`
`
`
`Responseto Calls Issued by
`or for Application Programs
`
`8. James L. T.|December31,5,590,376 Apparatus and Method for
`Detecting and Updating
`Kou
`1996
`Status of Removable Storage
`System Using Shared
`
`Interrupt and Software Flag
`
`
`9.|5527232 Curtis Priem,|November19,Method and Apparatus for
`Allowing Computer
`et al.
`1996
`Circuitry to Function with
`Updated Versions of
`Computer Software
`
`
`
`10.|5,579,509 Apparatus and Method for David A. November26,
`
`Verifying Compatibility of|Furtney,et 1996
`
`System Components
`al.
`
`
`11.|5,613,101 Method and Apparatus for Alan W. March 18,
`
`Determining at Execution
`Lillich
`1997
`Compatibility Among Client
`and Provider Components
`Where Provider Version
`
`
`
` No.|Number C. Wu,et al.
`
`Linked with Client May
`Differ from Provider Version
`
`Available at Execution
`
`
`
`
`
`12.|5,617,533 System and method for Grace-Ann April 1, 1997
`
`determining whether a
`software package conforms
`
`

`

`
`
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`
`
`14.|5,635,979 Dynamically Programmable|BruceUS June 3, 1997
`
`to packaging rules and
`
`requirements
`
`13.|5,634,114 US Dynamic Link Library Glen C. May27, 1997
`
`
`
`
`Version Negotiation
`Shipley
`
`
`Digital Entertainment
`Kostreski, et
`Terminal Using Downloaded|al.
`Software to Control
`
`Broadband Data Operations
`March 24,
`Steven
`Method and Apparatusfor
`US
`|°5,732,275
`15,
`
`Managing and Automatically|Kullick,et 1998
`Updating Software Programs|al.
`3
`2
`16.
`Server Computerfor
`Gary Lee
`May 12, 1998
`5,752,042
`Selecting Program Updates
`Cole,et al.
`for a Client Computer Based
`on Results of Recognizer
`Program(s) Furnishedto the
`
`7
`3
`
`
`
`17.|5,784,563 US Method and System for Aaron W. July 21, 1998
`
`Automated Reconfiguration|Marshall, et
`of a Client Computer or User|al.
`Profile in a Computer
`Network
`
`18.|5,790,796 US Polymorphic Package Files Richard August 4, 1998
`
`
`
`
`
`
`
`Client Computer
`
`Software which Provides
`
`
`
`
`to Update Software
`Scott
`Components
`Sadowsky
`Methods, Apparatus, and
`Alan W.
`Data Structures for Data
`Lillich
`Driven Computer Patches
`and Static Analysis of Same
`
`
`
`
`Upgrading
`Stupek,Jr.,
`1998
`et al.
`
`19.
`
`US
`
`August 4, 1998
`
`20.|5,809,287 US Automatic Computer Richard A. September 15,
`
`
`
`
`ah. Dale R. Olds|November3,System for Dynamically
`3,832,275
`Replacing Operating
`1998
`
`

`

`
`
`Origin Title
`Number
`or PublicationInventors
`
`Named
`
`Date of Issue
`
`
`
`Distributed Directory Service
`After Verifying that Versions
`of New Software and the
`
`1998
`
`Operating Software are
`Compatible
`Method of Automatically
`Carl Staelin|November 10,
`38955777
`22.
`Generating a Software
`
`Installation Package
`Software Distribution and
`
`23;
`
`5,835,911
`
`November10,
`Toru
`1998
`Nakagawa,
`Maintenance System and
`Method
`et al.
`
` 30. Darren A.
`
`1999
`
`Method and System for
`Identifying and Obtaining
`Computer Software from a
`
`Remote Computer
`System and Methodfor
`Distributing Configuration-
`Dependent Software
`Revisions to a Computer
`System
`Automatic Software
`
`24.
`
`5,845,077
`
`Philip E.
`Fawcett
`
`December1,
`
`1998
`
`25.
`
`5,867,714
`
`David K.
`
`Todd,etal.
`
`February 2,
`1999
`
`26.
`
`5,909,581
`
`21,
`
`28.
`
`5,931,909
`
`Updating Method
`Methodfor the Distribution
`
`Seong-Kab
`Park
`
`June 1, 1999
`
`Arthur Van
`
`July 6, 1999
`5,919,247
`Hoff, et al.
`of Code and Data Updates
`System for Multiple-Client
`Julian S.
`August 3, 1999
`Taylor
`Software Installation and
`
`20.
`
`5,933,646
`
`5,974,454
`
`Upgrade
`Software Manager for
`Administration of a
`
`Computer Operating System
`Method and System for
`Installing and Updating
`Program Module
`Components
`
`B. Winston
`
`August 3, 1999
`
`Hendrickson,
`et al.
`
`Apfel, et al.
`
`October 26,
`
`

`

`
`
` 35.|6,078,951
`
`33:
`
`34.
`
`6,067,582
`
`Computer
`System for Installing
`Information Related to a
`Software Application to a
`Remote Computer Overa
`Network
`
`Method and Apparatusfor
`Automating a Software
`Delivery System by
`Locating, Downloading,
`Installing, and Upgrading of
`Viewer Software
`
`US
`
`May 23, 2000
`
`
`
`Hewitt
`
`Smith,et al.
`
`Anand
`Pashupathy,
`et al.
`
`June 20, 2000
`
`
`
`31.|6,009,274 US Method and Apparatus for Rick December 28,
`
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`
`
`
`Automatically Updating
`Fletcher, et
`1999
`Software Components on
`al.
`End Systems Over a
`Network
`
`
`32.|6,052,531 Multi-Tiered Incremental Ray Soon April 18, 2000
`
`Software Updating
`Waldin,Jr.,
`et al.
`
`
`
`6,049,671
`
`Method for Identifying and
`Obtaining Computer
`Software from a Network
`
`Benjamin W.
`
`April 11, 2000
`
`Slivka,etal.
` Benjamin
`
`36.|6,119,105 System, Method and Article|HumphreyUS September12,
`
`
`
`
`of Manufacture for Initiation|Williams 2000
`
`of Software Distribution
`
`from a Point of Certificate
`
`Creation Utilizing an
`Extensible, Flexible
`Architecture
`
`
`
`
`37.|6,151,643 US Automatic Updating of William November21,
`
`Diverse Software Products Cheng, et al.|2000
`
`on Multiple Client Computer
`Systems by Downloading
`Scanning Application to
`Client Computer and
`
`

`

`
`
`
`Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`Generating Software List on
`
`Client Computer
`
`
`
`38.|6,151,708 Raymond D.|November21,US Determining Program
`Update Availability via set Pedrizetti, et|2000
`
`Intersection Over a Sub-
`al.
`
`
`Optical Pathway
`
`
`39.|6,167,567 Technique for Automatically|Anthony A.|December 26,US
`Updating Software Stored on|Chiles, et al.|2000
`a Client Computer in a
`Networked Client-Server
`
`
`Environment
`
`41.|6,198,946 US Firmware Upgrade Method Seung-Kee March6, 2001
`
`
`
`
`40.|6,185,734 US Hierarchical Registry Michael L. February 6,
`
`Structure for Managing Saboff, et al.|2001
`
`Multiple Versions of
`
`Software Components
`
`
`
`for Wireless
`Shin,etal.
`Communications Device, and
`Method for Supporting
`Firmware Upgrade by Base
`
`Station
`
`
`
`
`
` No.|Number
`
`42.|6,199,204 US Distribution of Software Seamus March6, 2001
`
`
`
`
`Updates via a Computer
`Donohue
`
`Network
`
`
`
`
`
`43.|6,202,207 Method and a Mechanism for|SeasmusUS March 13,
`
`
`Synchronized Updating of
`Brendan
`2001
`Interoperating Software
`Donohue
`
`44.|6,243,766 Method and System for Michael V. June 5, 2001
`
`Updating Software with
`Sliger,et al.
`Smaller Patch Files
`
`
`
`
`45.|6,256,635 Method and Apparatus for Yan July 3, 2001
`
`Configuring a Computer
`Arrouye,et
`Using Scripting
`al.
`
`46.|6,256,668 US Methodfor Identifying and Benjamin W.| July 3, 2001
`
`
`
`
`Obtaining Computer
`Slivka,et al.
`
`
`
`

`

`
`
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`Software from a Network
`
`47.|6,272,536 US System and Methodfor the Arthur A. August 7, 2001
`
`
`Computer Using a Tag
`
`
`
`Distribution of Code and
`Van Hoff, et
`Data
`al.
`
`
`
`
`
`
`
`48.|6,282,709 Mark Keith|August 28,US Software Update Manager
`
`
`
`
`
`
`
`49,
`
`6,289,510
`
`US
`
`Online Program-Updating
`System and Computer-
`Readable Recording Medium
`Storing a Program-Updating
`
`September 11,
`
`Nakajima
`
`2001
`Program Ryoetsu
`
`aeal withVersionControl Criss,etal.|2001
`
`
`
`
`
`
`50.|6,308,061 Wireless Software Upgrades|Mark A. October23,
`
`51.
`
`December11,
`Siamak
`Method and Apparatus for
`Managing Software ina
`Razzaghe-
`2001
`Network System
`Ashrafi
`
`
`
`§2.|6,332,217 Lawrence C.|December18,Software Inventory Control
`System
`Hastings
`2001
`
`
`53.|6,360,362 Automatic Update of Camera|Mark R. March 19,
`Firmware Fichtner, et|2002
`
`
`
`
`
`
`54.|6,418,555 Munnan A.|July 9, 2002Automatic Upgrade of
`
`
`55.|6,425,126 Apparatus and Method for Michael July 23, 2002
`
`Synchronizing Software
`John
`Between Computers
`Branson,et
`al.
`
`
`
`
`
`56.|6,449,723 Method and System for Doron September10,
`
`Preventing the Downloading|Elgressy, et|2002
`and Execution of Executable|al.
`Objects
`
`
`
`
`Software Update
`Ingemar
`2002
`Gard,etal.
`
`57.|6,463,584 US State Copying Method for Bengt Erik October8,
`
`10
`
`

`

`
`
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`
`
`
`Customizable User
`Willbrandt
`2002
`
`58.|6,467,080 US Shared, Dynamically Kathryn October15,
`
`59.
`
`6,477,703
`
`60.
`
`6,487,723
`
`US
`
`Documentation
`Software Patch Selection
`Tool
`
`Multicast Downloading of
`Software and Data Modules
`
`Devine,etal.
`Randolph C.
`Smith,et al.
`Alexander
`
`November5,
`
`2002
`
`November26,
`
`G. MacInnis
`
`2002
`
`and Their Compatibility
`Requirements
`
`
`61.|6,488,585 Bill Wells, et|December3,US Gaming Device
`Identification Method and
`
`
`
`
`
`Apparatus
`
`
`62.|6,542,474 Clement Ka-|April 1, 2003US System and Method for
`Incrementally Updating
`Mun Lau
`Remote ElementLists in an
`
`Electronic Network
`
`
`
`
`
`
`
`
`
`
`
`
`
`Hyppoenen,a em |
`
`63.|6,577,920 US Computer Virus Screening Mikko June 10, 2003
`
`64.|6,609,127 Mark R. Lee,|August 19,US Method for Dynamically
`
`
`
`
`Updating Master Controllers|etal. 2003
`in a Control System
`65.|6,681,253 Adaptive Processor System|JyriUS January 20,
`
`
`Suvanen, et
`2004
`
`
`
`i
`
`
`
`66.|6,684,242 CustomerSelf-Help Toolkit|Bruce F.US January 27,
`
`
`Bahlmann
`2004
`
`67.|6,704,933 US Program Configuration Akihiro March 9, 2004
`
`
`
`
`Management Apparatus
`Tanaka,et
`
`
`
`68.|6,718,547 US Medical Network System Hideya April 6, 2004
`
`
`
`
`
`
`
`
`
`69.|6,754,896 Method and System for On-|Debi P.US June 22, 2004
`
`
`
`
`
`DemandInstallation of
`Mishra,etal.
`Software Implementations
`
`11
`
`

`

`
`
`
`Number Origin|Title Named Date of Issue
`
`
`
`Inventors
`or Publication
`6,789,255 Raymond D.|September7,US Determining Update
`
`
`
`
`Availability via Set Pedrizetti, et|2004
`Intersection Over a Sub-
`al.
`
`
`Optimal Pathway
`July 12, 2005
`Doron
`Method and System for
`US
`6,918,043
`Preventing the Downloading|Elgressy, et
`and Execution of Executable|al.
`
` Objects
`6,922,781
`US
`Method and Apparatus for
`Gary
`July 26, 2005
`Identifying and
`Stephen
`Characterizing Errant
`Shuster
`Electronic Files
`
`April 11, 2006
`John J.
`Method and System of
`7,028,019
`Managing Software Conflicts|McMillan, et
`in Computer System that
`al.
`Receive, Processing Change
`Information to Determine
`
`whichFiles and Shared
`
`Resources Conflict with One
`
`Another
`
`
`
`7,062,765 Bradley John|June 13, 2006System and Method for
`
`Updating Information via a
`Pitzel, et al.
`Network
`
`
`
`
`
`
` and Program Product for
`
`
`
`
`Arnaiz, etal.
`
`
`
`7,080,371 Method, System, Apparatus|Gilberto July 18, 2006
`
`
`
`Distribution and Instantiation
`of Software Upgrades
`
`19543843 Victor Chen|May 28, 1997Software Updating Method
`for Microcomputer-
`Supported Mobile Telephone
`
`19701322 Bleil Reinder|July 23, 1998Setting Up of Software in
`Automated Process
`DiplIng,et
`al.
`
`
`
`
`
`0472813 Joseph Rueff|December16,EP Method to Change a
`
`Computer Program Stored in
`1998
`the Computer Arrangement
`
`
`
`12
`
`

`

`
`
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`Inventors
`or Publication
`
`of an Appliance, and
`Arrangementfor the
`Carrying Out of this Method
`
`
`79.|0791881 Configuration Managerfor August 27,
`Network Devices and an
`1997
`
`
`
`80.|0978789 Apparatus, Method and Darryl R. February 9,
`
`System for Upgrading a Hinshaw, et|2000
`
`Device with an Incompatible|al
`Processor
`
`81.|2001/0049263 Xiang Zhang|December6,Automatic Station/System
`
`
`Configuration Monitoring
`2001
`and Error Tracking System
`and Software Upgrade Tool
`Kit
`
`
`82.|2002/0026634 Robert Shaw|February 28,Secure Data Downloading,
`
`
`Recovery and Upgrading
`2002
`
`
`83.|2002/0143801 A Method of Downloading Hisaya October3,
`
`New Version Software into a|Okamoto, et|2002
`Transmission System which|al.
`Operates According to the
`Software and a Transmission
`System having Function for
`Downloading the New
`Version software
`
`Associated Method for
`Providing Configuration
`
`Information
`
` G. Macinnis,
`
`[997
`
`
`
`84.|2002/0152477|US Module Managerfor Andrew October 17,
`
`Interactive Television Goodman,et|2002
`
`System
`al.
`
`85.|1997/30549 Multicast Downloading of Alexander August21,
`
`Software and Data Modules
`and Their Compatibility
`Requirements
`
`
`
`et al.
`
`13
`
`

`

`
`
`
`No.|Number Origin|Title Named Date of Issue
`
`
`
` Inventors or Publication
`
`86.|1999/35566 WO Method for Identifying and Denis July 15, 1999
`
`
`
`Monitoring Evolution of a
`Chauvalon,
`Set of Software Components|etal
`
`87.|2000/36503 WO Automatic and Selective Avi Urban, June 22, 2000
`
`
`
`Transfer of Software and
`et al.
`
`B.
`
`Prior Art Non-Patent Publications
`
`The following prior art non-patent publications invalidate the asserted claims of the 088
`
`patent:
`
`
`No. | Title
`
`Author
`
`Publication
`
`Configuration Information
`from a Source Computerto a
`Target Computer and
`Automatic Upgrade of
`Software
`
`
`
`
`
`
`
`Date
`
`
`1.|Version Control in the Inscape Environment Dewayne E. March 1987
`
`Perry
`
`2. Reidar Conradi,|June 1998Version Models for Software Configuration
`
`
`Management
`et al.
`
`Systems
`Narayanaswamy,
`et al.
`
`Maintaining Configurations of Evolving Software|K. March 1987
`
`SOFA/DCUP:Architecture for Component Trading|Frantisek Plasil,|1998
`and Dynamic Updating
`et al.
`
`Using Content-Derived Names for Configuration Ethan L. Miller,|March 1997
`Management
`et al.
`
`Configuring Versioned Software Products Reidar Conradi,|1996
`et al.
`
`CRUSADE: Hardware/Software Co-Synthesis of Bharat P. Dave,|1999
`
`Dynamically Reconfigurable Heterogeneous Real-|etal.
`Time Distributed Embedded Systems
`8.|Inverse Software Configuration Management Rachel Jane 1998
`
`McCrindle
`
`
`
`14
`
`

`

`
`
`Title
`
`Author
`
`Publication
`
`Date
`
`9.|Software Release Management
`Andre van der
`August 1996
`Hoek
`
`10.|RFC 2131 —Dynamic Host Configuration Protocol
`March 1997
`R. Droms
`September
`Atsushi Futakata
`1995
`
`Patch Control Mechanism for Large Scale Software
`
`Arthur van Hoff,|August 1997
`
` Windows98: Features
`
`
` The Open Software Description Format (OSD)
`
`
`
` Microsoft Corporation
`Cybermedia,Inc. 2)SS)S|SSSe
`
`The Pull of Push
`
`Greg Robinson
`Edmund X.
`
`DeJesus
`
`January 1999
`August 1997
`
`C.
`
`Items Offered for Sale or Publicly Used or Known
`
`The following prior art products invalidate the asserted claims of the ’088 patent:
`
`Item Offered for Sale or Publicly
`Used or Known
`
`Identity of Person or Entity
`
`Microsoft Corporation
`Windows 95
`Microsoft Corporation
`Windows 98
`Windows NT
`
`Conflict Catcher from Cassady & Green
`Casady & Greene
`First Aid from CyberMedia
`Cybermedia,Inc.
`Oil Change from CyberMedia
`Systems ManagementServer from
`Microsoft
`
`Microsoft Corporation
`
`Dynamic Host Configuration Protocol
`
`9.|Plus & Play from Microsoft Microsoft Corporation
`
`In addition to the products in the chart above, Apple continues to investigate the identities
`
`of the individuals or entities involvedin thefirst sale, offer for sale, or public use ofprior art
`
`products that were made using the methodsrecited by the asserted claims of the ’088 patent, and
`
`Apple will produce additional documentsrelating to the invalidity ofthe asserted claims by those
`
`products as they becomeavailable.
`
`15
`
`

`

`IV.
`
`CLAIM CHARTS
`
`Appendices 1-8 are claim charts that specifically identify prior art that anticipates and/or
`
`renders obvious each of the asserted claims of the ’088 patent. In addition to the references
`
`specifically identified in the Appendices, Apple also reserves the right to rely on any of the
`
`patents or publications deriving from applications in the respective claimed priority chains of the
`
`’088 patent, the references cited on the face of the ’088 patent and related patents, any admitted
`
`prior art references in the specifications of the ’088 patent and related patents, the prosecution
`
`history of the ’088 patent and related patents, the references cited in any USPTO (including
`
`PTAB) proceedings related to the ’088 patent or related patents, or any references known to
`
`Uniloc or any affiliated party and the references cited in any invalidity contentions that have
`
`been or will be submitted in any action or proceedings involving the ’088 patent or related
`
`patents. Apple may also rely on expert testimony and any additional prior art located or
`
`developed during the course of discovery. Furthermore, Apple may rely on any of the prior art
`
`references in these Invalidity Contentions to demonstrate a motivation to combine. Apple may
`
`also rely on expert testimony to demonstrate a motivation to combine.
`
`Apple may also rely on (i) foreign counterparts of U.S. patents identified in these
`
`Invalidity Contentions; (ii) U.S. counterparts of foreign patents and foreign patent applications
`
`identified in these invalidity contentions; and (iii) U.S. and foreign patents and patent
`
`applications corresponding to articles and publications identified in these Invalidity Contentions.
`
`Moreover, Apple reserves the right to rely on uncited portions of the identified prior art, rely on
`
`other references (irrespective of whether such references themselves qualify as prior art) to show
`
`the state of the art, and/or to rely on expert testimony to provide context to, or aid in,
`
`understanding the cited portions of the identified prior art.
`
`16
`
`

`

`A.
`
`Anticipation
`
`The asserted claims of the ’088 patent are anticipated by the prior art identified and
`
`detailed in Appendices 1-8. Apple contends that each item of prior art identified above and/or in
`
`the accompanying charts anticipates one or more of the asserted claims of the ’088 patent, either
`
`expressly, implicitly, or inherently as understood by a person having ordinary skill in the art. In
`
`some instances, Apple treats certain prior art as anticipatory where certain elements are
`
`inherently present in light of the apparent claim constructions applied in Uniloc’s Infringement
`
`Contentions. Apple currently takes no position as to whether the preamble of any asserted claim
`
`is limiting, and expressly reserves all rights to take any position with respect to such preambles
`
`for purposes of claim construction, invalidity, inequitable conduct, non-infringement, or
`
`otherwise. To the extent that any claim identified above is found not to be anticipated by a
`
`corresponding reference, such claim would have been obvious over that reference.
`
`B.
`
`Obviousness
`
`Under 35 U.S.C. § 103, a patent is invalid if the claimed subject matter as a whole would
`
`have been obvious to one of ordinary skill in the art at the time the invention was made. PRE-
`
`AIA 35 U.S.C. § 103(a). In general, a claimed invention is unpatentable if the differences
`
`between it and the prior art “are such that the subject matter as a whole would have been obvious
`
`at the time the invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” PRE-AIA 35 U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1,
`
`13-14 (1966). The ultimate determination of whether an invention is or is not obvious is a legal
`
`conclusion based on underlying factual inquiries including: “scope and content of the prior art;
`
`(2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the
`
`17
`
`

`

`prior art; and (4) objective evidence of nonobviousness.” Miles Labs., Inc. v. Shandon, Inc., 997
`
`F.2d 870, 877 (Fed. Cir. 1993); see also Graham, 383 U.S. at 17-18.1
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (“KSR”) reaffirmed Graham,
`
`holding that a claimed invention can be obvious even if there is no teaching, suggestion, or
`
`motivation (the “TSM test”) for combining the prior art to produce that invention. In determining
`
`whether a claim is obvious, “[o]ften, it will be necessary for a court to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design community or present
`
`in the marketplace; and the background knowledge possessed by a person having ordinary skill
`
`in the art, all in order to determine whether there was an apparent reason to combine the known
`
`elements in the fashion claimed by the patent at issue.” Id. at 418. In KSR, the Supreme Court
`
`unanimously rejected the TSM test long used by the United States Court of Appeals for the
`
`Federal Circuit to determine when references can be combined to find a claim obvious under §
`
`103. In its place, the Court directed the immediate application of a broad, flexible analysis in
`
`determining the patentability/validity of claimed subject matter when tested against the statutory
`
`mandate that claims be non-obvious. Id. at 415.
`
`To be nonobvious, an improvement must be “more than the predictable use of prior art
`
`elements according to their established functions.” Id. at 417. “The proper question [for a court
`
`to ask is] whether a [person] of ordinary skill, facing the wide range of needs created by
`
`developments in the field of endeavor, would have seen a benefit to upgrading” the disclosure of
`
`one prior art reference with that of another. Id. at 424. “Common sense teaches . . . that familiar
`
`items may have obvious uses beyond their primary purposes, and in many cases a person of
`
`1 To date, Uniloc has not offered any objective evidence of non-obviousness. Apple reserves the
`right to supplement its Invalidity Contentions to respond to any such evidence should Uniloc
`raise them in the future.
`
`18
`
`

`

`ordinary skill will be able to fit the teachings of multiple patents together like pieces of a
`
`puzzle.” Id. at 420. The person of ordinary skill in the art should not be limited to looking at
`
`prior art designed to solve the same problem nor to approaching that art from the perspective of
`
`solving the problem the patentee claimed to have been solving. Id. at 419-20.
`
`Any suggested obviousness combinations set forth herein are in the alternative to Apple’s
`
`anticipation contentions and are not to be construed to suggest that any reference included in any
`
`combination is not anticipatory in its own right. In particular, Apple is currently unaware of the
`
`extent to which Uniloc will contend that certain limitations of the asserted claims are not
`
`disclosed in the art identified by Apple as anticipatory. To the extent that an issue arises with
`
`respect to any such claim limitation, Apple reserves the right to identify other references and
`
`combinations, which may make obvious the addition of the allegedly missing limitation to the
`
`disclosed system or method.
`
`The test for obviousness is not whether the features of a secondary reference may be
`
`bodily incorporated into the structure of the primary reference; nor is it that the claimed
`
`invention must be expressly suggested in any one or all of the references. Rather, the test is what
`
`the combined teachings of the references would have suggested to those of ordinary skill in the
`
`art. See In re Keller, 642 F.2d 413 (CCPA 1981). The obviousness combinations set forth in the
`
`Appendices are not premised on a bodily incorporation theory, but instead are premised on
`
`combining the disclosures of features and functions from one reference with those of the other
`
`references cited in Appendices. The rationale to combine or modify prior art references is
`
`significantly stronger when the references seek to solve the same problem, come from the same
`
`field, and correspond well. In re Inland Steel Co., 265 F.3d 1354, 1362 (Fed. Cir. 2001). The
`
`Federal Circuit has allowed two references to be combined as invalidating art under similar
`
`19
`
`

`

`circumstances, namely “[the prior art] focus[es] on the same problem that the … patent
`
`addresses: enhancing [the flexibility of stents]. Moreover, both [prior art references] come from
`
`the same field …. Finally, the solutions to the identified problems found in the two references
`
`correspond well.” Id. at 1364 (concerning patents and prior art relating to improving the
`
`magnetic and electrical properties of steel). M