IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`VARTA MICROBATTERY GMBH,
`
`Plaintiff,
`
`v.
`
`COSTCO WHOLESALE CORPORATION
`
`C.A. No. 2:20-cv-00051-JRG
`
`LEAD CASE
`
`AMAZON.COM, INC.
`
`C.A. No. 2:20-cv-00052-JRG
`
`BEST BUY CO., INC., ET AL
`
`C.A. No. 2:20-cv-00054-JRG
`
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`C.A. No. 2:20-cv-00029-JRG
`
`PEAG, LLC
`
`C.A. No. 2:20-cv-00071-JRG
`
`AUDIO PARTNERSHIP LLC, ET AL,
`
`C.A. No. 2:20-cv-00138-JRG
`
`Defendants.
`
`DEFENDANTS’ P.R. 3-3 INVALIDITY CONTENTIONS
`
`Pursuant to the Docket Control Order in this case (Dkt. No. 54) and Local Patent Rule 3-
`
`3, Defendants Samsung Electronics America, Inc., PEAG, LLC d/b/a JLab Audio, and Audio
`
`Partnership LLC and Audio Partnership PLC d/b/a Cambridge Audio (collectively,
`
`“Defendants”) provide their invalidity contentions to Plaintiff VARTA Microbattery GmbH
`
`(“Plaintiff” or “Varta”) in support of Defendants’ allegations of invalidity of United States Patent
`
`Nos. 9,153,835 (“the ’835 patent”); 9,799,858 (“the ’858 patent”); 9,799,913 (“the ’913 patent”);
`
`and 9,496,581 (“the ’581 patent”) (collectively, the “Asserted Patents”).
`
`1
`
`VARTA Ex. 2012 Page 1 of 93
`PEAG/Audio Partnership v. VARTA
`IPR2020-01212
`
`

`

`I.
`
`INTRODUCTION
`
`As disclosed in its respective P. R. 3-1 Infringement Contentions served on Defendants,
`
`Plaintiff asserts the following patents and claims:
`
`Asserted Patents
`U.S. Patent No. 9,153,835
`U.S. Patent No. 9,496,581
`U.S. Patent No. 9,799,8581
`U.S. Patent No. 9,799,913
`
`Asserted Claims
`1, 2, 4-12
`1, 2, 4-12
`1-8
`
`1-8
`
`
`As further detailed in and supported by these Invalidity Contentions, Defendants contend
`
`that each Asserted Claim is invalid under at least 35 U.S.C. §§ 102, 103, and/or 112.2
`
`Defendants reserve the right to challenge the Asserted Claims on bases other than those required
`
`to be disclosed in these disclosures pursuant to P. R. 3-3.3
`
`Defendants incorporate, in full, all prior art references cited in the Asserted Patents and
`
`any patent applications to which the Asserted Patents claim priority, and the Asserted Patents’
`
`respective prosecution histories.
`
`II.
`
`AMENDMENT AND SUPPLEMENTATION
`
`Defendants’ Invalidity Contentions pertain to the Asserted Claims as identified in
`
`
`
`1 Varta has not asserted the ’858 patent against Samsung, Costco Wholesale, or Amazom.com, or
`against any Samsung product, and thus these contentions with respect to the ’858 patent are
`submitted only on behalf of PEAG and the Audio Partnership defendants. Samsung and its
`customer defendants reserve the right to submit their own Invalidity Contentions to the extent the
`’858 patent becomes relevant with respect to one or more of them, or any Samsung product.
`
`2 References to Title 35 of the United States Code are to statutes prior to amendment under the
`America Invents Act (“AIA”), as the Asserted Patents purport to have effective filing dates prior
`to applicable AIA effective dates.
`
`3 For example, Defendants note that Patent Local Rule 3-3 does not require the disclosure of
`unenforceability contentions in a party’s Invalidity Contentions.
`
`
`
`2
`
`VARTA Ex. 2012 Page 2 of 93
`
`

`

`Plaintiff’s Infringement Contentions. To the extent the Court later allows Plaintiff to amend its
`
`Infringement Contentions and/or assert one or more claims or patents other than the Asserted
`
`Claims or Asserted Patents, respectively, Defendants reserve the right to modify, amend, or
`
`supplement these Invalidity Contentions accordingly to, for example, show the invalidity of any
`
`such newly asserted claims.
`
`These Invalidity Contentions are based on Defendants’ current understanding of the
`
`Asserted Claims and Plaintiff’s apparent view of the scope of those claims as shown, for
`
`example, in Plaintiff’s Infringement Contentions. A Markman Order in this case has not yet been
`
`issued, and in no way shall these Invalidity Contentions be taken as any admission or
`
`acquiescence by Defendants as to the proper scope of the Asserted Claims and/or proper claim
`
`constructions of terms and phrases recited in those claims. By identifying prior art that
`
`anticipates and/or renders obvious the Asserted Claims, Defendants do not admit that the claim
`
`limitations are capable of construction, do not admit that any claim limitations are supported
`
`with an appropriate written description and enabling disclosure in the applicable patent
`
`specifications, and do not adopt Plaintiff’s apparent claim constructions or admit the accuracy of
`
`any particular claim construction.4 Defendants reserve all rights to later challenge or oppose any
`
`claim constructions advanced by Plaintiff and to present their own claim construction positions.
`
`Defendants further reserve the right to revise these Invalidity Contentions in view of the
`
`4 Defendants do not concede that Plaintiff’s constructions are correct, but rather assert the well-
`established principle that whatever infringes a claim if later in time anticipates if earlier in time.
`Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). Thus,
`where Plaintiff for purposes of its infringement case alleges that a feature of an accused product
`meets a particular limitation recited in one or more of the Asserted Claims, then that feature,
`should it be found in the prior art, would also cause that limitation to be met for invalidity
`purposes.
`
`3
`
`VARTA Ex. 2012 Page 3 of 93
`
`

`

`Court’s construction of terms and phrases recited in one or more of the Asserted Claims,
`
`additional information obtained during discovery, additional infringement theories put forth by
`
`Plaintiff during fact and/or expert discovery, any findings as to the priority date(s) of the
`
`Asserted Claims, and/or positions that Plaintiff, its fact witnesses, or its expert witness(es) may
`
`take concerning claim construction, infringement, and/or invalidity issues.
`
`Defendants further reserve the right to supplement their accompanying P.R. 3-4(b)
`
`document production should they later discover additional prior art documents, information,
`
`testimony, prior art systems and related documentation, and/or software or hardware code,
`
`including but not limited to information provided by third parties after the date of service of
`
`these Invalidity Contentions.
`
`Defendants may further rely on inventor admissions concerning the scope or state of the
`
`prior art relevant to the Asserted Claims, the patent prosecution histories of the Asserted Patents,
`
`related patents and/or patent applications, any deposition or trial testimony of a named inventor
`
`on the Asserted Patents, and the papers filed and any evidence produced or submitted by Plaintiff
`
`in connection with this case or other related litigation. Defendants reserve the right to contend
`
`that one or more of the Asserted Claims are invalid under 35 U.S.C. § 102(f) in the event
`
`Defendants obtain evidence that any of the named inventors did not invent the subject matter in
`
`the Asserted Claims with which they are associated on the face of the Asserted Patents.
`
`Prior art not included in these Invalidity Contentions, whether known or not known to
`
`Defendants, may become relevant. In particular, Defendants are currently unaware of the extent,
`
`if any, to which Plaintiff will contend that limitations of the Asserted Claims are not disclosed in
`
`the prior art identified in these Invalidity Contentions. Accordingly, Defendants reserve the right
`
`to identify other references that would disclose the allegedly missing limitation(s) of the claimed
`
`
`
`4
`
`VARTA Ex. 2012 Page 4 of 93
`
`

`

`method, device, or system.
`
`The references identified in these Invalidity Contentions, which include the attached
`
`claim charts, may disclose the elements of the Asserted Claims explicitly and/or inherently,
`
`and/or they may be relied upon to show the state of the art in the relevant time frame. References
`
`identified in these Invalidity Contentions, as well as the “References Cited” on the faces of the
`
`Asserted Patents and the patents cited within the bodies of the Asserted Patents, may be used to
`
`illustrate, but not limit the scope of, the state of the art to which the Asserted Patents pertain (i.e.,
`
`at a time prior to the date of alleged inventions of the Asserted Claims of the Asserted Patents).
`
`Moreover, Defendants reserve the right to rely on later identified sources of information,
`
`including but not limited to witness testimony and other discovery, to establish the state of the art
`
`in the relevant time frame pertaining to the Asserted Patents.
`
`Because discovery has just recently begun, Defendants anticipate that additional prior art
`
`and invalidity bases may be found. Defendants’ investigation and analysis of the prior art is
`
`continuing, and thus Defendants reserve the right to supplement, amend, and/or revise the
`
`information provided herein as Defendants conduct further investigation and/or analysis,
`
`including identifying, charting, and relying on additional references.
`
`Additionally, in view of likely third-party discovery that will be taken, Defendants
`
`reserve the right to present additional items of prior art under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g) and/or § 103 located during discovery or further investigation, and to assert
`
`contentions of invalidity under 35 U.S.C. §§ 102(c), (d), or (f). For example, Defendants may
`
`issue subpoenas to third parties believed to have knowledge, documents, and/or other evidence
`
`concerning invalidity of one or more of the Asserted Claims.
`
`In addition to the positions and prior art identified in these Invalidity Contentions
`
`
`
`5
`
`VARTA Ex. 2012 Page 5 of 93
`
`

`

`(including the accompanying invalidity claim charts), Defendants also incorporate by reference
`
`all invalidity contentions, prior art,5 and invalidity claim charts (including, without limitation, all
`
`anticipation positions, obviousness positions (including all prior art combinations and
`
`motivations to combine), indefiniteness positions, written description positions, and non-
`
`enablement positions) concerning one or more of the Asserted Patents, as disclosed at any time.
`
`This includes without limitation disclosures in previous or related litigation, in United States
`
`Patent & Trademark Office (“USPTO”) proceedings, by the Plaintiff, by any other parties
`
`accused of patent infringement by the Plaintiff, or by the named inventors or any individuals
`
`associated with the prosecution and/or post-grant review of the Asserted Patents.
`
`Plaintiff has a duty to produce to Defendants all relevant documents from these
`
`proceedings including but not limited to all prior art, invalidity contentions, and expert
`
`declarations or reports on invalidity (among other relevant items).
`
`Defendants reserve the right to supplement or otherwise amend these Invalidity
`
`Contentions in response to any relevant discovery provided by third parties, Plaintiff, opening or
`
`rebuttal expert reports, fact or expert depositions, or in response to any claim construction
`
`ruling(s) issued by this Court (regardless of how and when such ruling is made). Defendants also
`
`reserve the right to supplement or otherwise amend these Invalidity Contentions in response to
`
`any rebuttal evidence disclosed by Plaintiff or as otherwise may be necessary or appropriate
`
`under the circumstances.
`
`
`
`5 Prior art appearing in the file histories of the Asserted Patents is not required to be separately
`produced by Defendants under P. R. 3-4(b).
`
`
`
`6
`
`VARTA Ex. 2012 Page 6 of 93
`
`

`

`III.
`
`P. R. 3-3(A) – IDENTIFICATION OF PRIOR ART
`
`Pursuant to P.R. 3-3, and subject to Defendants’ reservation of rights, Defendants identify
`
`at least the following prior art now known to Defendants to anticipate and/or render obvious the
`
`Asserted Claims of the ’835 patent, the ’581 patent, the ’858 patent, and the ’913 patent.6 As
`
`explained in their reservation of rights, Defendants have, in certain instances, applied the prior
`
`art in accordance with Plaintiff’s improper assertions of infringement and improper application
`
`of the Asserted Claims. Defendants do not agree with Plaintiff’s application, however, and deny
`
`infringement.
`
`Prior Art References for the ’835 Patent, the ’581 Patent, and the ’913 Patent
`
`Pursuant to P. R. 3-3, the tables below identify the prior art items that Defendants
`
`presently assert anticipate and/or render obvious the Asserted Claims of the ’835 patent,’581
`
`patent, and ’913 patent. Where applicable, this includes information about any alleged
`
`knowledge of use of the invention in this country prior to the date of invention of the ’835
`
`patent,’581 patent, and ’913 patent.
`
`Table 1: Prior Art Patents and Printed Publications
`
`Patent or Patent Application
`No.
`JP 2007-294111 (“Kobayashi”)
`WO 2008/109025 (“Kaun”)
`
`Country of Origin
`
`Date of Issue
`(if Issued Patent)
`
`Japan
`WIPO
`
`6 Defendants’ disclosure of prior art is generally premised on the alleged priority dates of the
`Asserted Patents as identified in Plaintiff’s Infringement Contentions. Defendants contend
`Plaintiff is not entitled those alleged priority dates, much less any earlier priority dates.
`Defendants therefore reserve the right to modify, amend, or supplement their invalidity
`contentions with additional prior art references if any Asserted Claim is shown to not be entitled
`to Plaintiff’s alleged priority dates or if Plaintiff alleges any other priority date for any of the
`Asserted Claims. Notwithstanding that reservation of rights, Defendants also reserve the right to
`argue that they have been unduly prejudiced should Plaintiff allege a different priority date for
`any of the Asserted Claims, and that accordingly Plaintiff should not be allowed to do so.
`
`7
`
`VARTA Ex. 2012 Page 7 of 93
`
`

`

`US 2006/0124973 (“Arai-973”)
`JP S62-113358 (“Yamamoto”)
`KR 2008-0092842 (“Higuchi”)
`JP 2003-31266 (“Koji”)
`US 2008/0003503 (“Kawakami”)
`US 2005/0233212 (“Kaun-212”)
`US 4,487,819 (“Koga”)
`JP 2006-40596 (“Yoshikawa”)
`DE 10 2009 017 514 (“Brenner”)
`US 8,703,327 (“Kim”)
`US 2007/0172728 (“Yamashita”)
`US 6,495,293 (“Arai-293”)
`US 2008/0003500 (“Issaev”)
`US 2003/0068557 (“Kumashiro”)
`US 2005/0142440 (“Yamaki”)
`EP 1 886 364 (“Ryou”)
`
`U.S.
`Japan
`South Korea
`Japan
`U.S.
`U.S.
`U.S.
`Japan
`Germany
`U.S.
`U.S.
`U.S.
`U.S.
`U.S.
`U.S.
`EPO
`
`
`
`
`
`
`
`Dec. 11, 1984
`
`
`Apr. 11, 2014
`
`Dec. 17, 2002
`
`
`
`Aug. 17, 2011
`
`Table 2: Prior Art Systems and Inventions
`
`Name of System or
`Invention
`
`Batteries made by InvenTek
`Corp., including its “Rolled-
`Ribbon” battery (“InvenTek
`Batteries”)
`
`Batteries made by Saft,
`including its LM 17130, LM
`22150, LO 34 SX, and VL
`34480 batteries (“Saft
`Batteries”)
`
`Date of Sale /
`Offer for Sale /
`Public Use
`Upon information and belief, InvenTek Batteries were publicly
`known or used in the United States at least as early as May
`2008, and were sold in the United States as early as November
`30, 2006. See Statement of Thomas Kaun and Exhibits thereto.
`See also, e.g.:
` https://web.archive.org/web/20041206230046/http://in
`ventekcorp.com/page3.html;
` https://web.archive.org/web/20071122010915/http://in
`ventekcorp.com/technology.html;
` https://web.archive.org/web/20071122011734/http://in
`ventekcorp.com/partners.html.
`
`
`Discovery is ongoing regarding the persons, entities, and
`circumstances surrounding the making of these batteries.
`Upon information and belief, Saft Batteries were publicly
`disclosed, used, sold, or offered for sale in the United States by
`Saft at least as early as September 2008. Saft Batteries are
`described in at least the following publications:
` https://www.saftbatteries.com/download_file/6X7JMG
`Anv3Fm6HdmtEv%252B2gtlbZ1bRRVHkjS11M6md
`92GD2EF7vU%252F3Oybbz3WOlG%252BxR8srpA5
`iCdJ%252FV3IQzTVHQyiTucngZKEg9KkYCLkowA
`
`8
`
`
`
`
`
`VARTA Ex. 2012 Page 8 of 93
`
`

`

`vgaG1huqxoaYWwEfWv6kxoE6NpquTJ9LEHjIeRJN
`cpGqbY3pSkyQFeypXD%252F1xO2%252FO9nSuKg
`%253D%253D/LM17130.398967aa-7316-4292-bd43-
`8f786df03595.pdf
`https://datasheetspdf.com/pdf-
`file/799068/SAFT/LM22150/1
`https://www.saftbatteries.com/download_file/6X7JMG
`Anv3Fm6HdmtEv%252B2gtlbZ1bRRVHkjS11M6md
`92GD2EF7vU%252F3Oybbz3WOlG%252BxR8srpA5
`iCdJ%252FV3IQzTVHQyiTucngZKEg9KkYCLkowA
`vgaG1huriELqxL0z4Zj5GzBqJEjHcuUmgRkyRKg%2
`52Fb2UWjaqEJwK3wVZjeJC2cz68EzPvQHg%253D
`%253D/LO34SX_cell_datasheet.9f428e0e-b2a8-47c6-
`a228-7b71052cb268.pdf
`https://web.archive.org/web/20071023161139/http://w
`ww.saftbatteries.com/130-
`Catalogue/PDF/VL_34480.pdf
`https://www.saftbatteries.com/download_file/6X7JMG
`Anv3Fm6HdmtEv%252B2gtlbZ1bRRVHkjS11M6md
`92GD2EF7vU%252F3Oybbz3WOlG%252BxR8srpA5
`iCdJ%252FV3IQzTVHQyiTucngZKEg9KkYCLkowA
`vgaG1huq1d69jsZmwPXR1CST1MBaukKfE4jWreOo
`1Tyf49Ug6QCcSSU2e7%252F4OBnAwQpzpaA%253
`D%253D/Selector-guide_54083-2-0320.pdf
`http://jumbohan.com/wp-
`content/uploads/2014/10/SAFT_Lithium_catalogue1.p
`df
`https://web.archive.org/web/20071108183747/http://w
`ww.saftbatteries.com//130-Catalogue/PDF/Li-
`ion_Capa.pdf
`
`
`
`
`
`
`
`
`
`
`
`
`
`Discovery is ongoing regarding the persons, entities, and
`circumstances surrounding the making of these batteries.
`Samsung subpoenaed Saft on July 8, 2020.
`Upon information and belief, Ultralife Batteries were publicly
`disclosed, used, sold, or offered for sale in the United States by
`Ultralife Corp. at least one year before the priority dates of the
`’835 patent, the ’581 patent, and the ’913 patent. Ultralife
`Batteries are described in at least the following publications:
`https://web.archive.org/web/20061109153052/http://w
`
`ww.ultralifebatteries.com/datasheet.php?ID=UB0006#t
`op
`https://web.archive.org/web/20061109154446/http://w
`ww.ultralifebatteries.com/documents/techsheets/UBI-
`5125_UB2519.pdf
`
`
`
`9
`
`Batteries made by Ultralife
`Corp., including its BA-
`5367/U battery (“Ultralife
`Batteries”)
`
`VARTA Ex. 2012 Page 9 of 93
`
`

`

` https://web.archive.org/web/20061109151535/http://w
`ww.ultralifebatteries.com/documents/whitepapers/UB
`M-5041-Military_Sheet.pdf
` https://www.ultralifecorporation.com/ECommerce/prod
`uct/ub0006/type-ba-5367-33v-limno2
` https://www.ultralifecorporation.com/default.asp?LIN
`KNAME=LITRACK&Literature_ID=178&nAction=G
`ET
` https://web.archive.org/web/20061109151110/http://w
`ww.ultralifebatteries.com/documents/whitepapers/Prod
`uct_Summary_Guide.pdf
` https://www.ultralifecorporation.com/default.asp?LIN
`KNAME=LITRACK&Literature_ID=1398&nAction=
`GET
`Discovery is ongoing regarding the persons, entities, and
`circumstances surrounding the making of these batteries.
`Samsung subpoenaed Ultralife on July 8, 2020.
`
`
`
`In addition to the above prior art references, Defendants identify the following patents,
`
`printed publications, product literature, and other materials that are pertinent to invalidity of the
`
`Asserted Claims. Defendants may rely on these references as invalidating prior art, evidence of
`
`the knowledge of those skilled in the art, and/or evidence to support a motivation to combine or
`
`modify other prior art. Defendants reserve all rights to supplement or modify these invalidity
`
`contentions and to rely on these references to prove invalidity of the Asserted Claims in a
`
`manner consistent with the Federal Rules of Civil Procedure and the Rules of this Court.
`
`Table 3: Additional Prior Art Patents and Printed Publications
`
`Additional Patent or Patent
`Application
`US 3,748,182 (“Brown”)
`EP 1 315 220 (“Urairi”)
`US 7,566,515 (“Suzuki”)
`JP H11345626 (“Shirasu”)
`US 2003/0003370 (“Arai-370”)
`JP 2003217562 (“Hara”)
`US 6,443,999 (“Cantave”)
`US 2010/0196756 (“Wakita”)
`US 5,378,560 (“Tomiyama”)
`
`
`
`Country of Origin
`
`U.S.
`EPO
`U.S.
`Japan
`U.S.
`Japan
`U.S.
`U.S.
`U.S.
`
`10
`
`Date of Issue
`(if Issued Patent)
`July 24, 1973
`Dec. 31, 2008
`July 28, 2009
`
`
`Dec. 12, 2007
`Sept. 3, 2002
`
`Jan. 3, 1995
`
`VARTA Ex. 2012 Page 10 of 93
`
`

`

`US 2008/0050652 (“Hirose”)
`US 2010/266893 (“Martin”)
`JP 2008251192 (“Hosoda”)
`US 2005/042506 (“Tomimoto”)
`US 6,045,944 (“Okada”)
`US 2003/193317 (“Shimamura”)
`JP 2008262826 (“Higuchi-826”)
`JP 2008262827 (“Higuchi-827”)
`US 2006/228629 (“Christian”)
`US 2005/171383 (“Arai-383”)
`JP 2008103109 (“Atsumi”)
`JP H01309254 (“Oo”)
`US 2004/048160 (“Komaru”)
`US 6,221,524 (“Andrew”)
`JP 2000082486 (“Inoue-486”)
`JP 2004158318 (“Funemi”)
`JP 2002352789 (“Oguma”)
`JP 2000331717 (“Okada”)
`JP H11245066 (“Okada”)
`JP H11176414 (“Kinoshita”)
`US 2002/146621 (“Yageta”)
`JP 2000156218 (“Soga”)
`US 2005/074667 (“Yang”)
`US 2004/115521 (“Cho”)
`US 2004/202933 (“Yamaki-933”)
`JP 2008198552 (“Sugano”)
`US 3,960,599 (“Reynier”)
`JP H05121056 (“Kagawa”)
`
`
`
`U.S.
`U.S.
`Japan
`U.S.
`U.S.
`U.S.
`Japan
`Japan
`U.S.
`U.S.
`Japan
`Japan
`U.S.
`U.S.
`Japan
`Japan
`Japan
`Japan
`Japan
`Japan
`U.S.
`Japan
`U.S.
`U.S.
`U.S.
`Japan
`U.S.
`Japan
`
`
`
`
`
`Apr. 4, 2000
`
`
`
`
`
`
`
`
`Apr. 24, 2001
`
`
`
`
`
`
`
`
`
`
`
`
`June 1, 1976
`
`
` Prior Art References for the ’858 Patent
`
`Pursuant to P.R. 3-3, the tables below identify the prior art items that PEAG and the
`
`Audio Partnership defendants presently assert anticipate and/or render obvious the Asserted
`
`Claims of the ’858 patent. Where applicable, this includes information about any alleged
`
`knowledge of use of the invention in this country prior to the date of invention of the ’858 patent.
`
`Table 4: Prior Art Patents and Printed Publications
`
`Patent or Patent Application
`No.
`JP 2007-294111 (“Kobayashi”)
`
`
`
`Country of Origin
`
`Japan
`
`11
`
`Date of Issue
`(if Issued Patent)
`
`
`VARTA Ex. 2012 Page 11 of 93
`
`

`

`US 2005/0233212 (“Kaun-212”)
`KR 10-2003-0087316 (“Kwon”)
`KR 2008-0092842 (“Higuchi”)
`JP 2003-31266 (“Koji”)
`US 8,703,327 (“Kim”)
`US 2003/0068557 (“Kumashiro”)
`US 2005/0142440 (“Yamaki”)
`JP 2008251192 (“Hosoda”)
`JP 2004158318 (“Funemi”)
`JP 2000331717 (“Okada”)
`JP S62-113358 (“Yamamoto”)
`US 2008/0003503 (“Kawakami”)
`US 7,981,541 (“Sato”)
`
`U.S.
`South Korea
`South Korea
`Japan
`U.S.
`U.S.
`U.S.
`Japan
`Japan
`Japan
`Japan
`U.S.
`U.S.
`
`
`
`
`
`Apr. 11, 2014
`
`
`
`
`
`
`
`July 19, 2011
`
`Table 5: Prior Art Systems and Inventions
`
`Name of System or
`Invention
`
`Batteries made by InvenTek
`Corp., including its “Rolled-
`Ribbon” battery (“InvenTek
`Batteries”)
`
`Batteries made by Saft,
`including its LM 17130, LM
`22150, LO 34 SX, and VL
`34480 batteries (“Saft
`Batteries”)
`
`Date of Sale /
`Offer for Sale /
`Public Use
`Upon information and belief, InvenTek Batteries were publicly
`known or used in the United States at least as early as May
`2008, and were sold in the United States as early as November
`30, 2006. See Statement of Thomas Kaun and Exhibits thereto.
`See also, e.g.::
` https://web.archive.org/web/20041206230046/http://in
`ventekcorp.com/page3.html;
` https://web.archive.org/web/20071122010915/http://in
`ventekcorp.com/technology.html;
` https://web.archive.org/web/20071122011734/http://in
`ventekcorp.com/partners.html.
`
`
`Discovery is ongoing regarding the persons, entities, and
`circumstances surrounding the making of these batteries.
`Upon information and belief, Saft Batteries were publicly
`disclosed, used, sold, or offered for sale in the United States by
`Saft at least as early as September 2008. Saft Batteries are
`described in at least the following publications:
` https://www.saftbatteries.com/download_file/6X7JMG
`Anv3Fm6HdmtEv%252B2gtlbZ1bRRVHkjS11M6md
`92GD2EF7vU%252F3Oybbz3WOlG%252BxR8srpA5
`iCdJ%252FV3IQzTVHQyiTucngZKEg9KkYCLkowA
`vgaG1huqxoaYWwEfWv6kxoE6NpquTJ9LEHjIeRJN
`cpGqbY3pSkyQFeypXD%252F1xO2%252FO9nSuKg
`
`12
`
`
`
`
`
`VARTA Ex. 2012 Page 12 of 93
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`%253D%253D/LM17130.398967aa-7316-4292-bd43-
`8f786df03595.pdf
`https://datasheetspdf.com/pdf-
`file/799068/SAFT/LM22150/1
`https://www.saftbatteries.com/download_file/6X7JMG
`Anv3Fm6HdmtEv%252B2gtlbZ1bRRVHkjS11M6md
`92GD2EF7vU%252F3Oybbz3WOlG%252BxR8srpA5
`iCdJ%252FV3IQzTVHQyiTucngZKEg9KkYCLkowA
`vgaG1huriELqxL0z4Zj5GzBqJEjHcuUmgRkyRKg%2
`52Fb2UWjaqEJwK3wVZjeJC2cz68EzPvQHg%253D
`%253D/LO34SX_cell_datasheet.9f428e0e-b2a8-47c6-
`a228-7b71052cb268.pdf
`https://web.archive.org/web/20071023161139/http://w
`ww.saftbatteries.com/130-
`Catalogue/PDF/VL_34480.pdf
`https://www.saftbatteries.com/download_file/6X7JMG
`Anv3Fm6HdmtEv%252B2gtlbZ1bRRVHkjS11M6md
`92GD2EF7vU%252F3Oybbz3WOlG%252BxR8srpA5
`iCdJ%252FV3IQzTVHQyiTucngZKEg9KkYCLkowA
`vgaG1huq1d69jsZmwPXR1CST1MBaukKfE4jWreOo
`1Tyf49Ug6QCcSSU2e7%252F4OBnAwQpzpaA%253
`D%253D/Selector-guide_54083-2-0320.pdf
`http://jumbohan.com/wp-
`content/uploads/2014/10/SAFT_Lithium_catalogue1.p
`df
`https://web.archive.org/web/20071108183747/http://w
`ww.saftbatteries.com//130-Catalogue/PDF/Li-
`ion_Capa.pdf
`
`Discovery is ongoing regarding the persons, entities, and
`circumstances surrounding the making of these batteries.
`Samsung subpoenaed Saft on July 8, 2020.
`Upon information and belief, Ultralife Batteries were publicly
`disclosed, used, sold, or offered for sale in the United States by
`Ultralife Corp. at least one year before the priority dates of the
`’835 patent, the ’581 patent, and the ’913 patent. Ultralife
`Batteries are described in at least the following publications:
`https://web.archive.org/web/20061109153052/http://w
`
`ww.ultralifebatteries.com/datasheet.php?ID=UB0006#t
`op
`https://web.archive.org/web/20061109154446/http://w
`ww.ultralifebatteries.com/documents/techsheets/UBI-
`5125_UB2519.pdf
`https://web.archive.org/web/20061109151535/http://w
`ww.ultralifebatteries.com/documents/whitepapers/UB
`M-5041-Military_Sheet.pdf
`
`
`
`
`
`13
`
`Batteries made by Ultralife
`Corp., including its BA-
`5367/U battery (“Ultralife
`Batteries”)
`
`VARTA Ex. 2012 Page 13 of 93
`
`

`

` https://www.ultralifecorporation.com/ECommerce/prod
`uct/ub0006/type-ba-5367-33v-limno2
` https://www.ultralifecorporation.com/default.asp?LIN
`KNAME=LITRACK&Literature_ID=178&nAction=G
`ET
` https://web.archive.org/web/20061109151110/http://w
`ww.ultralifebatteries.com/documents/whitepapers/Prod
`uct_Summary_Guide.pdf
` https://www.ultralifecorporation.com/default.asp?LIN
`KNAME=LITRACK&Literature_ID=1398&nAction=
`GET
`Discovery is ongoing regarding the persons, entities, and
`circumstances surrounding the making of these batteries.
`Samsung subpoenaed Ultralife on July 8, 2020.
`
`
`
`In addition to the above prior art references, PEAG and the Audio Partnership defendants
`
`identify the following patents, printed publications, product literature, and other materials that
`
`are pertinent to invalidity of the Asserted Claims. PEAG and the Audio Partnership defendants
`
`may rely on these references as invalidating prior art, evidence of the knowledge of those skilled
`
`in the art, and/or evidence to support a motivation to combine or modify other prior art. PEAG
`
`and the Audio Partnership defendants reserve all rights to supplement or modify these invalidity
`
`contentions and to rely on these references to prove invalidity of the Asserted Claims in a
`
`manner consistent with the Federal Rules of Civil Procedure and the Rules of this Court.
`
`Table 6: Additional Prior Art Patents and Printed Publications
`
`Additional Patent or Patent
`Application
`US 6,287,719 (“Bailey”)
`US 6,723,466 (“Oogami”)
`EP 1 315 220 (“Urairi”)
`US 7,566,515 (“Suzuki”)
`US 8,236,441 (“Gardner”)
`US 5,470,357 (“Schmutz”)
`US 6,379,839 (“Inoue-839”)
`US 5,432,027 (“Tuttle”)
`US 8,703,327 (“Kim”)
`
`
`
`Country of Origin
`
`U.S.
`U.S.
`EPO
`U.S.
`U.S.
`U.S.
`U.S.
`U.S.
`U.S.
`
`14
`
`Date of Issue
`(if Issued Patent)
`Sept. 11, 2001
`Apr. 20, 2004
`
`July 28, 2009
`Aug. 7, 2012
`Nov. 28, 1995
`Apr. 30, 2002
`July 11, 1995
`Apr. 22, 2014
`
`VARTA Ex. 2012 Page 14 of 93
`
`

`

`US 2005/042506 (“Tomimoto”)
`US 6,265,100 (“Saaski”)
`US 2005/0271938 (“Suzuki II”)
`US 2008/0003500 (“Issaev”)
`JP 2008262825 (“Higuchi-825”)
`US 2001/0009737 (“Lane”)
`
`
`
`U.S.
`U.S.
`U.S.
`U.S.
`Japan
`U.S.
`
`
`July 24, 2001
`
`
`
`
`
`IV.
`
`P. R. 3-3(B) & (C) – INVALIDITY UNDER §§ 102 & 103
`
`As explained below, and in the referenced claim charts, the Asserted Claims of the ’835
`
`patent,’581 patent,’858 patent, and’913 patent are invalid for anticipation and/or obviousness. In
`
`some instances, Defendants may have treated certain prior art as anticipatory where certain
`
`elements are expressly, implicitly, or inherently present based on Plaintiff’s apparent claim
`
`construction in Plaintiff’s Infringement Contentions. Defendants reserve the right to contend
`
`that each of the anticipatory references renders the claims obvious in view of the reference, either
`
`alone or in combination with other references. The identification of any patent or patent
`
`application should be deemed an identification of any counterpart patent or application; the
`
`identification of any article should be deemed a disclosure of any substantially similar article if
`
`published in some other form; and the identification of any patent or article should be deemed an
`
`identification of any product described therein.
`
` Anticipation
`
`In accordance with P.R. 3-3(b) and (c), prior art references anticipating the Asserted
`
`Claims are provided below. The prior art listed below anticipates the Asserted Claims under the
`
`proper construction of the claims and/or under Plaintiff’s apparent interpretation of the claims as
`
`set forth by Plaintiff in their Complaints and Infringement Contentions.
`
`Exhibit No.
`1
`
`Prior Art Item
`Kobayashi
`
`Anticipated Claims
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`
`
`
`15
`
`VARTA Ex. 2012 Page 15 of 93
`
`

`

`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Kaun
`
`Arai-973
`
`Yamamoto
`
`Koji
`
`Kawakami
`
`Higuchi
`
`InvenTek Batteries
`
`Saft Batteries
`
`10
`
`Ultralife Batteries
`
`11
`
`Kaun-212
`
`
`
` Obviousness
`
`’913 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’858 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’858 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’858 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’858 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`
`In addition to certain claims being anticipated as indicated above, the Asserted Claims are
`
`also invalid as obvious over the same teachings identified for anticipation. Further, the Asserted
`
`Claims are obvious over various combinations of the references shown in the claim charts
`
`accompanying or incorporated by reference into this disclosure. No Asserted Claim goes beyond
`
`
`
`16
`
`VARTA Ex. 2012 Page 16 of 93
`
`

`

`combining known elements to achieve predictable results or does more than choose between clear
`
`alternatives known to those of skill in the art. Thus, to the extent that an Asserted Claim is not
`
`anticipated, it is nevertheless invalid as obvious. Specifically, Defendants assert that any charted
`
`or incorporated reference in combination with one or more other charted or incorporated
`
`references renders the Asserted Claims obvious. Further, to the extent that an Asserted Claim is
`
`not anticipated or obvious, Defendants assert that any charted or incorporated reference in
`
`combination with the knowledge of a person of ordinary skill in the art during the relevant time
`
`period renders the Asserted Claims obvious.
`
`While reserving the right to rely on any combination of the references reflected in the
`
`attached charts or incorporated herein by reference, Defendants provide the following exemplary
`
`and non-exhaustive references and/or combinations evidencing invalidity of the claims of the
`
`Asserted Patents. The combinations of prior art listed below render obvious the Asserted Claims
`
`under the proper construction of the claims and/or under Plaintiff’s apparent interpretation of the
`
`claims as set forth by Plaintiff in their Complaints and Infringement Contentions.
`
`Kobayashi alone
`
`Combination
`
`Kobayashi in view of Kaun
`
`Kobayashi in view of Kaun-212
`
`Kobayashi in view of Yoshikawa
`
`Kobayashi in view of Koga
`
`Kobayashi in view of Brenner
`
`Claims Rendered Obvious
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2, and 4-12
`’913 patent: 1-8
`’858 patent: 1-8
`’835 patent: 1, 2, and 4-12
`’581 patent: 1, 2,