`
`Jonathan D. Baker (SBN 196062)
`Craig Y. Allison (SBN 161175)
`DICKINSON WRIGHT RLLP
`800 W. California Avenue, Suite 110
`Sunnyvale, California 94086
`Telephone: (408) 701-6200
`Facsimile: (844) 670-6009
`jdbaker@dickinsonwright.com
`callison@dickinsonwright.com
`
`
`Robert T. Haslam (SBN 71134)
`Anupam Sharma (SBN 229545)
`James D. Hovard (SBN 300034)
`COVINGTON & BURLING LLP
`3000 El Camino Real, 5 Palo Alto Square
`Palo Alto, California 94306-2112
`Telephone: + 1 (650) 632-4700
`
`Robert J. Williams (SBN 247428)
`COVINGTON & BURLING LLP
`2701 Two ifc, Shanghai ifc
`No. 8 Century Avenue
`Pudong New District
`Shanghai, China 200120
`Telephone: +86 (21) 6036-2500
`
`Ruixue Ran (Pro Hac Vice to be Filed)
`Sheng Huang (SBN 295744)
`COVINGTON & BURLING LLP
`2301 Tower C Yintai Centre
`2 Jianguomenwai Avenue
`Beijing, China 100022,
`Telephone: +86 (10) 5910-0591
`
`Attorneys for Defendants
`
`
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`LG Electronics Inc.,
`
`
`Plaintiff,
`
` Civil Case No.: 2:19−cv−09474−JAK
`
`
`DEFENDANTS’ PATENT LOCAL
`RULE 3-3 DISCLOSURE OF
`INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS.
`7,839,452, 9,271,191, 10,334,311
`AND RE46,795
`
`
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`Hisense Electronics Manufacturing
`Company of America Corporation, et al.
`
`
`Defendants.
`
`v.
`
`
`
`Roku EX1016
`U.S. Patent No. 10,334,311
`
`

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`
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`Defendants1 hereby submit their Invalidity Contentions with respect to U.S. Patent
`Nos. 7,839,452 (“the ’452 patent”), 9,271,191 (“the ’191 patent”), 10,334,311 (“the ’311
`patent”) and RE46,795 (“the ’795 patent”) pursuant to N.D. Cal. Local Rule 3-3 and 3-4,
`which the parties agreed shall apply to this case. Docket No. 36 at 11:5-7.
`I.
`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
`
`Plaintiffs (“LGE”) have asserted the following patents (collectively “the asserted
`patents”) and corresponding claims against Hisense:
`
`U.S. Patent No.
`7,839,452
`9,271,191
`10,334,311
`RE46,795
`
`Asserted Claims
`Claims 1–3, 5–17, 19–21, 23
`Claims 1, 4–6, 9–11, 14–16, 19–20
`Claims 1, 3–5, 7, 9–12, 14–16, 18, 20–21
`Claims 20–35
`
`Hisense contends that each asserted claim of the asserted patents is invalid under at
`least 35 U.S.C. §§ 101, 102, 103, and/or 112. Hisense provides these contentions to
`apprise LGE of Hisense’s invalidity contentions. Hisense identifies below prior art
`patents, publications, disclosures, uses, sales, and offers for sale that anticipate or render
`obvious the asserted claims under 35 U.S.C. §§ 102 or 103. Hisense reserves the right to
`rely on other references disclosed or incorporated by reference in these Invalidity
`Contentions, in the identified prior art, in the asserted patents or any related patents, in
`the file histories of the asserted patents or any related patents, or in the references
`disclosed in inter partes review of any of the asserted patents as well as in the exhibits
`attached hereto.
`Hisense has attached charts identifying exemplary prior art that anticipate or render
`
`
`1 Hisense Electronics Manufacturing Company of America Corporation; Hisense USA Corporation;
`Hisense International (Hong Kong) America Investment Co., Limited (f/k/a Hisense International
`America Holdings Co., Limited); Hisense International (HK) Co., Limited; Hisense International Co.
`Ltd.; Qingdao Hisense Electronics Co. Ltd. (f/k/a Hisense Electric Co., Ltd. and currently known as
`Hisense Visual Technology Co., Ltd.); and Hisense Co., Ltd. (collectively “Hisense”).
`
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`2
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`obvious each of the asserted claims in Exhibits A-01-A-06, B-01-B-06, C-01-C-06, and
`D-01-D-03. For each asserted claim that is anticipated or rendered obvious by an
`exemplary reference or combination, the corresponding claim chart includes a citation to
`that reference or combination for each limitation. Where Hisense cites to a particular
`figure in a prior art reference, the citation should be understood to encompass the caption
`and description of the figure and any text relating to the figure in addition to the figure
`itself. Conversely, where a cited portion of text refers to a figure, the citation should be
`understood to include the figure as well.
`Furthermore, while Hisense has identified at least one citation per limitation
`present in a reference or combination, each and every disclosure of the same or similar
`limitation in the same reference or combination is not necessarily identified. In an effort
`to focus the issues, Hisense cites only portions of identified references, even where a
`reference or combination may contain additional support for a particular claim element.
`Thus, Hisense may rely on uncited portions of the prior art references for additional
`support for a particular element. Similarly, where there are multiple references relating
`to a single prior art product or system, Hisense may cite only to a single reference for a
`particular limitation, even though other references may also contain similar teachings.
`Hisense also may rely on uncited references relating to a particular piece of prior art or
`system for additional support for a particular element.
`Any prior art disclosed as anticipating a limitation also renders that limitation
`obvious. Additionally, persons of ordinary skill in the art generally read a prior art
`reference as a whole and in the context of other publications and literature. Numerous
`prior art references, including those identified herein and in the attached exhibits, reflect
`common knowledge and the state, scope, and content of the prior art before the priority
`date of the asserted claims of the asserted patents. Hisense may rely on uncited portions
`of the prior art references and on other publications and expert testimony, e.g.,
`declarations provided during inter partes review of the asserted patents, to provide
`context and as aids to understanding and interpreting the portions that are cited. To the
`
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`3
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`extent any limitation is deemed not to be exactly met by an item or combination of prior
`art, then Hisense reserves its right to show that any purported differences are such that the
`claimed subject matter as a whole would have been obvious to one skilled in the art at the
`time of the alleged invention, in view of the state of the art and knowledge of those
`skilled in the art.
`Hisense also identifies herein exemplary grounds upon which it contends that the
`asserted claims are invalid for failure to meet the requirements of 35 U.S.C. § 112(1) and
`(2). Although Hisense is continuing to investigate grounds of invalidity based upon
`indefiniteness, lack of enablement, and inadequate written description, it believes that one
`or more of the asserted claims are invalid for failure to comply with 35 U.S.C. § 112. At
`least based upon LGE’s apparent claim interpretations pursuant to its Infringement
`Contentions, LGE’s claims are invalid under 35 U.S.C. § 112 for the following reasons:
`(a) the specifications of the asserted patents lack a written description of the claimed
`inventions in full, clear, concise, and exact terms as required by 35 U.S.C. § 112(1); (b)
`the specifications of the asserted patents lack an enabling disclosure as required by 35
`U.S.C. § 112(1); and/or (c) the asserted claims are invalid as indefinite under 35 U.S.C. §
`112(2) because the claims fail to particularly point out and distinctly claim the subject
`matter which the applicants regarded as their invention.
`In particular, the specifications of one or more of the asserted patents lack a written
`description of the alleged invention in full, clear, concise, and exact terms as required by
`35 U.S.C. § 112(1), and thus fail to provide sufficient information in the original
`disclosure to show the inventor possessed the invention at the time of the original filing.
`See Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927-28 (Fed. Cir. 2004).
`Hisense thus contends that one or more of the asserted claims are also invalid under 35
`U.S.C. § 112(1).
`Further, the specifications of one or more of the asserted patents lack an enabling
`disclosure as required by 35 U.S.C. § 112(1). See Sitrick v. Dreamworks, LLC, 516 F.3d
`993, 1000 (Fed. Cir. 2008) (holding that the inventors must set forth sufficient
`
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`information in the specification to enable one of ordinary skill in the art to make and use
`the invention without undue experimentation). Hisense thus contends that one or more of
`the asserted claims of the asserted patents are not enabled.
`A patent must contain one or more claims “particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. §
`112(2). A claim is considered indefinite, however, if it does not “give notice to the
`public of the extent of the legal protection offered by the patent, so that interested
`members of the public, e.g., competitors or the patent owner, can determine whether or
`not they infringe.” Default Proof Credit Card Sys. Inc. v. Home Depot U.S.A., Inc., 412
`F.3d 1291, 1302-03 (Fed. Cir. 2005) (internal quotes and citations omitted). Such a claim
`is invalid. See id; Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106,
`1114 (Fed. Cir. 2002). Hisense thus contends that one or more of the asserted claims are
`invalid for failure to satisfy the definiteness requirement of 35 U.S.C. § 112(2).
`These contentions are not intended to proffer any proposed claim constructions.
`Hisense has prepared these Invalidity Contentions, in part, based on positions adopted by
`LGE in its Patent Local Rule 3-1 Infringement Contentions. As a result, it is important to
`note that where an element of a prior art reference is associated with a given claim
`element herein, this does not mean that Hisense necessarily contends or agrees that the
`limitation is present in the prior art reference under the proper interpretation of the claim,
`but rather that the limitation may be present either under (1) the proper interpretation of
`the claim or (2) an interpretation which will apparently be asserted by LGE, which may
`be erroneous.
`Hisense does not concede the accuracy of LGE’s apparent proposed claim scope or
`constructions or application of such constructions to Hisense’s products accused of
`infringement, and reference to those constructions should not be construed as an
`admission that the prior art meets the claims under all constructions. In light of the prior
`art disclosed herein, the asserted claims cannot be both valid and infringed by any of
`Hisense’s products.
`
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`Hisense notes that the Court has not yet construed the claims of the asserted
`patents. The Court’s final claim constructions may affect the Invalidity Contentions
`proposed by Hisense. In accordance with the Local Rules and the Court’s Scheduling
`Order, Hisense reserves the right to amend and/or supplement these contentions after the
`Court’s ruling on claim construction and/or if information otherwise comes to light
`requiring amendment or supplementation of these Invalidity Contentions. Additionally,
`although Hisense has been diligently searching for prior art, the outbreak of COVID-19
`has significantly impacted Hisense’s capacity to locate and obtain copies of prior art
`documents not otherwise available electronically, including product prior art or archival
`versions of printed publication prior art. Since these contentions are provided early in
`discovery, Hisense reserves the right to supplement and/or amend these contentions based
`on additional information, references, or versions of references that become available
`during discovery.
`
`Moreover, as shown below, Hisense contends that certain claim terms are
`indefinite, and that certain claims are not enabled and/or not supported by written
`description, and therefore the asserted claims are invalid under 35 U.S.C. § 112. For
`the purposes of these Invalidity Contentions, Hisense has made assumptions regarding
`possible meanings of indefinite and/or unsupported claim terms. By making these
`assumptions, Hisense does not admit that any claim language satisfies 35 U.S.C. § 112.
`Similarly, the use of asserted claim terms herein should not be understood to mean that
`such terms, as used in the asserted patents or claims thereof, are definite or otherwise
`comply with the conditions of patentability under 35 U.S.C. § 112. Likewise, the use
`of asserted claim terms herein should not be understood to suggest or imply a common,
`usual, ordinary, customary, plain, or accepted meaning in the art for any such term.
`II. THE COMBINATION OF PRIOR ART TEACHINGS AND REFERENCES
`In general, a claimed invention is invalid due to obviousness “if the differences
`between the claimed invention and the prior art are such that the claimed invention as a
`whole would have been obvious before the effective filing date of the claimed invention to
`
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`a person having ordinary skill in the art.” 35 U.S.C. § 103; 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: “(1) the
`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 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.
`The U.S. Supreme Court decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415
`(2007) (“KSR”) reaffirmed Graham, but at the same time held that a claimed invention can
`be obvious even if there is no teaching, suggestion, or motivation for combining the prior
`art to produce that invention. In summary, KSR holds that patents which are based on new
`combinations of elements or components already known in a technical field may be found
`to be obvious. See generally KSR, 398 U.S. at 415. Specifically, the Supreme Court in
`KSR rejected a rigid application of the “teaching, suggestion, or motivation [to combine]”
`test. Id. at 418. “In determining whether the subject matter of a patent claim is obvious,
`neither the particular motivation or the avowed purpose of the patentee controls. What
`matters is the objective reach of the claim.” Id. at 418-419. “Under the correct analysis,
`any need or problem known in the field of endeavor at the time of invention and addressed
`by the patent can provide a reason for combining the elements in the manner claimed.” iid.
`at 419.
`In addition, in KSR, the Supreme Court emphasized the principle that “[t]he
`combination of familiar elements according to known methods is likely to be obvious when
`it does no more than yield predictable results.” KSR, 398 U.S. at 416. A key inquiry is
`whether the “improvement is more than the predictable use of prior art elements according
`to their established functions.” Id. at 417. In view of the Supreme Court’s KSR decision,
`the PTO issued a set of new Examination Guidelines. See Examination Guidelines for
`Determining Obviousness Under 35 U.S.C. § 103 in view of the Supreme Court Decision
`in KSR International Co. v. Teleflex, Inc., 72 Fed. Reg. 57526 (October 10, 2007). Those
`
`
`
`7
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`

`
`
`Guidelines summarized the KSR decision, and identified various rationales for finding a
`claim obvious, including those based on other precedents. Those rationales include:
`(a) Combining prior art elements according to known methods to yield
`predictable results;
`(b) Simple substitution of one known element for another to obtain
`predictable results;
`(c) Use of a known technique to improve similar devices (methods, or
`products) in the same way;
`(d) Applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`(e) “Obvious to try” – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`(f) Known work in one field of endeavor may prompt variations of it for
`use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art; and
`(g) Some teaching, suggestion, or motivation in the prior art that would
`have led one of ordinary skill to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed
`invention.
`Id. at 57529. Hisense contends that one or more of these or other rationales apply
`in considering the obviousness of the asserted claims, and Hisense reserves the right to
`demonstrate that a person of ordinary skill in the art (“POSA”) would have been
`motivated to make the claimed combinations at the time of the alleged inventions in the
`Asserted Claims based on the above or other rationales, and to rely on expert opinion
`advancing the relevant motivations to combine prior art references according to the
`procedural schedule.
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`8
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`III. PATENT L.R. 3-3 INVALIDITY CONTENTIONS
`A. Invalidity contentions for U.S. Patent No. 7,839,452
`The asserted claims and associated description of the ’452 patent relate to an
`allegedly novel way of displaying on-screen text in digital televisions that accounts for
`different possible screen resolutions.
`Below, Hisense identifies prior art references that form the basis of its invalidity
`contentions for the asserted claims of the ’452 patent. Also, in the attached Exhibits
`A01-A06, Hisense provides citations to exemplary prior art references for each term of
`the asserted claims. Hisense’s decision to provide such citations to some prior art
`references and not to others does not prejudice Hisense’s ability to rely on all art
`identified in these invalidity contentions, regardless of whether such art appears in the
`charts of Exhibits A01-A06. Hisense contends that the asserted claims are invalid, as
`further explained below.
`The ’452 patent issued from U.S. Patent Application 11/785,524, which is a
`continuation of U.S. Patent Application Number 11/374,112, filed on Mar. 14, 2006,
`which is a divisional of U.S. Patent Application Number 09/922,863, filed on Aug. 7,
`2001, which claims priority to Korean Patent Application No. 2000-45807, filed on Aug.
`8, 2000, under 35 U.S.C. §119. Without conceding the priority date to which any asserted
`claim is entitled, Hisense has identified invalidating prior art references and applicable
`subsections of 35 U.S.C. § 102 based on LGE’s asserted priority date of Aug. 8, 2000 for
`the asserted claims of the ’452 patent. Hisense explicitly reserves the right to challenge
`this priority date and any other priority date asserted by LGE.
`1. PATENT L.R. 3-3(a) THE IDENTITY OF EACH ITEM OF PRIOR ART
`THAT ALLEGEDLY ANTICIPATES EACH ASSERTED CLAIM OR
`RENDERS IT OBVIOUS.
`Each of the references below (and/or the underlying products described therein)
`qualifies as prior art under one or more sections of 35 U.S.C. §§ 102 and/or 103. The
`invalidating disclosure in each of the listed references and materials is express and/or
`inherent. Also, as shown below, any document or product anticipating an asserted claim
`
`
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`9
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`
`
`Date of Filing
`
`June 20, 1995
`February 16, 1994
`May 31, 1995
`July 19, 1996
`
`Date of
`Issue/Publication
`March 6, 1996
`July 16, 1996
`July 23, 1996
`December 9,
`1997
`February 10,
`June 3, 1994
`1998
`September 27, 1996 March 31, 1998
`March 21, 1996
`May 5, 1998
`May 26, 1995
`August 18, 1998
`April 2, 1996
`March 30, 1999
`June 2, 1997
`August 31, 1999
`October 21, 1998
`October 2, 2001
`
`pursuant to 35 U.S.C. § 102 also renders the claim obvious pursuant to 35 U.S.C. § 103
`when viewed alone or in combination with other prior art references provided herein.
`The references provided herein may also be relied upon to show the state of the art at the
`relevant times.
`Hisense contends that the following items of prior art form the basis for its
`invalidity contentions under 35 U.S.C. §§ 102 and/or 103 for the asserted claims, as
`explained more fully in subsections 2 and 3 below:
`• Patents and Applications
`Patent or Patent
`Application No.
`(short name)
`EP 0 700 211
`U.S. 5,537,151
`U.S. 5,539,479
`U.S. 5,696,912
`
`Inventor(s)
`
`Mitani
`Orr et al.
`Bertram
`Bicevskis et al.
`
`U.S. 5,717,436
`U.S. 5,734,436
`U.S. 5,748,256
`U.S. 5,796,960
`U.S. 5,889,564
`U.S. 5,946,051
`U.S. 6,297,797
`
`Cahill, III
`Abe et al.
`Tsukagoshi
`Bicevskis et al.
`Tsukagoshi
`Bril
`Takeuchi et al.
`
`Hisense further contends that the Applicant Admitted Prior Art in the ’452 Patent
`forms the basis for its invalidity contentions under 35 U.S.C. §§ 102 and/or 103 for the
`asserted claims. For the reasons set forth above, Hisense reserves the right to modify
`and/or amend these lists.
`Other publications that may anticipate or render obvious the asserted claims of the
`’452 patent are listed below.
`
`• Patents and Applications
`
`
`
`10
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`
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`Inventor(s)
`
`Date of Filing
`
`U.S. 5,696,912
`
`Bicevskis et al.
`
`July 19, 1996
`
`Patent or Patent
`Date of
`Application No.
`Issue/Publication
`(short name)
`March 6, 1996
`June 20, 1995
`Mitani
`EP 0 700 211
`September 16, 1998 March 24, 1999
`Kataoka et al.
`EP 0 903 886
`September 17, 1997
`July 7, 1999
`Kamada
`EP 0 928 105
`July 2, 1998
`January 21, 2000
`Kobayashi
`JP 2000-23061
`JP 2000-165770 Kobayashi et al. November 20, 1998
`June 16, 2000
`KR 2000-0046164
`KIM
`December 31, 1998
`July 25, 2000
`U.S. 5,426,462
`Tuan
`October 7, 1994
`June 20, 1995
`U.S. 5,463,728
`Blahut et al.
`March 14, 1995
`October 31, 1995
`U.S. 5,537,151
`Orr et al.
`February 16, 1994
`July 16, 1996
`U.S. 5,539,479
`Bertram
`May 31, 1995
`July 23, 1996
`U.S. 5,543,850
`Pratt et al.
`January 17, 1995
`August 6, 1996
`November 26,
`U.S. 5,579,030
`Karow
`September 29, 1994
`1996
`U.S. 5,600,373
`Chui et al.
`June 27, 1996
`February 4, 1997
`February 18,
`U.S. 5,604,824
`Chui et al.
`September 22, 1994
`1997
`U.S. 5,638,498
`Tyler et al.
`June 7, 1995
`June 10, 1997
`November 4,
`U.S. 5,684,510
`Brassell et al.
`July 19, 1994
`1997
`December 9,
`1997
`February 10,
`June 3, 1994
`1998
`September 27, 1996 March 31, 1998
`March 21, 1996
`May 5, 1998
`June 1, 1995
`May 19, 1998
`May 23, 1997
`June 2, 1998
`March 6, 1996
`July 28, 1998
`May 26, 1995
`August 18, 1998
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`January 18, 1996
`January 19, 1999
`July 9, 1996
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`April 2, 1996
`March 30, 1999
`January 11, 1996
`June 8, 1999
`December 3, 1996
`June 22, 1999
`May 29, 1997
`July 27, 1999
`June 2, 1997
`August 31, 1999
`
`U.S. 5,717,436
`U.S. 5,734,436
`U.S. 5,748,256
`U.S. 5,754,873
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`
`Cahill, III
`Abe et al.
`Tsukagoshi
`Nolan
`Adams et al.
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`Herz et al.
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`Bril
`
`
`
`11
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`

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`Nawaz et al.
`Horton
`Herz et al.
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`Takeuchi et al.
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`• Publications
`Title
`
`March 7, 2005
`International Filing
`Date: April 16, 1996
`Priority Data: May
`9, 1995
`International Filing
`Date: June 17, 1997
`Priority Data: June
`17, 1996
`International Filing
`Date: April 30, 1998
`Priority Data: May
`2, 1997
`April 5, 1996
`June 30, 1999
`July 2, 1999
`May 19, 2000
`
`September 28,
`1999
`October 19, 1999
`November 23,
`1999
`November 23,
`1999
`December 7,
`1999
`July 17, 2001
`October 2, 2001
`April 30, 2002
`November 1,
`2005
`December 18,
`2007
`September 1,
`2005
`
`November 14,
`1996
`
`December 24,
`1997
`
`November 12,
`1998
`
`October 21, 1997
`August 14, 2001
`April 5, 2000
`December 16,
`2000
`
`Author/Publish
`er
`
`Publication
`Date
`
`
`
`12
`
`

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`
`David Turner
`
`January 14, 1998
`
`
`
`Glyph Hell: An introduction to glyphs, as
`used and defined in the FreeType engine:
`version 1.0 (html version)
`CEA Standard: Digital Television (DTV)
`Closed Captioning CEA-708-B
`In the Matter of Reallocation of Television
`Channels 60-69, the 746-806 MHz Band,
`ET Docket No. 97-157
`Generating Automatically Tuned Bitmaps
`from Outlines
`L64005 Enhanced MPEG-2 Audio/Video
`Decoder Technical Manual
`L64007 MPEG-2, DVB, JSAT Transport
`Demultiplexer Technical Manual
`ATSC Standard: Program and System
`Information Protocol for Terrestrial
`Broadcast and Cable Doc. A65/2013
`Overview of Multimedia Application
`Development
`
`Window Based Graphics for the digital
`Set Top Box
`
`December 1999
`
`January 6, 1998
`
`January 1993
`
`May 1998
`
`January 1997
`
`August 7, 2013
`
`August 1996
`
`at least by 1997
`(copyright date
`is 1997)
`
`Consumer
`Electronics
`Association
`Federal
`Communications
`Commission
`JOHN D.
`HOBBY
`LSI Logic
`Corporation
`LSI Logic
`Corporation
`Advanced
`Television
`Systems
`Committee
`Kirk Jonathan
`Marple
`Gerard
`Benbassat,
`Mario Giani,
`Gerard Chauvel
`2. PATENT L.R. 3-3(b) WHETHER EACH ITEM OF PRIOR ART
`ANTICIPATES EACH ASSERTED CLAIM OR RENDERS IT
`OBVIOUS. IF A COMBINATION OF ITEMS OF PRIOR ART MAKE A
`CLAIM OBVIOUS, EACH SUCH COMBINATION, AND THE
`MOTIVATION TO COMBINE SUCH ITEMS.
`The following list identifies exemplary prior art that anticipates or alternately
`renders obvious the asserted claims of the ’452 patent either alone or in combination with
`one or more other references, for example from subsection 1. Representative citations
`within exemplary prior art references for the ’452 patent can be found in the attached
`chart, provided as Exhibits A-01-A-06.
`
`At least the following prior art anticipates one or more of the asserted claims of the
`’452 patent:
`
`
`
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`
`
`
`1. U.S. Pat. No. 5,537,151
`2. U.S. Pat. No. 5,734,436
`3. U.S. Pat. No. 5,748,256
`4. U.S. Patent. No. 6,297,797
`5. European Patent Application Pub. No. EP 0,700,211
`6. U.S. Pat. No. 5,889,564
`
`Hisense further contends that the asserted claims of the ’452 patent are invalid as
`obvious under 35 U.S.C. § 103. Each anticipatory prior art reference or system disclosed
`in the preceding section, either alone or in combination with other prior art, renders the
`asserted claims invalid as obvious, as described in the appended exemplary claim charts.
`In particular, each anticipatory prior art reference may be combined with (1) information
`known to persons skilled in the art at the time of the alleged invention, (2) any of the
`other anticipatory prior art references, and/or (3) any of the additional prior art identified
`below in this section. To the extent that LGE contends that any of the anticipatory prior
`art fails to disclose one or more limitations of the asserted claims, Hisense reserves the
`right to identify other prior art references that, when combined with the anticipatory prior
`art, would render the claims obvious despite the allegedly missing limitation.
`
`One of skill in the art, at the time the alleged invention was made, would have been
`
`motivated to combine the references listed above in such a way as to reach the alleged
`invention. The reason, suggestion, or motivation to combine these references is found,
`explicitly or implicitly: (a) in the prior art references themselves; (b) in the prior art as a
`whole; (c) in the knowledge or common sense of those of ordinary skill in the art; and/or
`(d) from the nature of the problem to be solved.
`Below are several examples of prior art combinations with respect to
`particular ’452 patent claim limitations. These prior art combinations are not exhaustive;
`rather, they are illustrative examples of the prior art combinations disclosed generally
`above and in the appended claim charts. These exemplary combinations are alternatives
`
`
`
`14
`
`

`

`
`
`to Hisense’s anticipation and single-reference obviousness contentions, and thus, they
`should not be interpreted as indicating that any of the individual references included in
`the exemplary combinations are not alone invalidating prior art under 35 U.S.C. §§ 102
`and/or 103.
`U.S. Pat. No. 5,537,151
`1. U.S. Pat. No. 5,537,151 in view of U.S. Pat. No. 5,748,256
`2. U.S. Pat. No. 5,537,151 in view of the Applicant Admitted Prior Art
`3. U.S. Pat. No. 5,537,151 in view of U.S. Pat. No. 5,946,051
`4. U.S. Pat. No. 5,537,151 in view of U.S. Pat. No. 5,796,960
`5. U.S. Pat. No. 5,537,151 in view of U.S. Pat. No. 5,748,256 and the
`Applicant Admitted Prior Art
`6. U.S. Pat. No. 5,537,151 in view of U.S. Pat. No. 5,946,051 and U.S. Pat. No.
`5,796,960
`7. U.S. Pat. No. 5,537,151 in view of the Applicant Admitted Prior Art and
`U.S. Pat. No. 5,946,051
`8. U.S. Pat. No. 5,537,151 in view of the Applicant Admitted Prior Art and
`U.S. Pat. No. 5,796,960
`9. U.S. Pat. No. 5,537,151 in view of the Applicant Admitted Prior Art, U.S.
`Pat. No. 5,946,051, and U.S. Pat. No. 5,796,960
`10. U.S. Pat. No. 5,734,436
`11. U.S. Pat. No. 5,734,436 in view of U.S. Pat. No. 5,717,436
`12. U.S. Pat. No. 5,734,436 in view of U.S. Pat. No. 5,796,960
`13. U.S. Pat. No. 5,734,436 in view of the Applicant Admitted Prior Art
`14. U.S. Pat. No. 5,734,436 in view of U.S. Pat. No. 5,717,436 and the
`Applicant Admitted Prior Art
`15. U.S. Pat. No. 5,734,436 in view of U.S. Pat. No. 5,717,436 and U.S. Pat. No.
`5,796,960
`
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`27
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`
`
`
`15
`
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`

`
`
`16. U.S. Pat. No. 5,734,436 in view of U.S. Pat. No. 5,717,436, U.S. Pat. No.
`5,796,960, and the Applicant Admitted Prior Art
`17. U.S. Pat. No. 5,748,256
`18. U.S. Pat. No. 5,748,256 in view of the Applicant Admitted Prior Art
`19. U.S. Pat. No. 5,748,256 in view of U.S. Pat. No. 5,539,479
`20. U.S. Pat. No. 5,748,256 in view of the Applicant Admitted Prior Art and
`U.S. Pat. No. 5,539,479
`21. U.S. Patent. No. 6,297,797
`22. U.S. Patent. No. 6,297,797 in view of the Applicant Admitted Prior Art
`23. U.S. Patent. No. 6,297,797 in view of European Patent Application Pub. No.
`EP 0,700,211
`24. U.S. Patent. No. 6,297,797 in view of U.S. Pat. No. 5,796,960
`25. U.S. Patent. No. 6,297,797 in view of European Patent Application Pub. No.
`EP 0,700,211 and U.S. Pat. No. 5,796,960
`26. U.S. Patent. No. 6,297,797 in view of the Applicant Admitted Prior Art and
`European Patent Application Pub. No. EP 0,700,211
`27. European Patent Application Pub. No. EP 0,700,211
`28. European Patent Application Pub. No. EP 0,700,211 in view of the
`Applicant Admitted Prior Art
`29. European Patent Appli