IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`EXPRESS MOBILE, INC.,
`
`Case No. 6:20-cv-00804-ADA
`
`v.
`
`GOOGLE, LLC,
`
`Plaintiff,
`
`Defendant.
`
`Jury Trial Demanded
`
`
`
`
`
`PLAINTIFF EXPRESS MOBILE, INC.’S PRELIMINARY INFRINGEMENT
`CONTENTIONS AND IDENTIFICATION OF PRIORITY DATES
`
`Plaintiff Express Mobile, Inc. (“Plaintiff” or “Express Mobile”) serves its preliminary
`
`infringement contentions and identification of priority dates (“Disclosure”) on Defendant
`
`Google, LLC (“Defendant” or “Google”), (regarding U.S. Patent No. 6,546,397 (the “’397
`
`Patent”), U.S. Patent No. 7,594,168 (the “’168 Patent”), U.S. Patent No. 9,928,044 (the “’044
`
`Patent”), U.S. Patent No. 9,471,287 (the “’287 Patent”) and U.S. Patent No. 9,063,755 (the “’755
`
`Patent”) (collectively, the “patents-in-suit”).
`
`Express Mobile bases this Disclosure on its current knowledge, understanding, and belief
`
`as to the facts and information available as of the date of this Disclosures. Express Mobile has
`
`not yet completed its investigation, collection of information, discovery, or analysis relating to
`
`this action, and additional discovery, including discovery from Google and third parties, may
`
`lead Express Mobile to amend, revise, and/or supplement this Disclosure. Express Mobile
`
`specifically reserves the right to amend, revise and/or supplement this Disclosure and/or
`
`accompanying exhibits in accordance with any Orders of record in this matter, and Federal Rule
`
`of Civil Procedure 26(e), as additional documents and information become available and
`
`investigation proceed. Express Mobile further reserves the right to amend its Preliminary
`
`
`
`1
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`Page 1 of 6
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`GOOGLE EXHIBIT 1044
`
`
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`EXPRESS MOBILE, INC.,
`
`Case No. 6:20-cv-00804-ADA
`
`v.
`
`GOOGLE, LLC,
`
`Plaintiff,
`
`Defendant.
`
`Jury Trial Demanded
`
`
`
`
`
`PLAINTIFF EXPRESS MOBILE, INC.’S PRELIMINARY INFRINGEMENT
`CONTENTIONS AND IDENTIFICATION OF PRIORITY DATES
`
`Plaintiff Express Mobile, Inc. (“Plaintiff” or “Express Mobile”) serves its preliminary
`
`infringement contentions and identification of priority dates (“Disclosure”) on Defendant
`
`Google, LLC (“Defendant” or “Google”), (regarding U.S. Patent No. 6,546,397 (the “’397
`
`Patent”), U.S. Patent No. 7,594,168 (the “’168 Patent”), U.S. Patent No. 9,928,044 (the “’044
`
`Patent”), U.S. Patent No. 9,471,287 (the “’287 Patent”) and U.S. Patent No. 9,063,755 (the “’755
`
`Patent”) (collectively, the “patents-in-suit”).
`
`Express Mobile bases this Disclosure on its current knowledge, understanding, and belief
`
`as to the facts and information available as of the date of this Disclosures. Express Mobile has
`
`not yet completed its investigation, collection of information, discovery, or analysis relating to
`
`this action, and additional discovery, including discovery from Google and third parties, may
`
`lead Express Mobile to amend, revise, and/or supplement this Disclosure. Express Mobile
`
`specifically reserves the right to amend, revise and/or supplement this Disclosure and/or
`
`accompanying exhibits in accordance with any Orders of record in this matter, and Federal Rule
`
`of Civil Procedure 26(e), as additional documents and information become available and
`
`investigation proceed. Express Mobile further reserves the right to amend its Preliminary
`
`
`
`1
`
`Page 1 of 6
`
`GOOGLE EXHIBIT 1044
`
`
`
`Infringement Contentions, including the claims asserted, based on any proceeding(s) before the
`
`United States Patent and Trademark Office, if any, regarding any Express Mobile patent.
`
`Express Mobile reserves the right to supplement, modify or amend this Disclosure to include
`
`additional products or services made, used, sold, or offered for sale in or imported into the
`
`United States by Google.
`
`This Disclosure is made without prejudice to any position Express Mobile may take with
`
`respect to claim construction. Express Mobile reserves its right to supplement this Disclosure
`
`and exhibits based on the Court’s claim construction. Express Mobile further reserves the right
`
`to introduce and use such supplemental materials at trial.
`
`The information in this Disclosure is not an admission regarding the scope of any claims
`
`or the proper construction of those claims or any claims contained therein. The production of
`
`documents accompanying this Disclosure is not an admission that such documents are admissible
`
`and Express Mobile does not waive any objections regarding admissibility. Express Mobile
`
`reserves the right to supplement its production of documents accompanying this disclosure upon
`
`identification or receipt of additional documents, including documents from third parties.
`
`I.
`
`PRELIMINARY INFRINGEMENT CONTENTIONS
`
`Express Mobile’s preliminary infringement contentions are attached hereto as Exhibits
`A1-E11. At this stage, Express Mobile provides charts for the following claims of the Asserted
`Patents:
`
`•
`
`•
`
`’397 patent on Google Docs, Google Slides, Google Sheets, Google Forms,
`Google Drive, Google Gmail, Google Sites, Google Surveys (and Surveys 360),
`Google Data Studio, Google Analytics (and Analytics 360), and Google Ads:
`claim 1 (Exhibits A1-A11)
`’168 patent on Google Slides: claims 1 and 6 (Exhibit B)
`
`
`
`2
`
`Page 2 of 6
`
`
`
`•
`
`•
`
`‘755 patent on Google Docs, Google Slides, Google Sheets, Google Forms,
`Google Drive, Google Gmail, Google Sites, Google Surveys (and Surveys 360),
`Google Data Studio, Google Analytics (and Analytics 360), and Google Ads:
`claims 1, 2, 7, and 11 (Exhibits C1-C11)
`‘287 patent on Google Docs, Google Slides, Google Sheets, Google Forms,
`Google Drive, Google Gmail, Google Sites, Google Surveys (and Surveys 360),
`Google Data Studio, Google Analytics (and Analytics 360), and Google Ads:
`claims 1, 2, 7, and 11 (Exhibits D1-D11)
`‘044 patent on Google Docs, Google Slides, Google Sheets, Google Forms,
`Google Drive, Google Gmail, Google Sites, Google Surveys (and Surveys 360),
`Google Data Studio, Google Analytics (and Analytics 360), and Google Ads:
`claims 1, 2, 7, and 11 (Exhibits E1-E11)
`
`II.
`PRELIMINARY IDENTIFICATION OF THE PRIORITY DATE FOR EACH
`CLAIM OF THE ASSERTED PATENTS
`
`•
`
`Based on currently available information, Express Mobile identifies that the inventions of
`
`the ’397 and ’168 Patents were conceived by Steve Rempell at least as early as April 1999. Express
`
`Mobile further identifies that the inventions of the ’397 and ’168 Patents were reduced to practice
`
`by Steve Rempell at least as early as June 1999. Steve Rempell diligently worked to reduce the
`
`inventions of the ’397 and ’168 Patents to practice, including through source code development.
`
`Thus, each of the asserted claims of the ’397 and ’168 Patents are entitled to a priority date of at
`
`least as early as April 1999.
`
`Based on currently available information, Express Mobile identifies that the inventions of
`
`the ’755, ’287, and ’044 Patents were conceived by inventors Steve Rempell, David Chrobak, and
`
`Ken Brown at least as early as January 12, 2008. Express Mobile further identifies that the
`
`inventions of the ’755, ’287, and ’044 Patents were reduced to practice thereafter by at least as
`
`early as November 11, 2008. For example, Express Mobile identifies provisional patent
`
`
`
`3
`
`Page 3 of 6
`
`
`
`application No. 61/113,471, filed on November 11, 2008, as relevant to and supportive of the work
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`related to the identified reduction to practice at least as early as November 11, 2008. Express
`
`Mobile further identifies that Steve Rempell, Ken Brown, and Dave Chrobak diligently worked to
`
`reduce the inventions of the ’755, ’287, and ’044 Patents to practice, including through source
`
`code and other technical development. Thus, each of the asserted claims of the ’755, ’287, and
`
`’044 Patents are entitled to a priority date of at least as early as January 12, 2008. Alternatively,
`
`Express Mobile identifies that each of the asserted claims of the ’755, ’287, and ’044 Patents are
`
`entitled to a priority date of at least as early as November 11, 2008, which is the filing date of
`
`provisional patent application No. 61/113,471.
`
`Express Mobile’s investigation relating to the conception and reduction to practice of the
`
`patented inventions is ongoing and it therefore reserves the right to supplement and/or modify this
`
`date as discovery in this case continues.
`
`III. DOCUMENT
`PRODUCTION
`INFRINGEMENT CONTENTIONS
`
`ACCOMPANYING
`
`PRELIMINARY
`
`Subject to ongoing investigation and based on available information to date, non-privileged
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`documents due with these Preliminary Infringement Contentions, including at least documents
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`within Express Mobile’s possession, custody, and/or control evidencing conception and reduction
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`to practice for each claimed invention and a copy of the file history for each Patent-in-Suit, have
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`been produced or are being produced. Express Mobile reserves the right to supplement its
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`production and its identification of documents as additional discovery is conducted, including but
`
`not limited to third-party discovery evidencing conception and reduction to practice that may be
`
`produced in the ordinary course of these proceedings.
`
`Express Mobile identifies XMO_0000001 – XMO_00000343 as being copies of the
`
`Patents-in-Suit.
`
`
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`4
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`Page 4 of 6
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`
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`Express Mobile identifies XMO_00000344 – XMO_00003581 as being copies of the file
`
`histories for the Patents-in-Suit.
`
`As to the ’397 and ’168 patents, Express Mobile identifies XMO_00003614 –
`
`XMO_00006203 as evidencing the conception, reduction to practice, design, and development of
`
`each claimed invention.
`
`As to the ’755, ’287, and ’044 patents, Express Mobile identifies XMO_00006204 –
`
`XMO_00006543, XMO_00006544 – XMO_00006848, BROWN0000320 – BROWN0000401,
`
`BROWN0000587 – BROWN0001219, BROWN0005492 – BROWN0005524, BROWN0006788
`
`– BROWN0006813, BROWN0007406
`
`– BROWN0007416, BROWN0007419
`
`–
`
`BROWN0007420, BROWN0007613 – BROWN0007637, BROWN0008370 – BROWN0008591,
`
`BROWN0010534 – BROWN0010567, BROWN0010597 – BROWN0014509 as evidencing the
`
`conception, reduction to practice, design, and development of each claimed invention.
`
`Dated: February 5, 2021
`
`
`
`
`
`
`/s/ Robert F. Kramer
`Robert F. Kramer (pro hac vice)
`rkramer@feinday.com
`M. Elizabeth Day (pro hac vice)
`eday@feinday.com
`David Alberti (pro hac vice)
`dalberti@feinday.com
`Sal Lim (pro hac vice)
`slim@feinday.com
`Russell Tonkovich (pro hac vice)
`rtonkovich@feinday.com
`Marc Belloli (pro hac vice)
`mbelloli@feinday.com
`FEINBERG DAY KRAMER ALBERTI
`LIM TONKOVICH & BELLOLI LLP
`577 Airport Boulevard, Suite 250
`Burlingame, California 94010
`Telephone: (650) 825-4300
`Facsimile: (650) 460-8443
`
`Robert Christopher Bunt
`State Bar No. 0078716
`
`5
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`Page 5 of 6
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`
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`rcbunt@pbatyler.com
`Charles Lewis Ainsworth
`State Bar No. 00783521
`charley@pbatyler.com
`PARKER, BUNT & AINSWORTH, P.C.
`100 E. Ferguson Suite 418
`Tyler, Texas 75702
`903-531-3535
`
`Attorneys for Plaintiff,
`Express Mobile, Inc.
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that on February 5, 2021, a copy of the foregoing was
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`served via email to all counsel of record.
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`By: /s/ Adriana Cole
` Adriana Cole
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`6
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`Page 6 of 6
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