Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 1 of 7 PageID #: 2033
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:20-cv-00274-JRG
`(Lead Case)
`
`JURY TRIAL REQUESTED
`
`Case No. 2:20-cv-00335-JRG
`(Member Case)
`
`JURY TRIAL REQUESTED
`
`RFCYBER CORP.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`RFCYBER CORP.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`Pursuant to Local Patent Rule 4-3 and the Docket Control Order (Dkt. 63), Plaintiff
`
`RFCyber Corp. and Defendant Google LLC (“Google”) and Defendants Samsung Electronics
`
`Co., Ltd., and Samsung Electronics America, Inc. (“Samsung”) (collectively, “Defendants”),
`
`hereby submit this Joint Claim Construction and Prehearing Statement. In accordance with
`
`Patent Rule 4-2(c), the parties met and conferred on several occasions for the purposes of
`
`narrowing the issues and finalizing preparation of this Joint Claim Construction and Prehearing
`
`Statement.
`
`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 1 of 7
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`

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`Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 2 of 7 PageID #: 2034
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`A.
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`Agreed-Upon Constructions
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`The parties conducted meet-and-confers and have been able to reach agreement regarding
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`the construction of the following claim terms/phrases in the Asserted Patents.1 The chart below
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`provides the construction of those claim terms, phrases, or clauses on which the parties agree:
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`Claim Term
`
`Construction
`
`“emulator”2
`’218 patent – all claims
`’855 patent – all claims
`’787 patent – all claims
`
`“midlet”
`’218 patent – all claims
`’855 patent – all claims
`’787 patent – all claims
`
`“payment gateway”
`
`’046 patent – all claims
`
`“hardware device or program that pretends to be another particular
`device or program that other components expect to interact with”
`
`“software component suitable for being executed on a portable
`device”
`
`“server or collection of servers for settling a payment”
`
`
`
`
`B.
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`Disputed Claim Constructions
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`Exhibits A and B, attached hereto, identify the disputed claim terms.
`
`Exhibit A provides Plaintiff’s identification of intrinsic and extrinsic evidence supporting
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`its proposed constructions, as required by P.R. 4-3(b).
`
`
`1 The Asserted Patents are U.S. Patent Nos. 8,118,218 (the “’218 patent”), 8,448,855 (the “’855
`patent”), 9,189,787 (the “’787 patent”), 9,240,009 (the “’009 patent”) and 10,600,046 (the “’046
`patent”).
`2 Google states as follows: In its IPR petitions, Google proposed a substantially similar
`construction of the term “emulator”—namely, “hardware device or a program providing security
`that pretends to be another particular device or program that other components expect to interact
`with.” To narrow the issues to be decided by the Court, Google agrees to the construction
`advanced by Plaintiff and Samsung.
`
`
`
`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 2 of 7
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`

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`Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 3 of 7 PageID #: 2035
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`Exhibit B provides Defendants’ identification of intrinsic and extrinsic evidence
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`supporting their proposed constructions, as required by P.R. 4-3(b).
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`C.
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`Anticipated Length of Time for the Claim Construction Hearing
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`The Parties anticipate that the Claim Construction Hearing will take no longer than six
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`hours, or an amount of time to be determined by the Court. The parties do not expect to present
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`live testimony.
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`D.
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`Identification of Witnesses
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`1.
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`Statement by Plaintiff
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`Plaintiffs may rely on the testimony of Mark Jones as an expert witness regarding the
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`proposed constructions or to address disputes or constructions raised by Defendants. Such
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`testimony could include, inter alia, an explanation of the meaning of claim terms in the context
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`of the subject matter disclosed in the Asserted Patents, a discussion and tutorial regarding the
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`state of the technology relating to the alleged inventions claimed in the Asserted Patents, how a
`
`person of ordinary skill in the art would interpret the identified claim terms or phrases at the time
`
`the applications for the Asserted Patents were filed in light of their specifications, prosecution
`
`histories, and the knowledge of one of ordinary skill in the art, and an explanation as to why
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`certain terms or phrases are not indefinite. Pursuant to Local Patent Rule 4-3(d), a summary of
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`each opinion to be offered by Mark Jones is identified in the charts in Exhibit A.
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`2.
`
`Statement by Google
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`Defendants may rely on the testimony of Randy J. Vanderhoof as an expert witness
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`regarding the proposed constructions or to address disputes or constructions raised by Plaintiff.
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`Such testimony could include, inter alia, an explanation of the meaning of claim terms in the
`
`context of the subject matter disclosed in the Asserted Patents, a discussion and tutorial
`
`regarding the state of the technology relating to the alleged inventions claimed in the Asserted
`
`
`
`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 3 of 7
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`

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`Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 4 of 7 PageID #: 2036
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`Patents, how a person of ordinary skill in the art would interpret the identified claim terms or
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`phrases at the time the applications for the Asserted Patents were filed in light of their
`
`specifications, prosecution histories, and the knowledge of one of ordinary skill in the art, and an
`
`explanation as to why certain terms or phrases are indefinite. Pursuant to Local Patent Rule 4-
`
`3(d), a summary of each opinion to be offered by Mr. Vanderhoof is identified in the charts in
`
`Exhibit B.
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`3.
`
`Statement by Samsung
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`Defendants may rely on the testimony of Gerald W. Smith as an expert witness regarding
`
`the proposed constructions or to address disputes or constructions raised by Plaintiff. Such
`
`testimony could include, inter alia, an explanation of the meaning of claim terms in the context
`
`of the subject matter disclosed in the Asserted Patents, a discussion and tutorial regarding the
`
`state of the technology relating to the alleged inventions claimed in the Asserted Patents, how a
`
`person of ordinary skill in the art would interpret the identified claim terms or phrases at the time
`
`the applications for the Asserted Patents were filed in light of their specifications, prosecution
`
`histories, and the knowledge of one of ordinary skill in the art. Pursuant to Local Patent Rule 4-
`
`3(d), a summary of each opinion to be offered by Mr. Smith is identified in the charts in Exhibit
`
`B.
`
`E.
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`Other Issues
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`At present, the parties are unaware of any additional issues that would require the
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`scheduling of a pre-hearing conference.
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`F.
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`P.R. 4-3(b) Service of Expert Testimony
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`In accordance with Patent Rule 4-3(b) the parties will each, simultaneous with this filing,
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`serve a disclosure of expert testimony consistent with Fed. R. Civ. P. 26(a)(2)(B)(i)-(ii) or
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`26(a)(2)(C) for any expert on which it intends to rely to support its proposed claim construction
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`
`
`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 4 of 7
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`Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 5 of 7 PageID #: 2037
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`or indefiniteness position or to oppose any other party’s proposed claim construction or
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`indefiniteness position.
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`Dated: August 19, 2021
`
`By:
`
`/s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF
`RFCYBER CORP.
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`/s/ Vincent Y. Ling (with permission)
`Michael E. Jones
`Texas Bar No. 10929400
`POTTER MINTON, PC
`110 North College, Suite 500
`Tyler, TX 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 993-0846
`mikejones@potterminton.com
`
`OF COUNSEL:
`Zachary M. Briers (pro hac vice)
`Heather E. Takahashi (pro hac vice)
`Vincent Y. Ling (pro hac vice)
`Robin S. Gray (pro hac vice)
`Mica L. Moore (pro hac vice)
`MUNGER, TOLLES & OLSON LLP
`350 South Grand Avenue, Fiftieth Floor
`Los Angeles, California 90071-3426
`Telephone: (213) 683-9100
`Facsimile: (213) 687-3702
`zachary.briers@mto.com
`heather.takahashi@mto.com
`vinny.ling@mto.com
`robin.gray@mto.com
`mica.moore@mto.com
`
`ATTORNEYS FOR
`DEFENDANT GOOGLE LLC
`
`
`
`By: /s/ Allan A. Kassenoff (with permission)
`Richard A. Edlin
`Allan A. Kassenoff
`Rose Cordero Prey
`Jeffrey R. Colin
`
`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 5 of 7
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`

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`Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 6 of 7 PageID #: 2038
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`Vimal Kapadia
`GREENBERG TRAURIG, LLP
`MetLife Building, 200 Park Avenue
`New York, NY 10002
`Telephone: (212) 801-9200
`Facsimile: (212) 801-6400
`Email: edlinr@gtlaw.com
`Email: kassenoffa@gtlaw.com
`Email: preyr@gtlaw.com
`Email: colinj@gtlaw.com
`Email: kapadiav@gtlaw.com
`Melissa R. Smith
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`ATTORNEYS FOR DEFENDANTS
`SAMSUNG ELECTRONICS CO., LTD.,
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.
`
`
`
`
`
`
`
`
`
`
`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 6 of 7
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`Case 2:20-cv-00274-JRG Document 101 Filed 08/19/21 Page 7 of 7 PageID #: 2039
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on August 19, 2021.
`
`
`
`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
`
`
`
`
`
`
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that counsel for Plaintiff and counsel for Defendants have conferred
`
`regarding the foregoing Joint Claim Construction and Prehearing Statement.
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`Dated: August 19, 2021
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`
`
`
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`
`
`
`
`/s/ Vincent J. Rubino III
` Vincent J. Rubino, III
`
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`
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`GOOG-1034 / IPR2021-00955
`GOOGLE LLC v. RFCYBER CORP. / Page 7 of 7
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