IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`SOLAS OLED LTD.,
`
`Plaintiff,
`
`vs.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`Case No. 2:21-cv-00105-JRG
`
`DEFENDANTS SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.’S
`INVALIDITY CONTENTIONS PURSUANT TO PATENT LOCAL RULES 3-3 AND 3-4
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 1
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`B.
`C.
`
`INTRODUCTION ............................................................................................................. 1
`U.S. PATENT NO. 8,526,767 ........................................................................................... 2
`A.
`Identification of Prior Art that Anticipates or Renders Obvious the
`Asserted Claims ..................................................................................................... 3
`Anticipation and Obviousness ............................................................................... 3
`Other Invalidity Grounds ....................................................................................... 8
`1.
`Enablement and/or Written Description Pursuant to 35 U.S.C.
`112(a) ......................................................................................................... 8
`Indefiniteness Pursuant to 35 U.S.C. 112(b).............................................. 9
`2.
`DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY
`CONTENTIONS.............................................................................................................. 11
`GENERAL RESERVATIONS ........................................................................................ 11
`
`I.
`II.
`
`III.
`
`IV.
`
`
`
`
`
`i
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 2
`
`

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`I.
`
`INTRODUCTION
`
`Pursuant to the Court’s Docket Control Order entered August 16, 2021 (D.I. 45) and
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`Patent Local Rules 3-3 and 3-4, Defendants Samsung Electronics Co., Ltd. and Samsung
`
`Electronics America, Inc. (collectively, “Samsung”) provide these preliminary invalidity
`
`contentions (“Invalidity Contentions”) to Solas OLED Ltd. (“Solas”) for the asserted claims of
`
`U.S. Patent No. 8,526,797 (“the ’797 Patent” or “the Asserted Patent”).
`
`Based on Solas’s Disclosure of Asserted Claims and Infringement Contentions
`
`(“Infringement Contentions”) served on July 12, 2021, Solas is asserting claims 1-3, 6, and 11-14
`
`of the ’767 Patent (collectively, “the Asserted Claims”). Samsung addresses the invalidity of the
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`Asserted Claims in these Invalidity Contentions, and concludes with a description of its
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`document production and identification of additional reservations and explanations.
`
`These Invalidity Contentions are based on the claim constructions or interpretations
`
`likely to be advanced by Solas (as reflected in Solas’s complaints and Infringement Contentions),
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`and are not necessarily based on what Samsung contends are the proper constructions. By
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`applying Solas’s apparent constructions and/or interpretations, Samsung does not concede in any
`
`way that those constructions are correct, and instead expressly reserves the right to oppose those
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`constructions. Samsung expressly reserves the right to amend these Invalidity Contentions after
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`the Court has construed all relevant claim terms under P.R. 3-6. Furthermore, some of
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`Samsung’s contentions herein are based on infringement allegations made by Solas. Samsung
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`does not concede in any way that those infringement allegations are correct, but rather asserts the
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`fundamental principle that whatever infringes a claim if later in time must anticipate if earlier in
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`time. These Invalidity Contentions use the acronym “POSITA” to refer to a person of ordinary
`
`skill in the art to which the alleged invention pertains around the priority date alleged by Solas.
`
`Samsung hereby incorporates by reference any invalidity contentions against the Asserted
`
`
`
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 3
`
`

`

`
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`Patent or any related patents from prior litigations. Solas is already in possession of any such
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`invalidity contentions and associated claim charts. Samsung further incorporates by reference all
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`prior art cited during prosecution of the Asserted Patent and any related patents. Samsung also
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`incorporates by reference all inter partes review (IPR) petitions filed against the Asserted Patent
`
`and any related patents and all prior art cited in these IPR petitions, including, but not limited to,
`
`IPR2021-01254.
`
`II.
`
`U.S. PATENT NO. 8,526,767
`
`U.S. Patent Application No. 12/254,043—the application leading to the ’767 Patent—was
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`filed with the United States Patent and Trademark Office on October 20, 2008. It purports to claim
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`priority to Provisional Application No. 61/049,453, filed on May 1, 2008. During prosecution of
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`the application leading to the ’767 Patent, the claims were rejected and amended multiple times.
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`In a December 5, 2012 interview, the Examiner proposed and Applicant agreed to add
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`language to the pending independent Claims 1 and 12-14 to specify that the “one-touch” state-
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`machines and the “multi-touch” state-machine are distinct from each other (not combined). In a
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`follow-up December 14, 2012 interview, Applicant suggested and the Examiner agreed to adding
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`language “wherein the multi-touch state-machine directly receives each of the outputs from the
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`first one-touch state-machine and the second one-touch state-machine,” in order to further limit
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`the claims in view of the prior art. In allowing the claims, the Examiner made the amendments
`
`authorized in the interviews and stated that certain of the prior art of record does not disclose the
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`limitations of the amended pending independent Claims 1 and 12-14.
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`Accordingly, Applicant obtained allowance over the prior art based on the “distinct” “one-
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`touch” state-machines and “multi-touch” state-machine, which directly receives outputs from the
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`first one-touch state-machine and the second one-touch state-machine. The sole support for
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`“distinct” one-touch state-machines and a multi-touch state-machine that receives output from the
`
`
`
`2
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 4
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`

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`first and second one-touch state machines is found in Figures 4-6 and the accompanying
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`disclosures, which were not included in Applicant’s provisional application. Applicant added this
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`new matter to the non-provisional application—U.S. Patent Application No. 12/254,043—which
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`ultimately issued as the ’767 Patent.1 Therefore, the earliest priority date to which the Asserted
`
`Claims are entitled is October 20, 2008. However, in its Infringement Contentions, Solas claims
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`a priority date of May 1, 2008. Nonetheless, these Invalidity Contentions render the Asserted
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`Claims invalid even if a May 1, 2008 priority date is used. Should Solas be permitted to amend or
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`modify its claimed priority date, Samsung reserves the right to serve additional or modified
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`invalidity contentions.
`
`A.
`
`Identification of Prior Art that Anticipates or Renders Obvious the Asserted
`Claims
`
`Samsung contends that the prior art references identified in Samsung’s contentions,
`
`including the attached exhibits, anticipate and/or render obvious the asserted claims.
`
`B.
`
`Anticipation and Obviousness
`
`Samsung attaches Exhibits 1 through 18, which provide disclosures showing how the
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`prior art anticipates and/or renders obvious the asserted claims of the ’767 Patent. The charts
`
`
`1 Indeed, much of the current specification was added in the non-provisional filing. See ’767
`Patent at Figs. 4-13 and corresponding text. Figures 1-3 and the accompanying disclosures do
`not cover the claimed embodiments. Specifically, Figure 1 “is limited to processing gestures
`made up of single touches” (id. at 8:36-46); Figure 2 expands the first embodiment “to cater for
`multitouch gestures,” with multitouch capability “provided by one additional state, the
`Multitouch state” within the same state-machine (id. at 10:51-61); and Figure 3 further develops
`the “Pressed state” of the second embodiment to “allow multiple interpretations of a single
`touch” based on duration (id. at 11:61-12:2). In the “fourth embodiment,” added in the non-
`provisional application, “[m]ultiple single-touch state machines are [] combined to handle
`multiple touch gestures.” Id. at 14:10-19, Fig. 4. The sixth embodiment discloses how this
`approach “can be used to give equivalent functionality to the state machine of the second
`embodiment” with a distinct two-touch state-machine that receives input from “two input state
`machines,” as recited in Claims 1-14. Id. at 14:34-56, Fig. 6.
`
`
`
`3
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 5
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`

`

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`identify primary references, and, in some cases, secondary references and obviousness
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`contentions.
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`Samsung’s anticipation and obviousness contentions are presented in the attached
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`exhibits, each of which describes anticipation and/or obviousness of one or more claims of the
`
`’767 Patent by a primary reference, alone or in combination with one or more secondary
`
`references.
`
`The U.S. Supreme Court in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007)
`
`emphasized that inventions arising from ordinary innovation, ordinary skill, or common sense
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`should not be patentable. Id. at 1732, 1738, 1742-1743, 1746. A patent claim may be obvious if
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`the combination of elements was obvious to try or if there existed at the time of the invention a
`
`known problem for which there was an obvious solution encompassed by the patent’s claims.
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`When a work is available in one field of endeavor, design incentives and other market forces can
`
`prompt variations of it, either in the same field or a different one. If a POSITA can implement a
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`predictable variation, Section 103 likely bars its patentability. Id. at 1740. The Court stated that
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`courts should “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
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`apparent reason to combine the known elements in the fashion claimed by the patent at issue.”
`
`Id. at 1740-41. KSR does not mandate evidence of a motivation or suggestion to combine prior
`
`art references. See TGIP, Inc. v. AT&T Corp., 527 F. Supp. 2d 561, 580-81 (E.D. Tex. 2007).
`
`“[A] court can take account of the inferences and creative steps that a person of ordinary skill in
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`the art would employ” to resolve the question of obviousness. KSR, 127 S. Ct. at 1741.
`
`
`
`4
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 6
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`

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`Based on these considerations, as further detailed in Exhibits 1 through 18, a POSITA
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`would have combined the teachings of the prior art references discussed and charted in those
`
`exhibits. The combinations of these references would have rendered obvious to one of ordinary
`
`skill in the art the subject matter of the asserted claims of the ’767 Patent. The references
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`identified in Exhibits 1 through 18 are analogous prior art to the subject matter of the Asserted
`
`Claims and, for at least the reasons set forth below, are properly combinable. Because these
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`prior art references exist within a single field of art, particularly one in which individuals in the
`
`field often shared and/or collaborated on their work, it would have been obvious for a POSITA
`
`to look from one piece of prior art to another in order to find any missing functionality they
`
`desired to implement. Therefore, these references provide interrelated teachings and one of
`
`ordinary skill would look to the concepts in any of these references when seeking to solve the
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`problems purportedly addressed by the ’767 Patent.
`
`Numerous prior art references, including those identified in the attached exhibits, reflect
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`common knowledge and the state of the prior art before the earliest effective priority date of the
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`’767 Patent. For at least the reasons described in these Invalidity Contentions, it would have
`
`been obvious to one of ordinary skill in the art to combine any of a number of prior art
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`references, including any combination of those identified in the attached exhibits, to meet the
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`limitations of the asserted claims of the ’767 Patent.
`
`No showing of a specific motivation to combine prior art is required to combine the
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`references disclosed above and in the attached charts, because each combination of art would
`
`have no unexpected results, and at most would simply represent a known alternative to one of
`
`ordinary skill in the art. See KSR, 127 S. Ct. at 1739-40 (rejecting the Federal Circuit’s “rigid”
`
`application of the teaching, suggestion, or motivation to combine test, instead espousing an
`
`
`
`5
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 7
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`

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`“expansive and flexible” approach). Indeed, the Supreme Court held that a person of ordinary
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`skill in the art is “a person of ordinary creativity, not an automaton” and “in many cases a person
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`of ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces
`
`of a puzzle.” Id. at 1742. Nevertheless, in addition to the information contained herein,
`
`Samsung hereby identifies additional motivations and reasons to combine the cited art.
`
`One or more combinations of the prior art references identified herein would have been
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`obvious because these references would have been combined using: known methods to yield
`
`predictable results; known techniques in the same way; a simple substitution of one known,
`
`equivalent element for another to obtain predictable results; and/or a teaching, suggestion, or
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`motivation in the prior art generally. In addition, it would have been obvious to combine the
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`prior art references identified above because there were only a finite number of predictable
`
`solutions and/or because known work in one field of endeavor prompts variations based on
`
`predictable design incentives and/or market forces either in the same field or a different one. In
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`addition, combining the prior art references identified above would have been obvious because
`
`the combinations represent known potential options with a reasonable expectation of success.
`
`Additional evidence that there would have been a motivation or reason to combine the
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`prior art references identified above includes the interrelated teachings of multiple prior art
`
`references; the effects of demands known to the design community or present in the marketplace;
`
`the existence of a known problem for which there was an obvious solution; the existence of a
`
`known need or problem in the field of endeavor at the time of the invention; and the background
`
`knowledge that would have been possessed by a POSITA. For example, the prior art references
`
`are generally directed to the same problems. Thus, a skilled artisan seeking to solve these
`
`problems would look to these cited references in combination.
`
`
`
`6
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 8
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`

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`Thus, the motivation or reason to combine the teachings of the prior art references
`
`disclosed herein is found in the references themselves and in: (1) the nature of the problems
`
`being solved; (2) the express, implied, and inherent teachings of the prior art; (3) the knowledge
`
`of a POSITA; (4) the fact that the prior art is generally directed towards the same problems; (5)
`
`the predictable results obtained in combining the different elements of the prior art; (6) the use of
`
`a known technique to improve similar devices, methods, or products in the same way; (7) the
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`predictable results obtained in applying a known technique to a known device, method, or
`
`product ready for improvement; (8) the finite number of identified predictable solutions having a
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`reasonable expectation of success; and/or (9) known work in various technological fields that
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`could be applied to the same or different technological fields based on design incentives or other
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`market forces.
`
`Samsung incorporates by reference prior art from the prosecution histories and
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`background sections of the ’767 Patent. Samsung expects to rely on testimony of one or more
`
`expert witnesses and documents referenced by those expert witnesses in support of these
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`contentions and incorporates those forthcoming expert reports as if fully set forth herein.
`
`Samsung also incorporates by reference inter partes review petition number IPR2021-
`
`01254 and its exhibits as providing additional basis for the motivation to combine prior art in
`
`order to arrive at the purported invention of the ’767 Patent. For example, the petition and
`
`declaration set forth the skill and knowledge of a POSITA, as well as information a POSITA
`
`would have considered when searching for and evaluating prior art.
`
`Samsung contends there are no secondary considerations of non-obviousness evidencing
`
`the validity of any of the Asserted Claims. If Solas presents any alleged evidence of secondary
`
`considerations of non-obviousness, Samsung reserves its right to respond to any such alleged
`
`
`
`7
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 9
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`

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`evidence. Further, to the extent any products allegedly practicing the claims have been
`
`successful, there is no nexus between the claimed inventions and the products’ success.
`
`C.
`
`Other Invalidity Grounds
`
`Samsung hereby identifies grounds of invalidity based on (1) lack of written description
`
`under 35 U.S.C. § 112(a); (2) lack of enablement under 35 U.S.C. § 112(a); and (3)
`
`indefiniteness under 35 U.S.C. § 112(b). These contentions shall not be construed as an
`
`admission that any claim construction advanced by Samsung in this case is in any way
`
`inconsistent, flawed, or erroneous. Nor should these contentions prevent Samsung from
`
`advancing claim construction and/or non-infringement positions in lieu of, or in addition to,
`
`invalidity positions. Further, these contentions shall not be construed as an admission of or
`
`acquiescence to Solas’s purported construction of the claim language or of other positions
`
`advanced by Solas during the course of this litigation. Samsung’s Invalidity Contentions under
`
`35 U.S.C. § 112 may depend, in part, on the Court’s claim construction, as well as Solas’s
`
`alleged scope of the asserted claims of the ’767 Patent. Consequently, Samsung only identifies
`
`the issues under 35 U.S.C. § 112 of which it is presently aware.
`
`1.
`
`Enablement and/or Written Description Pursuant to 35 U.S.C. 112(a)
`
`The ’767 Patent does not provide sufficient written description to establish the alleged
`
`inventor was in possession of the alleged inventions recited in certain of the asserted claims of
`
`the ’767 Patent at the time of filing. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`
`(Fed. Cir. 2010). In other words, the applicant did not describe the purported inventions in a
`
`manner that “reasonably conveys to those skilled in the art that the inventor had possession of the
`
`claimed subject matter as of the filing date.” Id. The specification of the ’767 Patent also does
`
`not enable one of ordinary skill in the art to make and/or use certain recited elements of the
`
`asserted claims of the ’767 Patent without undue experimentation.
`
`
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`8
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 10
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`

`

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`To the extent the following limitations are definite (under 35 U.S.C. § 112, second
`
`paragraph), the ’767 Patent fails to sufficiently describe or enable them as required under 35
`
`U.S.C. § 112, first paragraph:
`
` “data indicative of the interaction positions” (claims 1, 12, 13, 14)
`
` “receive, directly from the [first/second] one-touch state-machine module, the
`[first/second] output (claims 1, 12, 13, 14)
`
` “recognize, based on at least the first and second outputs, at least one multi-touch
`gesture” (claims 1, 12, 13, 14)
`
` “the first one-touch state-machine module, the second one-touch state-machine
`module, and the multi-touch state-machine module being distinct state-machine
`modules” (claims 1, 12, 13, 14)
`
` “each of the plurality of state-machine modules including an idle-state module and a
`plurality of gesture-interpretation-state modules, the idle-state module being entered at
`the start of operation and being able to be returned to from at least some of the gesture-
`interpretation-state modules” (claim 2)
`
` “each of the plurality of gesture-interpretation-state modules for each of the one-touch
`state-machine modules including a touch-state module and the idle-state module
`passing, responsive to a touch, control to the touch-state module” (claim 3)
`
` “the plurality of gesture-interpretation-state modules including a plurality of state
`modules operable to recognize motion-related gestures derived from one or more
`moving touches” (claim 6)
`
` “the position-processing logic being accommodated in, and running on, a first
`integrated circuit and the gesture-processing logic being accommodated in, and running
`on, one or more separate integrated circuits” (claim 11)
`
` “the gesture-processing logic” (claim 13)
`
`2.
`
`Indefiniteness Pursuant to 35 U.S.C. 112(b)
`
`Several of the asserted claims of the ’767 Patent are invalid because they fail to inform
`
`those skilled in the art about the scope of the alleged invention with reasonable certainty and are,
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`thus, indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and
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`distinctly claim the subject matter the applicant regards as the alleged invention. The primary
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`
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`9
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 11
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`function of this requirement is to ensure that the language of a patent claim is sufficiently
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`“definite” to inform the public of the boundaries of the protected invention. A lack of
`
`definiteness renders a patent claim invalid. “[A] patent is invalid for indefiniteness if its claims,
`
`read in light of the specification delineating the patent, and the prosecution history, fail to
`
`inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
`
`Certain asserted claims of the ’767 Patent are invalid as indefinite due to the following
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`limitations, which fail to inform, with reasonable certainty, those skilled in the art about the
`
`scope of the invention:
`
` “data indicative of the interaction positions” (claims 1, 12, 13, 14)
`
` “receive, directly from the [first/second] one-touch state-machine module, the
`[first/second] output (claims 1, 12, 13, 14)
`
` “recognize, based on at least the first and second outputs, at least one multi-touch
`gesture” (claims 1, 12, 13, 14)
`
` “the first one-touch state-machine module, the second one-touch state-machine
`module, and the multi-touch state-machine module being distinct state-machine
`modules” (claims 1, 12, 13, 14)
`
` “each of the plurality of state-machine modules including an idle-state module and a
`plurality of gesture-interpretation-state modules, the idle-state module being entered at
`the start of operation and being able to be returned to from at least some of the gesture-
`interpretation-state modules” (claim 2)
`
` “each of the plurality of gesture-interpretation-state modules for each of the one-touch
`state-machine modules including a touch-state module and the idle-state module
`passing, responsive to a touch, control to the touch-state module” (claim 3)
`
` “the plurality of gesture-interpretation-state modules including a plurality of state
`modules operable to recognize motion-related gestures derived from one or more
`moving touches” (claim 6)
`
` “the position-processing logic being accommodated in, and running on, a first
`integrated circuit and the gesture-processing logic being accommodated in, and running
`on, one or more separate integrated circuits” (claim 11)
`
`
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`10
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 12
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` “the gesture-processing logic” (claim 13)
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`III. DOCUMENT PRODUCTION ACCOMPANYING INVALIDITY CONTENTIONS
`
`Documents required to be produced under the Docket Control Order and Patent Local
`
`Rule 3-4 have been or are being produced to Solas under a separate letter or will be made
`
`available for inspection.
`
`Samsung reserves the right to produce and rely on additional documents relating to its
`
`products in view of, for example, additional information revealed during discovery regarding
`
`Solas’s allegations and/or amendments to Solas’s Infringement Contentions.
`
`IV. GENERAL RESERVATIONS
`
`These Invalidity Contentions are provisional. Samsung reserves the right to revise or
`
`supplement these contentions in light of discovery produced in this case, such as party and third-
`
`party discovery (such as device art expected from third parties), Solas’s infringement
`
`contentions, any claim construction order issued by the Court, review and analysis by expert
`
`witnesses, and further investigation and discovery regarding the defenses asserted by Samsung.
`
`For example, Samsung expressly reserves the right to amend these contentions after issuance of
`
`the claim construction order, should Solas provide further information it failed to provide in its
`
`initial disclosures, or if Solas amends its disclosures in any way. Samsung reserves the right to
`
`modify or add contentions in the event that Solas provides amended infringement contentions
`
`and to the extent the Court orders or allows Solas to amend its infringement contentions.
`
`Further, because discovery is ongoing, Samsung reserves the right to revise, amend, and/or
`
`supplement the information provided herein, including identifying, charting, and relying on
`
`additional references upon written notice for good cause shown. Further, Samsung reserves its
`
`rights to revise, amend, or supplement these contentions when and if Solas provides additional
`
`discovery. Further, Samsung reserves the right to revise its ultimate contentions concerning
`
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`11
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`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 13
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`invalidity of the Asserted Claims, which may change depending upon further and ongoing
`
`investigation, discovery taken in the case, the construction of the Asserted Claims, any findings
`
`as to the priority date of the Asserted Claims, and/or positions that Solas or expert witnesses may
`
`take concerning claim construction, infringement, and/or invalidity issues.
`
`Samsung incorporates in these Invalidity Contentions, in full, all prior art references cited
`
`in the Asserted Patent and its prosecution history and any applicable post-grant proceedings,
`
`including inter partes reviews (currently pending or otherwise).
`
`Prior art not included in this disclosure, whether known or not known to Samsung, may
`
`become relevant. In particular, Samsung is currently unaware of the extent, if any, to which Solas
`
`will contend that limitations of the Asserted Claims are not disclosed in the prior art identified by
`
`Samsung. To the extent such an issue arises, Samsung reserves the right to identify other
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`references that would anticipate and/or render obvious the allegedly missing limitation(s) of the
`
`claims. Samsung reserves the right to rely on any reference found in the prosecution histories of
`
`the Asserted Patent or any related patents or applications, or otherwise identified in connection
`
`with this action. Because discovery is ongoing and because Samsung has not yet completed its
`
`search for or analysis of relevant prior art, Samsung reserves the right to revise, amend, update,
`
`and/or supplement the information provided herein, including identifying, charting, and relying on
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`additional references, should Samsung’s further search and analysis yield additional information
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`or references, consistent with the Federal Rules of Civil Procedure.
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`To the extent these Invalidity Contentions reflect constructions of claim limitations
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`consistent with or implicit in Solas’s infringement allegations, no inference is intended nor should
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`any be drawn that Samsung agrees with Solas’s infringement allegations, and Samsung expressly
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`reserves the right to contest such allegations and claim constructions. Samsung offers such
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`
`
`12
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 14
`
`

`

`
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`contentions in response to Solas’s infringement allegations and without prejudice to any position
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`that Samsung may ultimately take as to any claim construction issues. Specifically, Samsung bases
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`these Invalidity Contentions at least in part upon the claim scope and certain claim constructions
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`implicitly or explicitly asserted by Solas, and nothing herein should be construed or represented
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`as evidencing any express or implied agreement with any of Solas’s claim construction or
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`infringement positions.
`
`Samsung intends to rely on Solas’s or any inventor’s admissions concerning the scope of
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`prior art relevant to the Asserted Patent found in, inter alia: the Asserted Patent and related patents
`
`and/or patent applications; the patent prosecution histories for the Asserted Patent and related
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`patents and/or patent applications (including all prior art cited therein); any deposition testimony
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`of the named inventors on the Asserted Patent and related patents and/or patent applications (in
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`this matter or any other matter); evidence and testimony relating to the level of skill in the art; and
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`the papers filed and any evidence submitted by Solas in connection with this matter.
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`Subject to Samsung’s reservation of rights, Samsung identifies prior art that anticipates
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`and/or renders obvious the Asserted Claims. The patents, patent applications, publications, and
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`systems identified are also relevant to show the state of the art and reasons and motivations for
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`making improvements, additions, and combinations.
`
`Samsung also reserves the right to rely on any system, public knowledge or use embodying
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`or otherwise incorporating any of the prior art disclosed herein alone or in combination. Samsung
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`further reserves the right to rely on any other documents or references describing any such system,
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`knowledge or use.
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`For prior art patents and prior art publications identified in these Invalidity Contentions,
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`Samsung reserves the right to rely on the public use, offer for sale, sale, and/or actual products
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`
`
`13
`
`SAMSUNG V. SOLAS
`IPR2021-01254
`Exhibit 2010
`Page 15
`
`

`

`
`
`embodying the methods and systems described therein uncovered during discovery. Samsung also
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`reserves the right to rely on any related patents and patent applications, foreign patent counterparts
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`and foreign patent applications of U.S. patents identified in these Invalidity Contentions, and U.S.
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`counterparts of foreign patents and foreign patent applications identified in these Invalidity
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`Contentions.
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`Additionally, because third-party discovery is not yet complete, Samsung reserves the right
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`to present additional items of prior art under 35 U.S.C. §§ 102(a), (b), (e), and/or (g), and/or § 103,
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`located during the course of such discovery or further investigation, and to assert invalidity under
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`35 U.S.C. §§ 102(c), (d), or (f), to the extent that such discovery or investigation yields information
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`forming the basis for such invalidity. For example, Samsung expects to issue subpoenas to, and
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`receive information from, third parties believed to have knowledge, documentation, and/or
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`corroborating evidence concerning some of the prior art listed herein and/or additional prior art.
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`These third parties include, without limitation, the authors, inventors, vendors, or assignees of the
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`references listed in these disclosures.
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`Although Samsung has identified at least one disclosure of a limitation for each prior art
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`reference, each and every disclosure of the same limitation in the same reference is not necessarily
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`identified. In an effort to focus the issues, Samsung’s cites are only representative portions of an
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`identified reference, even where a reference may contain additional support for a particular claim
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`limitation. Samsung’s claim charts cite to particular teachings and disclosures of the prior art as
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`applied to features of the Asserted Claims. POSITAs generally read an item of prior art as a whole
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`and in the context of other publications, literature, products, and understandings. As such, the
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`cited port