IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`MYPAQ HOLDINGS LTD.,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 6:21-cv-398-ADA
`
`------------------------------------------------------
`
`----------------------------------------------
`
`MYPAQ HOLDINGS LTD.,
`
`Plaintiff,
`
`v.
`
`DELL TECHNOLOGIES INC. and
`DELL INC.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 6:21-cv-933-ADA
`
`DEFENDANTS’ JOINT PRELIMINARY INVALIDITY CONTENTIONS
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 1 of 95
`
`

`

`I.
`
`RESERVATIONS ................................................................................................................ 2
`
`TABLE OF CONTENTS
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`General Reservations .............................................................................................. 2
`
`Ongoing Discovery ................................................................................................. 3
`
`Claim Construction ................................................................................................. 5
`
`Plaintiff’s Infringement Contentions ...................................................................... 6
`
`The Intrinsic Record ............................................................................................... 7
`
`Rebuttal Evidence ................................................................................................... 8
`
`Contextual Evidence ............................................................................................... 8
`
`Invalidity Under Section 102(f) Prior Art ............................................................... 9
`
`Priority and Effective Filing Date ........................................................................... 9
`
`No Patentable Weight ........................................................................................... 10
`
`II.
`
`INVALIDITY UNDER 35 U.S.C. §§ 102-103 .................................................................. 10
`
`A.
`
`B.
`
`C.
`
`Summary of Prior Art ........................................................................................... 11
`
`Summary of Motivation for Combining Identified Prior Art ............................... 12
`
`Secondary Considerations ..................................................................................... 17
`
`III.
`
`THE ’759 PATENT ............................................................................................................ 19
`
`A.
`
`Identification of Prior Art ..................................................................................... 19
`
`1.
`
`2.
`
`3.
`
`1.
`
`2.
`
`B.
`
`Prior Art Patents, Patent Applications, and Patent Publications ............... 20
`
`Prior Art Publications ............................................................................... 21
`
`Prior Art Systems ...................................................................................... 21
`
`Bases for Anticipation and/or Obviousness .......................................................... 22
`
`Obviousness Combinations ....................................................................... 24
`
`Motivation to Combine ............................................................................. 25
`
`IV.
`
`THE ’514 PATENT ............................................................................................................ 36
`
`ii
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`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 2 of 95
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`

`

`A.
`
`Identification of Prior Art ..................................................................................... 37
`
`1.
`
`2.
`
`3.
`
`1.
`
`2.
`
`B.
`
`Prior Art Patents, Patent Applications, and Patent Publications ............... 37
`
`Prior Art Publications ............................................................................... 38
`
`Prior Art Systems ...................................................................................... 39
`
`Bases for Anticipation and/or Obviousness .......................................................... 40
`
`Obviousness Combinations ....................................................................... 41
`
`Motivation to Combine ............................................................................. 42
`
`V.
`
`THE ’399 PATENT ............................................................................................................ 48
`
`A.
`
`Identification of Prior Art ..................................................................................... 48
`
`1.
`
`2.
`
`3.
`
`1.
`
`2.
`
`B.
`
`Prior Art Patents, Patent Applications, and Patent Publications ............... 49
`
`Prior Art Publications ............................................................................... 50
`
`Prior Art Systems ...................................................................................... 50
`
`Bases for Anticipation and/or Obviousness .......................................................... 51
`
`Obviousness Combinations ....................................................................... 52
`
`Motivation to Combine ............................................................................. 53
`
`VI.
`
`THE ’489 PATENT ............................................................................................................ 60
`
`A.
`
`Identification of Prior Art ..................................................................................... 60
`
`B.
`
`1.
`
`2.
`
`1.
`
`2.
`
`Prior Art Patents, Patent Applications, and Patent Publications ............... 60
`
`Prior Art Systems ...................................................................................... 61
`
`Bases for Anticipation and/or Obviousness .......................................................... 63
`
`Obviousness Combinations ....................................................................... 64
`
`Motivation to Combine ............................................................................. 65
`
`VII.
`
`INVALIDITY UNDER 35 U.S.C. § 112 ........................................................................... 77
`
`A.
`
`Lack of Enablement and/or Written Description Under 35 U.S.C. § 112 ¶
`(1) .............................................................................................................. 78
`
`1.
`
`The ’759 Patent ......................................................................................... 80
`
`iii
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 3 of 95
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`

`

`B.
`
`C.
`
`D.
`
`2.
`
`3.
`
`1.
`
`2.
`
`3.
`
`4.
`
`1.
`
`2.
`
`1.
`
`2.
`
`The ’514 Patent ......................................................................................... 81
`
`The ’399 Patent ......................................................................................... 81
`
`Indefiniteness Under 35 U.S.C. § 112 ¶ (2) .......................................................... 82
`
`The ’759 Patent ......................................................................................... 83
`
`The ’514 Patent ......................................................................................... 83
`
`The ’399 Patent ......................................................................................... 84
`
`The ’489 Patent ......................................................................................... 84
`
`Improper Dependency Under 35 U.S.C. § 112 ¶ (4) ............................................ 85
`
`The ’759 Patent ......................................................................................... 86
`
`The ’489 Patent ......................................................................................... 86
`
`Governed by 35 U.S.C. § 112 ¶ (6) and Lacking Corresponding Structure ......... 86
`
`The ’759 Patent ......................................................................................... 87
`
`The ’514 Patent ......................................................................................... 87
`
`VIII. ACCOMPANYING DOCUMENT PRODUCTION ......................................................... 88
`
`iv
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 4 of 95
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`

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`Pursuant to the Court’s Scheduling Order (Dkt. 20) and the Court’s Order Governing
`
`Proceedings – Patent Case (“OGP”), Defendants Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., Samsung Semiconductor, Inc., Samsung Austin Semiconductor, LLC,
`
`Dell Technologies Inc., and Dell Inc. (collectively, “Defendants”) provide Plaintiff MyPAQ
`
`Holdings Ltd. (“Plaintiff”) with notice of Defendants’ Preliminary Invalidity Contentions. These
`
`contentions are with respect to the claims identified in Plaintiff’s Preliminary Infringement
`
`Contentions, dated November 3, 2021 to Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, LLC
`
`(collectively, “Samsung”), and Plaintiff’s Preliminary Infringement Contentions, dated November
`
`29, 2021 to Defendants Dell Technologies Inc. and Dell Inc., (collectively “Dell”) (collectively,
`
`“Infringement Contentions”).
`
`Plaintiff asserts that Samsung infringes the following claims:
`
` Claims 1-3, 6, 11-13, 16, and 19 of U.S. Pat. No. 7,675,759 (“the ’759 Patent”);
` Claims 1-3, 5-8, 10-12, 15-17, and 20 of U.S. Pat. No. 8,477,514 (“the ’514 Patent”);
` Claims 1, 2, 4-6, 10, and 13 of U.S. Pat. No. 7,403,399 (“the ’399 Patent”); and
` Claims 1, 4-9, 11, 12, 22, 25-30, 32, 33, 39, 42, 43, 46-51, 53, 54, 60, and 63 of U.S.
`Pat. No. 7,978,489 (“the ’489 Patent”).
`
`Samsung contends that all such claims are invalid for the reasons described below.
`
`Plaintiff asserts that Dell infringes the following claims:
`
` Claims 1, 2, 6, 11, and 16 of the ’759 Patent; and
` Claims 1-3, 5-8, 10-12, 14-17, and 19-20 of the ’514 Patent.
`
`Dell contends that all such claims are invalid for the reasons described below.
`
`As used in these Preliminary Invalidity Contentions, “Asserted Claims” include any and
`
`all claims asserted against the Defendants. Defendants’ submission of a common set of
`
`Preliminary Invalidity Contentions across multiple cases shall not be misconstrued as a concession
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 5 of 95
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`

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`that a claim asserted against one defendant but not against others could later be asserted against
`
`the other defendants. To the extent Plaintiff attempts to amend its Infringement Contentions
`
`against any defendant by adding asserted claims, Defendants reserve the right to oppose any such
`
`amendment.1
`
`With respect to each Asserted Claim and based on its investigation to date, Defendants
`
`hereby: (a) identify each currently known item of prior art that either anticipates or renders obvious
`
`each Asserted Claim; (b) specify whether each such item of prior art (or a combination of several
`
`of the same) anticipates each Asserted Claim or renders it obvious; (c) submit a chart identifying
`
`where each limitation in each Asserted Claim is disclosed, described, or taught in the prior art; and
`
`(d) identify the grounds for invalidating the Asserted Claims based on lack of enablement or
`
`written description under 35 U.S.C. § 112 ¶ 1, indefiniteness under 35 U.S.C. § 112, ¶ 2 or 112,
`
`¶ 6, or improper dependency under 35 U.S.C. § 112, ¶ 4.
`
`I.
`
`RESERVATIONS
`
`A.
`
`General Reservations
`
`Defendants rely on and incorporate by reference, as if originally set forth herein, all
`
`invalidity positions, and all associated prior art and claim charts, asserted against Plaintiff in the
`
`original prosecution of the Asserted Patents, or by potential or actual licensees to the Asserted
`
`Patents. Moreover, Defendants reserve the right to supplement these Invalidity Contentions based
`
`1 Dell understands that claims 3, 12, 13, and 19 of the ’759 Patent, all claims of the ’399 Patent,
`and all claims of the ’489 Patent are asserted against Samsung but are not asserted against Dell.
`Samsung understand that claims 14 and 19 of the ’514 Patent are asserted against Dell but are not
`asserted against Samsung. Dell and Samsung will oppose any future allegation of any non-asserted
`claim of these patents against them and expressly reserve the right to respond to any such
`allegations.
`
`2
`
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`IPR2022-00311
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`

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`on prior art currently known to Plaintiff and prior art identified or provided to Plaintiff by any third
`
`parties.
`
`Defendants reserve the right to further amend or supplement these disclosures and the
`
`subsequent document production should Plaintiff: 1) provide any information that it failed to
`
`provide pursuant to the Scheduling Order and the Court’s standing OGP; 2) amend its contentions
`
`or disclosures in any way; or 3) attempt to rely upon any information at trial, in a hearing or during
`
`a deposition which it failed to provide in its contentions or disclosures.
`
` Defendants further reserve the right to amend or supplement these Invalidity Contentions
`
`for any other reason permitted by the Court and/or the applicable statutes and rules.
`
`Defendants provide the information below, as well as the accompanying production of
`
`documents, for the sole purpose of complying with the Scheduling Order and the Court’s standing
`
`OGP – Patent Case. The information provided shall not be deemed an admission regarding the
`
`scope of any claims or the proper construction of those claims or any terms contained therein.
`
`Nothing contained in these Invalidity Contentions should be understood or deemed to be an
`
`express or implied admission or contention with respect to the proper construction of any terms in
`
`the asserted claim, or with respect to the alleged infringement of that claim.
`
`B.
`
`Ongoing Discovery
`
`Because only limited discovery has occurred and because Defendants continue to search
`
`for and analyze relevant prior art, Defendants reserve the right to revise, amend, and/or supplement
`
`the information provided herein, including identifying, charting, and relying on additional
`
`references, should Defendants’ further search and analysis yield additional information or
`
`references, consistent with the Local Patent Rules and the Federal Rules of Civil Procedure.
`
`These Invalidity Contentions are based upon information reasonably available to
`
`Defendants as of the date of these Invalidity Contentions. Because discovery is ongoing,
`3
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 7 of 95
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`Defendants expressly reserve the right to clarify, alter, amend, modify, or supplement these
`
`Invalidity Contentions, to identify additional prior art, and to rely on additional information,
`
`tangible things, and testimony obtained during discovery, including discovery obtained from third
`
`parties. For example, prior art not included in these Invalidity Contentions whether or not known
`
`to Defendants at this time, may become relevant depending on the positions Plaintiff asserts and
`
`the claim constructions adopted by the Court.
`
`Discovery is in its infancy and is ongoing, and Defendants’ prior art investigation and third-
`
`party discovery is therefore not yet complete. Defendants reserve the right to present additional
`
`items of prior art under 35 U.S.C. §§ 102(a), (b), (e), and/or (g), and/or 103 located during the
`
`course of discovery or further investigation. For example, Defendants may issue subpoenas to
`
`third parties believed to have knowledge, documentation, and/or corroborating evidence
`
`concerning some of the prior art listed herein and/or additional prior art. These third parties include
`
`without limitation the authors, inventors, or assignees of the references listed in these disclosures.
`
`For example, for any given company’s commercial products, Defendants anticipate that additional
`
`documentation relating to these products will be discovered, and Defendants reserve the right to
`
`rely on such documentation to further support these Invalidity Contentions. In addition,
`
`Defendants reserve the right to assert invalidity under 35 U.S.C. § 102(c), (d), or (f) to the extent
`
`that discovery or further investigation yield information forming the basis for such invalidity.
`
`Similarly, Defendants have not had the opportunity to take any depositions of the patent
`
`applicants named on the face the Asserted Patents or other persons having relevant information.
`
`Defendants reserve the right to revise, amend or supplement these Invalidity Contentions pursuant
`
`to Federal Rule of Civil Procedure 26(e) and the Local Rules to the extent appropriate in light of
`
`4
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 8 of 95
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`

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`further investigation and discovery regarding the defenses, the review and analysis of expert
`
`witnesses, or supplemental contentions by Plaintiff.
`
`Defendants accordingly reserve the right to modify these Invalidity Contentions by adding
`
`or withdrawing prior art and/or modifying any of the referenced claim charts in light of the Court’s
`
`claim construction ruling, any amended or supplemental infringement contentions by Plaintiff, any
`
`party admissions or admissions by any named inventor concerning the scope of the claims or
`
`teachings of the prior art, or any positions taken by Plaintiff in this or related litigation,
`
`reexamination, inter partes review, or other proceeding, or to avoid unfair prejudice from
`
`Plaintiff’s failure to timely comply with its disclosure obligations. Furthermore, additional
`
`obviousness combinations of the references identified in these disclosures are possible, and
`
`Defendants reserve the right to use any such combination(s) in these actions. In particular,
`
`Defendants are currently unaware of the extent, if any, to which Plaintiff will contend that
`
`limitations of the claims at issue are not disclosed in the art identified by Defendants as
`
`anticipatory, and the extent to which Plaintiff will contend that elements not disclosed in the
`
`specifications of the Asserted Patents and related applications would have been known to persons
`
`of ordinary skill in the art at the relevant time. To the extent that an issue arises with any such
`
`limitations, Defendants reserves the right to identify other references that would have made such
`
`limitations obvious in view of the relevant disclosures.
`
`C.
`
`Claim Construction
`
`Defendants reserve the right to revise its ultimate contentions concerning the invalidity of
`
`the Asserted Claims, which may change depending upon any findings as to the priority date of
`
`those claims and/or positions that Plaintiff or expert witness(es) may take concerning infringement
`
`and/or invalidity issues. Defendants do not waive the right to contest any claim constructions or
`
`to take positions during claim construction proceedings that have yet to occur that may be
`5
`
`MyPAQ, Exhibit 2001
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`inconsistent with the invalidity contentions herein. Consequently, Defendants also reserve the
`
`right to amend or supplement these Invalidity Contentions in the event that the claims are construed
`
`differently at some point in the future.
`
`Defendants do not adopt Plaintiff’s positions on the scope or construction of the claims. In
`
`certain instances, however, Defendants have applied the Asserted Claims to the prior art in view
`
`of Plaintiff’s allegations, admissions, or positions for purposes of these Invalidity Contentions
`
`only. As such, Defendants’ Invalidity Contentions are not adoptions or admissions by Defendants
`
`as to the accuracy of Plaintiff’s allegations, admissions, or positions. Accordingly, these Invalidity
`
`Contentions are made in the alternative, are not necessarily intended to be consistent with each
`
`other or with other contentions, and should not be otherwise construed.
`
`Defendants expressly reserve the right to take positions with respect to future claim
`
`construction or infringement issues that are inconsistent with, or even contradictory to, the claim
`
`construction or infringement positions expressed or implied in the Invalidity Contentions set forth
`
`herein.
`
`D.
`
`Plaintiff’s Infringement Contentions
`
`Plaintiff’s Infringement Contentions are deficient in numerous respects. Plaintiff has failed
`
`to specifically identify where each limitation of each claim is found within each Accused
`
`Instrumentality and has taken either unintelligible or contradictory positions regarding how the
`
`Accused Instrumentalities allegedly practice the Asserted Claims. Plaintiff’s failure to provide
`
`adequate contentions has prejudiced Defendants’ ability to prepare these Invalidity Contentions
`
`by forcing them to speculate as to Plaintiff’s actual position on Defendants’ alleged infringement.
`
`Therefore, these Invalidity Contentions are based in whole or in part on the present understanding
`
`of the Asserted Claims and Plaintiff’s apparent positions as to the scope of the Asserted Claims as
`
`applied in its Infringement Contentions. Defendants further reserve the right to modify or add
`6
`
`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 10 of 95
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`

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`additional contentions in light of Plaintiff’s failure to provide adequate infringement contentions.
`
`Defendants specifically reserve the right to modify, amend, or supplement their contentions as
`
`Plaintiff modifies, amends, or supplements its disclosures and/or produces documents in
`
`discovery.
`
`Additionally, Plaintiff has presented no substantive contentions for indirect infringement,
`
`i.e., active inducement or contributory infringement. Plaintiff has not, for example, provided
`
`contentions that identify how Defendants allegedly induce direct infringement of the Asserted
`
`Patents by a third party, or how Defendants allegedly contribute to the infringement of the Asserted
`
`Patents by a third party. Nor has Plaintiff provided contentions regarding any alleged infringement
`
`by multiple parties pursuant to 35 U.S.C. § 271(a) (i.e., joint infringement). Nor has Plaintiff
`
`provided contentions of any alleged infringement under the doctrine of equivalents. Plaintiff has
`
`therefore waived these claims. If, however, Plaintiff is permitted to provide this and other
`
`information relating to alleged indirect or joint infringement or infringement pursuant to the
`
`doctrine of equivalents, Defendants will amend and supplement these Invalidity Contentions as
`
`appropriate.
`
`E.
`
`The Intrinsic Record
`
`Defendants further reserve the right to rely upon applicable industry standards and prior
`
`art cited in the specifications and file histories of the Asserted Patents, and any related U.S. and
`
`foreign patent applications as invalidating references or to show the state of the art. Defendants
`
`further reserve the right to rely on the patent applicants’ admissions concerning the scope of the
`
`prior art relevant to the asserted patents found in, inter alia: the specifications; the patent
`
`prosecution history for the Asserted Patents and any related patents and/or patent applications or
`
`reexaminations; any deposition testimony of the named patent applicants on the Asserted Patents;
`
`and the papers filed and any evidence submitted by Plaintiff in connection with this litigation.
`7
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`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 11 of 95
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`F.
`
`Rebuttal Evidence
`
`Prior art not included in these Invalidity Contentions, whether known or not known to
`
`Defendants, may become relevant. In particular, Defendants are currently unaware of the extent,
`
`if any, to which Plaintiff will contend that limitations of the Asserted Claims of the Asserted
`
`Patents are not disclosed in the prior art identified herein. To the extent that such an issue arises,
`
`Defendants reserve the right to identify other references that would render obvious the allegedly
`
`missing limitation(s) or the disclosed device or method.
`
`G.
`
`Contextual Evidence
`
`Defendants’ claim charts cite particular teachings and disclosures of the prior art as applied
`
`to the limitations of each of the Asserted Claims. However, persons having ordinary skill in the
`
`art generally may view an item of prior art in the context of his or her experience and training,
`
`other publications, literature, products, and understanding. As such, the cited portions are only
`
`exemplary, and Defendants reserve the right to rely on uncited portions of the prior art references
`
`and on other publications and expert testimony as aids in understanding and interpreting the cited
`
`portions, as providing context thereto, and as additional evidence that the prior art discloses a claim
`
`limitation or the claimed subject matter as a whole. Defendants further reserve the right to rely on
`
`uncited portions of the prior art references, other publications, and testimony, including expert
`
`testimony, to establish bases for combinations of certain cited references that render the asserted
`
`claims obvious.
`
`Where Defendants identify a particular figure in a prior art reference, the identification
`
`should be understood to encompass the caption and description of the figure as well as any text
`
`relating to the figure in addition to the figure itself. Similarly, where an identified portion of text
`
`refers to a figure or other material, the identification should be understood to include the referenced
`
`figure or other material as well.
`
`8
`
`MyPAQ, Exhibit 2001
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`Page 12 of 95
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`

`

`The references discussed in the claim charts may disclose the limitations of the Asserted
`
`Claims explicitly and/or inherently, and/or they may be relied upon to show the state of the art in
`
`the relevant time frame. The suggested obviousness combinations are provided in the alternative
`
`to anticipation contentions and are not to be construed to suggest that any reference included in
`
`the combinations is not by itself anticipatory.
`
`H.
`
`Invalidity Under Section 102(f) Prior Art
`
`Defendants reserve the right to assert that the Asserted Claims are invalid under 35 U.S.C.
`
`§ 102(f) in the event Defendants obtain evidence that Daniel A. Artusi, Ross Fossler, and/or Allen
`
`F. Rozman did not jointly or exclusively “invent” the subject matter claimed in the ’759 and ’514
`
`Patents; that Stefan Morbe and/or Michael Bothe did not exclusively “invent” the subject matter
`
`claimed in the ’399 Patent; or that Mark Telefus, Bahman Sharifipour, Rowell Gapuz, Richard Sy,
`
`HongWei Du, and/or Bob Roohparvar did not exclusively “invent” the subject matter claimed in
`
`the ’489 Patent.
`
`I.
`
`Priority and Effective Filing Date
`
`The Invalidity Contentions are based on the earliest priority date set forth in the
`
`Infringement Contentions, which is December 1, 2006 for both the ’759 Patent and ’514 Patent;
`
`March 31, 2005 for the ’399 Patent; and August 3, 2007 for the ’489 Patent. Nonetheless,
`
`Defendants contend that Plaintiff will be unable to demonstrate that the Asserted Claims are
`
`entitled to claim a priority date or effective filing date earlier than the actual filing date of the
`
`applications that issued as those patents. Defendants reserve the right to amend these Invalidity
`
`Contentions upon the Court’s (or other competent jurisdiction’s) determination of the correct
`
`priority date(s) of the Asserted Claims, as a change in the priority date from the priority date
`
`indicated on the face of the patents, in the presence of Plaintiff’s failure to indicate any other
`
`specific priority date, provides good cause for amendments to invalidity contentions. Defendants
`
`9
`
`MyPAQ, Exhibit 2001
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`Page 13 of 95
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`

`

`further reserve the right to use related patents in the alleged chain of priority of the Asserted Patents
`
`as prior art upon the Court’s determination of the priority date(s) of the Asserted Claims.
`
`According to Plaintiff’s infringement interpretation, Plaintiff has identified certain
`
`Accused Instrumentalities as infringing one or more of the Asserted Patents. Defendants assert
`
`that some or all of the functionalities contained, referenced, or otherwise included in the Accused
`
`Instrumentalities (or any predecessor) may serve as prior art to the extent that they predate the
`
`alleged priority dates of the Asserted Patents. Likewise, should it be the case that the Asserted
`
`Patents are not entitled to the priority claims made by these patents, then Defendants assert that
`
`some or all of the functionalities contained, referenced, or otherwise included in the accused
`
`products (or any predecessor) may serve as prior art to the extent that they predate the filing dates
`
`of the Asserted Patents.
`
`J.
`
`No Patentable Weight
`
`Defendants reserve the right to argue that various portions of the Asserted Claims, such as
`
`an intended use or result, printed matter, non-functional descriptive material, and certain preamble
`
`language, are entitled to no patentable weight. Mapping of a portion of an asserted claim to a prior
`
`art reference does not represent that such portion of the claim is entitled to patentable weight when
`
`comparing the claimed subject matter to the prior art.
`
`II.
`
`INVALIDITY UNDER 35 U.S.C. §§ 102-103
`
`The following contentions are subject to revision and amendment pursuant to Federal Rule
`
`of Civil Procedure 26(e) and the Orders of record in this matter to the extent appropriate, e.g., in
`
`light of further investigation and discovery regarding the defenses, the Court’s construction of the
`
`claims at issue, and/or review and analysis of expert witnesses. Defendants offer these Invalidity
`
`Contentions in response to Plaintiff’s Infringement Contentions and without prejudice to any
`
`position it may ultimately take as to any claim construction issues
`
`10
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`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 14 of 95
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`A.
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`Summary of Prior Art
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`The concepts disclosed and claimed in the Asserted Patents are not new. Rather, the
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`concepts have been disclosed and actively practiced by others prior to the claimed priority date.
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`The prior art includes various documents, systems, products, patents and inventions that separately
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`and together render the Asserted Claims invalid. Defendants assert that at least the prior art listed
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`below, individually or in combination, invalidates the asserted claims. In particular, Sections III
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`through VI below list prior art that anticipates and/or renders obvious the Asserted Claims of the
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`Asserted Patents. The identification of prior art below is not exclusive, and Defendants’ production
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`contains additional references that render the asserted claims invalid. Defendants reserve the right
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`to rely upon both the listed and unlisted references, as well as other art that may become known
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`and/or relevant during the course of this or related litigation.
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`Exhibits A-1 through A-18, B-1 through B-19, C-1 through C-9, and D-1 through D-6
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`provide detailed claim charts for the Asserted Patents. The claim charts show where each claim
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`limitation may be found in the particular reference being charted. For those references for which
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`detailed claim charts are not provided in the aforementioned exhibits, those additional prior art
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`references are otherwise pertinent to the invalidity of the Asserted Patents, either alone or in
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`combination with other references. At this time, Defendants may not provide claim charts for each
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`of these additional references, for any of a variety of reasons, such as: because the references are
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`cited in conjunction with primary references for which charts have already been provided and are
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`cited therein, because the references have similar disclosure to the prior art references for which
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`invalidity charts have been provided, because the references may be used to show the state of the
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`art, and/or because Defendants’ investigation of the references is ongoing. Defendants reserve the
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`right to rely on the uncharted references, for example, to address claim construction, findings
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`11
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`MyPAQ, Exhibit 2001
`IPR2022-00311
`Page 15 of 95
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`regarding the priority date of the claims, and/or positions that Plaintiff or expert witness(es) may
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`take in the future concerning infringement and/or invalidity issues.
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`Defendants also incorporate as if fully set forth herein the complete file histories for the
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`Asserted Patents, including any prior art or supporting documents cited therein.
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`Defendants not only rely upon the prior art disclosed herein, but also rely on any
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`commercial embodiments and accompanying literature of the various assignees that correspond to
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`the respective disclosures found within the prior art disclosed herein. The assignees’ various and
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`respective commercial embodiments and/or corresponding literature anticipate and/or render
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`obvious the claims of the Ass