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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`CPC PATENT TECHNOLOGIES PTY LTD.,
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` Plaintiff,
`
` v.
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`APPLE INC.,
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` Defendant.
`
`
`
`
`Case No. 6:21-cv-00165-ADA
`
`JURY TRIAL DEMANDED
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`DEFENDANT’S FINAL INVALIDITY CONTENTIONS
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`I.
`
`INTRODUCTION
`
`Pursuant to the Court’s Scheduling Order, Dkt. No. 37, Defendant Apple Inc. (“Defendant”
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`or “Apple”) provides these Final Invalidity Contentions to Plaintiff CPC Patent Technologies Pty
`
`Ltd (“Plaintiff” or “CPC”) for the following patents (collectively, “Asserted Patents” or “Patents-
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`in-Suit”) and claims (collectively, “Asserted Claims”) identified as asserted in Plaintiff’s
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`Preliminary Infringement Contentions served on August 4, 2021 (“Infringement Contentions”),
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`later limited in CPC’s Notice of Asserted Claims, Dkt. Not. 80, filed on February 15, 2022, and
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`later again limited in CPC’s email to Apple on March 16, 2022:
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`
`
`
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`U.S. Patent No. 8,620,039 (“’039 Patent”): Claim 1 (“’039 Asserted Claim”)
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`U.S. Patent No. 9,665,705 (“’705 Patent”): Claims 1, 10, 11, 15, 16, and 17 (“’705
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`Asserted Claims”)
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`Defendant reserves the right to supplement these invalidity contentions to the extent
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`Plaintiff is allowed to change its Asserted Claims.
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`These invalidity contentions are being made in the early stages of fact discovery. The
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`
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`CPC EXHIBIT 2003
`Apple Inc. v. CPC Patent Technologies PTY Ltd.
`IPR2022-00602
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`Page 1 of 91
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`parties have not yet started document production, and no general depositions have been taken. No
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`third party discovery has been taken. Accordingly, Defendant reserves the right to supplement
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`and amend these contentions to the extent additional information becomes available during
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`discovery. For example, Defendant has served and may continue to serve third party discovery
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`requests on companies that they are informed and believe have relevant prior art, and reserve the
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`right to supplement or amend these disclosures as may be appropriate in the future. Specifically,
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`Defendant has served the following third parties with subpoenas for prior art:
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` HP - served March 7, 2022
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` BIO-Key - served February 15, 2022
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` SecuGen - served March 14, 2022
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` Security First - served March 14, 2022
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` Ringdale - served March 14, 2022
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` HID - served March 15, 2022
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`
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`Idemia Identity & Security USA - served March 15, 2022
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` Old Round Rock - served March 14, 2022
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`
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`Defendant will also be taking third party discovery from the individual named as inventor
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`on CPC’s patent filings and associated companies. Defendant reserves the right to supplement
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`and/or amend its invalidity contentions to include new prior art discovered from CPC, from these
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`third party sources, or other sources. Defendant may also serve additional third-party discovery
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`in the future including, but not limited to, based on discovery received from Plaintiff and/or the
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`above-referenced third parties, and reserve the right to supplement and/or amend its contentions
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`accordingly.
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`Apple also reserves the right to rely on its own products or source code, some of which
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`may not become available for inspection until after these contentions have been served due to
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`current national health conditions surrounding the Coronavirus, the shelter at home restrictions in
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`California, the highly sensitive nature of Apple’s source code, and the restrictions placed on any
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`transfer or review of that source code.
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`II.
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`RESERVATIONS
`A.
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`General Reservation of Rights
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`The information provided shall not be deemed an admission regarding the scope of any
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`claims or the proper construction of those claims or any claim terms. Defendant does not waive
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`the right to contest any claim constructions.
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`In certain instances, Defendant has applied the claims to the prior art in view of CPC’s
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`allegations, admissions, or positions for purposes of these invalidity contentions only. This
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`disclosure of invalidity contentions is not intended to be, and is not, an admission that any Asserted
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`Claim is infringed by any of Defendant’s products, that any particular feature or aspect of any of
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`the accused products practices any limitations of the Asserted Claims, or that any of the
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`constructions implicit in CPC’s Preliminary Infringement Contentions is reasonable, supportable,
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`or proper. Rather, in some instances, Defendant’s application of the claims to the prior art is
`
`intended to apply CPC’s apparent interpretation of the claims.
`
`B.
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`CPC’s Preliminary Infringement Contentions
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`CPC’s Preliminary Infringement Contentions are deficient in numerous respects. Apple
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`served a deficiency letter on CPC on September 10, 2021, and reserves the right to supplement or
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`amend these invalidity contentions in view of Plaintiff’s response, if any. Because CPC’s response
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`to such deficiencies may lead to further grounds for invalidity, Defendant specifically reserves the
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`right to modify, amend, or supplement their contentions as CPC modifies, amends, or supplements
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`its disclosures and/or produces documents in discovery.
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`3
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`Additionally, CPC has presented no substantive contentions of any alleged infringement
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`under the doctrine of equivalents in its Preliminary Infringement Contentions. It has provided
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`boilerplate reservations of rights, and made general references to the doctrine of equivalents, but
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`has provided no substantive allegation in its Preliminary Infringement Contentions. As a result,
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`CPC has waived any doctrine of equivalents theory. If CPC is permitted to provide any
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`information relating to infringement under the doctrine of equivalents, Defendant may amend and
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`supplement these invalidity contentions as appropriate.
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`The positions Apple takes in these invalidity contentions are based on the broad claim
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`interpretations CPC takes in its Preliminary Infringement Contentions. Apple reserves the right to
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`supplement these invalidity contentions with more narrow positions should CPC take more narrow
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`claim interpretations in its Final Infringement Contentions.
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`C.
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`The Intrinsic Record
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`Defendant further reserves the right to rely on applicable industry standards and prior art
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`cited in the file histories of the Asserted Patents and any related U.S. and foreign patent
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`applications as invalidating references or to show the state of the art. Defendant further reserves
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`the right to rely on the patent applicant’s admissions concerning the scope of the prior art relevant
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`to the Asserted Patents found in, inter alia: the patent prosecution history for the Asserted Patents
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`and any related patents and/or parent applications or reexaminations (or inter partes review or
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`post-grant review proceedings); any deposition testimony of the named inventor of the Asserted
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`Patents; any deposition testimony or other admissions by CPC; and the papers filed and any
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`evidence submitted by CPC in connection with this litigation.
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`D.
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`Rebuttal Evidence
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`Prior art not included in these invalidity contentions, whether known or not known to
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`Defendant, may become relevant. In particular, Defendant is currently unaware of the extent, if
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`4
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`any, to which CPC will contend that limitations of the Asserted Claims of the Asserted Patents are
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`not disclosed in the prior art identified herein or otherwise contend the Asserted Patents are not
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`invalid. To the extent that such an issue arises, Defendant reserves the right to identify other
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`references that would render obvious the allegedly missing limitation(s) or the disclosed device or
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`method, or otherwise rebut CPC’s argument(s).
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`E.
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`Contextual Evidence
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`Defendant’s claim charts cite particular teachings and disclosures of the prior art as applied
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`to the limitations of each of the Asserted Claims. However, persons having ordinary skill in the
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`art generally may view an item of prior art in the context of his or her experience and training,
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`other publications, literature, products, and understandings. Moreover, common sense may be
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`employed as part of the obviousness analysis. As such, Defendant may rely on the cited portions
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`of the prior art references and on other publications, expert testimony, and common sense as aids
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`in understanding and interpreting the cited portions, as providing context thereto, and as additional
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`evidence that the prior art discloses as claim limitation or the claimed subject matter as a whole.
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`Defendant further reserves the right to rely on uncited portions of the prior art references, other
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`publications, and testimony, including expert testimony, to establish bases for combinations of
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`certain cited references that render the asserted claims obvious. The references discussed in the
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`claim charts may disclose the elements of the asserted claims explicitly and/or inherently, and/or
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`they may be relied upon to show the state of the art in the relevant time frame. The suggested
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`obviousness combinations are provided in the alternative to anticipation contentions and are not to
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`be construed to suggest that any reference included in the combinations is not by itself anticipatory.
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`III. OVERVIEW OF THE TECHNOLOGY AS OF 2003
`A.
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`History of Fingerprint Technology
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`There is archaeological evidence that fingerprints as a form of identification have been
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`5
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`used at least since 7000 to 6000 BC by the ancient Assyrians and Chinese.1 Chinese documents
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`bore a clay seal marked by the thumbprint of the originator.2 Bricks used in houses in the ancient
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`city of Jericho were sometimes imprinted by pairs of thumbprints of the bricklayer.3
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`In the mid-1800’s scientific studies were begun that would established two critical
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`characteristics of fingerprints that are true still to this day: no two fingerprints from different
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`fingers have been found to have the same ridge pattern, and fingerprint ridge patterns are
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`unchanging throughout life.4 These studies led to the use of fingerprints for criminal identification,
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`first in Argentina in 1896, then at Scotland Yard in 1901, and to other countries in the early
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`1900’s.5
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`Computer processing of fingerprints began in the early 1960s with the introduction of
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`computer hardware that could reasonably process these images.6 Since then, automated fingerprint
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`identification systems (APIS) have been deployed widely among law enforcement agencies
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`throughout the world.7
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`In the 1980s, innovations in two technology areas, personal computers and optical
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`scanners, enabled the tools to make fingerprint capture practical in non-criminal applications such
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`as for ID-card programs.8 In the late 1990s, the introduction of inexpensive fingerprint capture
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`
`
` 1
`
` Lawrence O’Gorman, Fingerprint Verification in Biometrics: Personal Identification in
`Networked Society 43, 44 (Anil K. Jain, Ruud Bolle, and Sharath Pankanti eds., 1996).
`2 Id.
`3 Id.
`4 Id.
`5 Id.
`6 Id.
`7 Id.
`8 Id.
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`6
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`devices and the development of fast, reliable matching algorithms has set the stage for the
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`expansion of fingerprint matching to personal use.9
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`B.
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`History of Facial Recognition Technology
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`The earliest pioneers of facial recognition were Woody Bledsoe, Helen Chan Wolf, and
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`Charles Bisson; in 1964 and 1965, Bledsoe, along with Wolf and Bisson began work using
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`computers to recognize the human face.10
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`Carrying on from the initial work of Bledsoe, the baton was picked up in the 1970s by
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`Goldstein, Harmon and Lesk who extended the work to include 21 specific subjective markers
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`including hair color and lip thickness in order to automate the recognition.11
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`It wasn’t until the late 1980s that we saw further progress with the development of Facial
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`Recognition software as a viable biometric for businesses; in 1988, Sirovich and Kirby began
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`applying linear algebra to the problem of facial recognition.12
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`The Defense Advanced Research Projects Agency (DARPA) and the National Institute of
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`Standards and Technology (NIST) rolled out the Face Recognition Technology (FERET)
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`programme in the early 1990s in order to encourage the commercial facial recognition market.13
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`The project involved creating a database of facial images. Included in the test set were 2,413 still
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`facial images representing 856 people.14
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`The National Institute of Standards and Technology (NIST) began Face Recognition
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`
`
` 9
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` Id.
`10 https://www.nec.co.nz/market-leadership/publications-media/a-brief-history-of-facial-
`recognition/
`11 Id.
`12 Id.
`13 Id.
`14 Id.
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`Vendor Tests (FRVT) in the early 2000s.15 Building on FERET, FRVTs were designed to provide
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`independent government evaluations of facial recognition systems that were commercially
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`available, as well as prototype technologies.16 These evaluations were designed to provide law
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`enforcement agencies and the U.S. government with information necessary to determine the best
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`ways to deploy facial recognition technology.17 A face recognition system was installed at the
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`Super Bowl in January 2001 in Tampa, Florida, in an attempt to identify “wanted” individuals
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`entering the stadium.18
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`C.
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`The Crowded Space of Biometrics Technologies
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`In the 1990s, companies focused on biometrics began to form. As an example, AuthenTec,
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`Inc., spun off from Florida-based defense contractor Harris Corp. in 1998, produced biometric
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`sensor chips for top companies like Hewlett-Packard and Dell.19 AuthenTec’s biometric sensor
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`chips, along with its security technology, led Apple to acquire AuthenTec in 2012 and incorporate
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`the technology behind the sensor and security into its Touch ID feature.20 The acquisition of
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`AuthenTec included its large patent portfolio.21
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`D.
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`Existing Technology as of 2003
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`As biometric technology spread to different types of devices, many of the key concepts
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`
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`15 https://apps.dtic.mil/sti/pdfs/ADA415962.pdf
`16 https://www.nec.co.nz/market-leadership/publications-media/a-brief-history-of-facial-
`recognition/
`17 Id.
`18 https://www.biometricupdate.com/201802/history-of-biometrics-2
`19 https://www.reuters.com/article/us-authentec-acquisition-apple-idUSBRE86Q0KD20120727
`20 https://www.usatoday.com/story/tech/personal/2013/09/11/authentec-iphone-
`security/2799649/
`21
`https://www.sec.gov/Archives/edgar/data/1138830/000119312512318087/d384083dex101.htm
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`underlying the hardware and software implementing the biometrics remained the same. For
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`example, smart cards used 8-bit microprocessors and had memory capacities if 1MB as of 2002.22
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`The readers used electric connectors to make contact with the smart card’s electrical contacts to
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`allow data to be read from and written to the card’s chip.23
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`Additionally, many of the hardware components used in biometric systems existed well
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`before 2003. For example, the ʼ039 patent identifies biometric signatures, biometric readers, cards,
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`card readers, and back-end databases used to process obtained information as prior art:
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`
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`22 https://cacm.acm.org/magazines/2002/7/7018-smart-card-evolution/fulltext
`23 Id.
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`ʼ039 Patent at Fig. 2. Further, the ʼ039 patent describes the computer system used to implement
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`the allegedly inventive biometric methods comprised of generic components, such as a LCD
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`display device, modem, processor unit, memory unit, keypad, and storage unit. See id. at 6:36-65.
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`The ʼ039 patent also describes standard credit cards and smart cards as part of the invention
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`10
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`background. See id. at 1:33-44, 1:45-49, 1:64-2:2.
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`As yet another example, the ʼ705 patent identifies code entry modules, controllers,
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`databases, and controlled devices as prior art:
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`
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`ʼ705 Patent at Fig. 1. Further, the ʼ705 patent describes the use of secure access signals to provide
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`access to controlled devices. See, e.g., ʼ705 Patent at 1:39-43. The ʼ705 patent also describes
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`transmitting information to and receiving information at a code entry module and a controller. See
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`id. at 1:57-61, 2:10-17. The ʼ705 patent also describes the transmitter and receiver sub-systems
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`used to implement the allegedly inventive biometric methods comprised of generic components,
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`such as a transmitter, receiver, biometric sensor, LED indicators, and databased. See id. at 5:54-
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`6:31.
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`IV.
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`PRIORITY DATE24
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`CPC’s Preliminary Infringement Contentions allege that the Asserted Claims of the ’208
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`and ’705 patents are entitled to a priority date of August 13, 2003, nine years prior to the filing
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`date of the ’208 patent and over 12 years prior to the filing date of the ’705 patent. CPC’s
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`Preliminary Infringement Contentions also allege that the Asserted Claims of the’039 patent are
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`entitled to a priority date of August 12, 2005.
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`CPC produced a handful of documents in support of its alleged priority dates, consisting
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`of only the file histories of the Asserted Patent and none of which support conception or reduction
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`to practice of the Asserted Claims. CPC bears the burden to prove it is entitled to an earlier priority
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`date than that displayed on the face of the patent, and CPC has provided no evidence to support its
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`contention that the Asserted Claims are entitled to claim priority back to these dates. Apple
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`therefore reserves the right to assert later priority dates based on any findings as a to the priority
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`date of the Asserted Claims by the Court, information learned through discovery, or otherwise.
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`Apple further reserves the right to amend its invalidity contentions should CPC fail to prove it is
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`entitled to this earlier priority date.
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`As an initial matter, the ʼ208 patent, which the ʼ705 patent claims priority through, does
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`not properly claim specific reference to non-provisional application number 10/568,207 due to a
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`missing oath in its 2008 filing. Without this proper priority claim, PCT/AU2004/001083 is
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`invalidating prior art under 35 U.S.C. § 102(b).
`
`To the extent CPC is entitled to a priority date prior to the ’208 patent’s filing date of
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`
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`24 While CPC is no longer asserting any claims from the ’208 patent as of March 16, 2022, Apple
`maintains its references to the ’208 patent in this section of its invalidity contentions cover
`pleading as additional evidence that the continuation ’705 patent is not entitled to the priority
`date CPC alleges.
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`
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`12
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`August 10, 2012, CPC is not entitled to its alleged August 13, 2003 priority date for the Asserted
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`Claims of the ’208 and ’705 patents. From the face of the ’208 and ’705 patents, CPC’s alleged
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`August 13, 2003 priority date appears to be based on the filing of Australian provisional application
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`AU2003904317:
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`13
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`However, analysis of this Australian provisional application shows that it does not support
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`the Asserted Claims. For example, the provisional application AU2003904317 contains only five
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`figures, all hand drawn and lacking full detail. The ’208 and ’705 patents each contain 10 detailed
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`figures. The first five figures in the ’208 and ’705 patents are similar, although not identical, to
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`the five figures in provisional application AU2003904317. The last five figures in the ’208 and
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`’705 patents have no associated figure in provisional application AU2003904317.
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`14
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`As another example, the “Detailed Description Including Best Mode” section of
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`provisional application AU2003904317 spans seven, double-spaced columns of text. The same
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`“Detailed Description Including Best Mode” section in the ’208 and ’705 patents spans 10, single-
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`spaced columns. This Detailed Description section of provisional application AU2003904317 is
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`missing much of the key support for the Asserted Claims. As one example, the ’208 and ’705
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`Asserted Claims require an “accessibility attribute.” See ʼ208 Patent at Claim 1[d] (“means for
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`matching the biometric signal against members of the database of biometric signatures to thereby
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`output an accessibility attribute;”) (emphasis added); id. at 9[b], 10[g]; see also ʼ705 Patent at
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`1[d], 10[b], 11[g], 14[f], 15[d], 16[b], 17[g]. The disclosure of this accessibility attribute can be
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`found in the ʼ208 and ʼ705 patent specification:
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`ʼ208 Patent at 8:15-31. However, this same highlighted language is wholly absent from
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`
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`provisional application AU2003904317:
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`15
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`AU2003904317 at 8:1-9.
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`
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`ʼ208 Patent at 8:11-15, 8:31-37. In fact, the term “accessibility attribute” cannot be found
`
`
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`anywhere in provisional application AU2003904317.
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`
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`16
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`As another example, the ’208 and ’705 Asserted Claims require a “secure access signal.”
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`See ʼ208 Patent at Claim 1[e] (“means for emitting a secure access signal conveying information
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`dependent upon said accessibility attribute;”) (emphasis added); id. at 9[c], 10[h]; see also ʼ705
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`Patent at 1[e], 10[c], 11[h], 14[g], 15[e], 16[c], 17[h]. The term “secure access signal” cannot be
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`found anywhere in provisional application AU2003904317.
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`As yet another example, the ’208 and ’705 Asserted Claims require “at least one of the
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`number of said entries and a duration of each said entry.” See ʼ208 Patent at Claim 1[j] (“means
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`for receiving a series of entries of the biometric signal, said series being characterised according
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`to at least one of the number of said entries and a duration of each said entry;”) (emphasis
`
`added); id. at 9[e], 10[c]; see also ʼ705 Patent at 1[k], 10[e], 11[c], 14[b], 15[k], 16[e], 17[c]. The
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`disclosure of this number and duration of the entries can be found in the ʼ208 and ʼ705 patent
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`specification:
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`ʼ208 Patent at 10:45-67. Yet again, this same disclosure is wholly absent from provisional
`
`application AU2003904317. The term “duration” cannot be found anywhere in provisional
`
`
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`17
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`application AU2003904317. In fact, the entire disclosure from 10:5 to 15:26 of the ʼ208 patent
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`(10:14 to 15:44 of the ʼ705 patent) is missing from provisional application AU2003904317:
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`AU2003904317 at 10:23-26.
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`
`
`
`
`
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`ʼ208 Patent at 10:1-4
`
`
`
`
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`ʼ208 Patent at 15:26.
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`As yet another example, the ’208 and ’705 Asserted Claims require an “instruction.” See
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`ʼ208 Patent at Claim 1[k] (“means for mapping said series into an instruction;”) (emphasis added);
`
`id. at 9[f], 10[d]; see also ʼ705 Patent at 1[l], 10[f], 11[d], 14[c], 15[l], 16[f], 17[d]. There is no
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`disclosure of this “instruction” in provisional application AU2003904317, nor does the term
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`
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`18
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`“instruction” appear anywhere in provisional application AU2003904317.
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`Because the provisional application CPC appears to rely on for its alleged priority date for
`
`the Asserted Claims of the ’208 and ’705 patents lacks support for many claim limitation in the
`
`Asserted Claims, CPC is not entitled to its alleged August 13, 2003 priority date.
`
`V.
`
`INVALIDITY UNDER 35 U.S.C. § 101
`
`To be patentable subject matter under § 101, a claim must be directed to one of four eligible
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`subject matter categories: “new and useful process, machine, manufacture, or composition of
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`matter.” 35 U.S.C. § 101. “Claims that fall within one of the four subject matter categories may
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`nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract
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`ideas.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir.
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`2014) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). The Supreme Court established
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`a two-step test for deciding the subject matter eligibility of claims under § 101. Alice Corp. Pty.
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`Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). First, the claims must be analyzed to
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`determine whether they are drawn to one of the statutory exceptions. Id. Claims that invoke
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`generic computer components instead of reciting specific improvements in computer capabilities
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`are abstract under this first step. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
`
`(Fed. Cir. 2016). Second, the elements of the claims must be viewed both individually and as an
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`ordered combination to see if there is an “inventive concept.” Id. The mere fact that a claim recites
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`or implies that an abstract idea is implemented using a general-purpose computer does not supply
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`an inventive concept necessary to satisfy § 101. See Elec. Power Grp., LLC v. Alstom S.A., 830
`
`F.3d 1350, 1355 (Fed. Cir. 2016); Alice, 134 S. Ct. at 2357-59.
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`All of the asserted claims of the ʼ705 patents are directed to ineligible subject matter under
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`
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`19
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`35 U.S.C. § 101 and applicable case law authority.25 At Alice step one, the asserted claims of the
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`ʼ705 patent are directed to the ineligible abstract idea of receiving, comparing, and transmitting
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`information. Each of the asserted claims of the ʼ705 patent generally recite the same simple
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`system: receiving a biometric signal, comparing the biometric signal to an existing biometric
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`signature, and transmitting a signal to access a controlled item. See, e.g., ’705 Patent Claims 1,
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`10, 11, 15, 16, and 17. Neither the asserted claims of the ʼ705 patent nor the specifications of the
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`ʼ705 patent disclose any technological improvement to any technological problem; instead the
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`claimed features merely apply conventional, generic user interface and touch technologies. At
`
`Alice step two, the asserted claims of the ʼ705 patent fail to disclose an inventive concept. The
`
`asserted claims of
`
`the
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`ʼ705 patent
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`recite generic biometric sensors, conventional
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`receivers/transmitters, and ordinary database technologies at the highest level of abstraction, which
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`
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`25 See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014); Mayo Collaborative
`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012); Trading Techs. Int’l, Inc. v. IBG, LLC,
`921 F.3d 1084 (Fed. Cir. 2019); ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir.
`2019); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018); Interval Licensing
`LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018); Aatrix Software, Inc. v. Green Shades Software,
`Inc., 882 F.3d 1121 (Fed. Cir. 2018); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017), cert. denied, 139 S. Ct. 378 (2018); Intellectual Ventures I LLC
`v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017); Apple, Inc. v. Ameranth, Inc., 842 F.3d
`1229 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir.
`2016); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Enfish, LLC v.
`Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
`1369 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363
`(Fed. Cir. 2015); Internet Patents Corp. v. Active Network, Inc, 790 F.3d 1343 (Fed. Cir. 2015);
`OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); Content Extraction &
`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014); DDR
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
`1344 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
`2011); Automated Tracking Sols., LLC v. Coca-Cola Co., 723 F. App'x 989 (Fed. Cir. 2018);
`EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App’x 969, 971 (Fed. Cir. 2017); Yu v. Apple
`Inc., 1 F.4th 1040 (Fed. Cir. 2021).
`
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`20
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`does not add anything particularly inventive to the asserted claims. See, e.g., Yu v. Apple Inc., 1
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`F.4th 1040, 1043 (Fed. Cir. 2021) (“Only conventional camera components are recited to
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`effectuate the resulting “enhanced” image—two image sensors, two lenses, an analog-to-digital
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`converting circuitry, an image memory, and a digital image processor. Indeed, it is undisputed that
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`these components were well-known and conventional.”); see also id. at 1045 (“Because claim 1 is
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`recited at a high level of generality and merely invokes well-understood, routine, conventional
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`components to apply the abstract idea identified above … claim 1 fails at step two, see, e.g., Alice,
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`573 U.S. at 225–26, 134 S.Ct. 2347; Mayo, 566 U.S. at 73, 132 S.Ct. 1289; see also, e.g., In re TLI
`
`Commc’ns, 823 F.3d at 615 (concluding patent claims ineligible at step two in part because ‘the
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`recited physical components behave exactly as expected according to their ordinary use’).”).
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`Considered collectively, the limitations of the asserted claims of the ʼ705 patent amount to nothing
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`more than receiving, comparing, and transmitting information using conventional components.
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`VI.
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`INVALIDITY UNDER 35 U.S.C. §§ 102 AND 103
`
`Defendant identifies the following prior art now known to Defendant to anticipate or render
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`obvious the Asserted Claims under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), and/or § 103,
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`either expressly or inherently as understood by a POSITA.
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`Exhibits A-1 through A-10 (for the ’039 Patent) and C-1 through C-23 (for the ’705 Patent)
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`provide detailed claim charts showing where each claim element may be found in the particular
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`references being charted. Nothing in the Exhibits should be taken as a concession that the claims
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`are not indefinite.
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`For those references for which detailed claim charts are provided in the Exhibits (Exhibits
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`A-1 through A-10 and C-1 through C-23), the Exhibit Number is listed next to the prior art
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`reference in the attached Index of Claim Charts. Prior art references which are not associated with
`
`an Exhibit Number are additional prior art references that are pertinent to the invalidity of the
`21
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`Patent-in-Suit, either alone or in combination with other references. At this time, Defendant has
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`not provided claim charts for each of these additional references, either because they are cited in
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`conjunction with references for which charts have already been provided are cited in these
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`contentions, and/or because these references have similar disclosures to the prior art references for
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`which invalidity charts have been provided and/or may be used to show the state of the art.
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`Defendant also incorporates as if fully set forth in these contentions the complete
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`prosecution histories for the Patents-in-Suit and related patents, including the prior art and
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`supporting documents cited in those prosecution histories. Defendant may cite or rely upon the
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`prosecution histories, the examiner’s findings, and the prior art cited therein to support or provide
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`context for these invalidity contentions.
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`Defendant also incorporates as if fully set forth in these contentions the following inter
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`partes review petitions filed by Defendant and served on Plaintiff on February 23, 2022:
`
`
`
`
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`IPR2022-00600 (ʼ039 Patent)
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`IPR2022-00602 (ʼ705 Patent)
`
`Defendant not only relies upon the prior art disclosed in these invalidity contentions, but
`
`also rely on any commercial embodiments and accompanying literature (or other evidence and/or
`
`witness testimony) of the various assignees that correspond to the respective disclosures found
`
`within the prior art disclosed in these contentions. The assignees’ various and respective
`
`commercial embodiments and/or corresponding literature (or other evidence and/or witness
`
`testimony) anticipate and/or render obvious the claims of the Patents-in-Suit for at least the reasons
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`disclosed in these invalidity contentions and claim charts, as well as for other independent reasons
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`found within the commercial embodiments and corresponding literature. Defendant also reserves
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`the right to rely on related patents, published applications, foreign patents or publications, and
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`
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`22
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`other patent documents as necessary to establish prior art status or clarify the disclosures cited.
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`Defendant further reserves the right to rely on the earliest publication or pri