`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`EXPRESS MOBILE, INC.,
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`Case No. 6:20-cv-00803-ADA
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`Plaintiff,
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`Jury Trial Demanded
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`v.
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`FACEBOOK, INC.,
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`Defendant.
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`PLAINTIFF EXPRESS MOBILE, INC.’S PRELIMINARY INFRINGEMENT
`CONTENTIONS AND IDENTIFICATION OF PRIORITY DATES
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`Plaintiff Express Mobile, Inc. (“Plaintiff” or “Express Mobile”) serves its preliminary
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`infringement contentions and identification of priority dates (“Disclosure”) on Defendant
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`Facebook, Inc. (“Defendant” or “Facebook”), (regarding U.S. Patent No. 6,546,397 (the “’397
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`Patent”), U.S. Patent No. 7,594,168 (the “’168 Patent”), U.S. Patent No. 9,928,044 (the “’044
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`Patent”), U.S. Patent No. 9,471,287 (the “’287 Patent”) and U.S. Patent No. 9,063,755 (the “’755
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`Patent”) (collectively, the “patents-in-suit”).
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`Express Mobile bases this Disclosure on its current knowledge, understanding, and belief
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`as to the facts and information available as of the date of this Disclosures. Express Mobile has
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`not yet completed its investigation, collection of information, discovery, or analysis relating to
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`this action, and additional discovery, including discovery from Facebook and third parties, may
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`lead Express Mobile to amend, revise, and/or supplement this Disclosure. Express Mobile
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`specifically reserves the right to amend, revise and/or supplement this Disclosure and/or
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`accompanying exhibits in accordance with any Orders of record in this matter, and Federal Rule
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`of Civil Procedure 26(e), as additional documents and information become available and
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`investigation proceed. Express Mobile further reserves the right to amend its Preliminary
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`1
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`Facebook's Exhibit No. 1016
`Page 001
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`Page 1 of 7
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`GOOGLE EXHIBIT 1016
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`
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`Infringement Contentions, including the claims asserted, based on any proceeding(s) before the
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`United States Patent and Trademark Office, if any, regarding any Express Mobile patent.
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`Express Mobile reserves the right to supplement, modify or amend this Disclosure to include
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`additional products or services made, used, sold, or offered for sale in or imported into the
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`United States by Facebook.
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`This Disclosure is made without prejudice to any position Express Mobile may take with
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`respect to claim construction. Express Mobile reserves its right to supplement this Disclosure
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`and exhibits based on the Court’s claim construction. Express Mobile further reserves the right
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`to introduce and use such supplemental materials at trial.
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`The information in this Disclosure is not an admission regarding the scope of any claims
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`or the proper construction of those claims or any claims contained therein. The production of
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`documents accompanying this Disclosure is not an admission that such documents are admissible
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`and Express Mobile does not waive any objections regarding admissibility. Express Mobile
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`reserves the right to supplement its production of documents accompanying this disclosure upon
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`identification or receipt of additional documents, including documents from third parties.
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`I.
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`PRELIMINARY INFRINGEMENT CONTENTIONS
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`Express Mobile’s preliminary infringement contentions are attached hereto as Exhibits
`A1-E7. At this stage, Express Mobile provides charts for the following claims of the Asserted
`Patents:
`’397 patent
`•
`’397 patent on Facebook.com, Facebook’s mobile application, Facebook’s Pages
`features, Facebook’s Ads platform, Facebook’s Creator Studio, Facebook’s
`Workplace platform, and Facebook’s Analytics platform: claim 1 (Exhibits A1-
`A6)
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`2
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`Facebook's Exhibit No. 1016
`Page 002
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`Page 2 of 7
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`GOOGLE EXHIBIT 1016
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`’168 patent
`•
`’168 patent on Facebook.com, Facebook’s mobile application, Facebook’s Pages
`features, Facebook’s Ads platform, Facebook’s Creator Studio, and Facebook’s
`Workplace platform: claims 1-4 and 6 (Exhibits B1-B5)
`’755 patent
`•
`’755 patent on Facebook Stories features, Facebook’s Marketplace features,
`Facebook’s Creator Studio, Facebook’s Business Suite and Ad Center, and
`Facebook’s Analytics platform: claims 1-3, 5-7, and 11 (Exhibit C1, and C3-C6)
`‘755 patent on Facebook’s Pages features: claims 1, 2, 5, 6, and 11 (Exhibit C2)
`‘755 patent on Facebook’s Workplace platform: claims 1, 2, 5-7, and 11 (Exhibit
`C7)
`’287 patent
`•
`‘287 patent on Facebook’s Stories features, Facebook’s Marketplace features,
`Facebook’s Creator Studio, Facebook’s Business Suite and Ad Center, and
`Facebook’s Analytics platform: claims 1-3, 5-7, 11, and 12 (Exhibit D1, and D3-
`D6)
`‘287 patent on Facebook’s Pages features and Facebook’s Workplace platform:
`claims 1, 2, 5, 6, 11, and 12 (Exhibits D2 and D7)
`’044 patent
`•
`‘044 patent on Facebook’s Stories features, Facebook’s Marketplace features,
`Facebook’s Creator Studio, Facebook’s Business Suite and Ad Center, and
`Facebook’s Analytics platform: claims 1-3, 5-7, 11, and 12 (Exhibits E1, and E3-
`E6)
`‘044 patent on Facebook’s Pages features, and Facebook’s Workplace platform:
`claims 1, 2, 5, 6, 11, and 12 (Exhibit E2 and E7)
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`•
`•
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`•
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`•
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`///
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`3
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`Facebook's Exhibit No. 1016
`Page 003
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`Page 3 of 7
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`GOOGLE EXHIBIT 1016
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`II.
`PRELIMINARY IDENTIFICATION OF THE PRIORITY DATE FOR EACH
`CLAIM OF THE ASSERTED PATENTS
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`Based on currently available information, Express Mobile identifies that the inventions of
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`the ’397 and ’168 Patents were conceived by Steve Rempell at least as early as April 1999. Express
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`Mobile further identifies that the inventions of the ’397 and ’168 Patents were reduced to practice
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`by Steve Rempell at least as early as June 1999. Steve Rempell diligently worked to reduce the
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`inventions of the ’397 and ’168 Patents to practice, including through source code development.
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`Thus, each of the asserted claims of the ’397 and ’168 Patents are entitled to a priority date of at
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`least as early as April 1999.
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`Based on currently available information, Express Mobile identifies that the inventions of
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`the ’755, ’287, and ’044 Patents were conceived by inventors Steve Rempell, David Chrobak, and
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`Ken Brown at least as early as January 12, 2008. Express Mobile further identifies that the
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`inventions of the ’755, ’287, and ’044 Patents were reduced to practice thereafter by at least as
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`early as November 11, 2008. For example, Express Mobile identifies provisional patent
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`application No. 61/113,471, filed on November 11, 2008, as relevant to and supportive of the work
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`related to the identified reduction to practice at least as early as November 11, 2008. Express
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`Mobile further identifies that Steve Rempell, Ken Brown, and Dave Chrobak diligently worked to
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`reduce the inventions of the ’755, ’287, and ’044 Patents to practice, including through source
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`code and other technical development. Thus, each of the asserted claims of the ’755, ’287, and
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`’044 Patents are entitled to a priority date of at least as early as January 12, 2008. Alternatively,
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`Express Mobile identifies that each of the asserted claims of the ’755, ’287, and ’044 Patents are
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`entitled to a priority date of at least as early as November 11, 2008, which is the filing date of
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`provisional patent application No. 61/113,471.
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`4
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`Facebook's Exhibit No. 1016
`Page 004
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`Page 4 of 7
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`GOOGLE EXHIBIT 1016
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`Express Mobile’s investigation relating to the conception and reduction to practice of the
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`patented inventions is ongoing and it therefore reserves the right to supplement and/or modify this
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`date as discovery in this case continues.
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`III. DOCUMENT
`PRODUCTION
`INFRINGEMENT CONTENTIONS
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`ACCOMPANYING
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`PRELIMINARY
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`Subject to ongoing investigation and based on available information to date, non-privileged
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`documents due with these Preliminary Infringement Contentions, including at least documents
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`within Express Mobile’s possession, custody, and/or control evidencing conception and reduction
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`to practice for each claimed invention and a copy of the file history for each Patent-in-Suit, have
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`been produced or are being produced. Express Mobile reserves the right to supplement its
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`production and its identification of documents as additional discovery is conducted, including but
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`not limited to third-party discovery evidencing conception and reduction to practice that may be
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`produced in the ordinary course of these proceedings.
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`Express Mobile identifies XMO_0000001 – XMO_00000343 as being copies of the
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`Patents-in-Suit.
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`Express Mobile identifies XMO_00000344 – XMO_00003581 as being copies of the file
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`histories for the Patents-in-Suit.
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`As to the ’397 and ’168 patents, Express Mobile identifies XMO_00003614 –
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`XMO_00006203 as evidencing the conception, reduction to practice, design, and development of
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`each claimed invention.
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`As to the ’755, ’287, and ’044 patents, Express Mobile identifies XMO_00006204 –
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`XMO_00006543, XMO_00006544 – XMO_00006848, BROWN0000320 – BROWN0000401,
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`BROWN0000587 – BROWN0001219, BROWN0005492 – BROWN0005524, BROWN0006788
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`– BROWN0006813, BROWN0007406
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`– BROWN0007416, BROWN0007419
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`–
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`BROWN0007420, BROWN0007613 – BROWN0007637, BROWN0008370 – BROWN0008591,
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`5
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`Facebook's Exhibit No. 1016
`Page 005
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`Page 5 of 7
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`GOOGLE EXHIBIT 1016
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`
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`BROWN0010534 – BROWN0010567, BROWN0010597 – BROWN0014509 as evidencing the
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`conception, reduction to practice, design, and development of each claimed invention.
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`Dated: February 5, 2021
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`/s/ Robert F. Kramer
`Robert F. Kramer (pro hac vice)
`rkramer@feinday.com
`M. Elizabeth Day (pro hac vice)
`eday@feinday.com
`David Alberti (pro hac vice)
`dalberti@feinday.com
`Sal Lim (pro hac vice)
`slim@feinday.com
`Russell Tonkovich (pro hac vice)
`rtonkovich@feinday.com
`Marc Belloli (pro hac vice)
`mbelloli@feinday.com
`FEINBERG DAY KRAMER ALBERTI
`LIM TONKOVICH & BELLOLI LLP
`577 Airport Boulevard, Suite 250
`Burlingame, California 94010
`Telephone: (650) 825-4300
`Facsimile: (650) 460-8443
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`Robert Christopher Bunt
`State Bar No. 0078716
`rcbunt@pbatyler.com
`Charles Lewis Ainsworth
`State Bar No. 00783521
`charley@pbatyler.com
`PARKER, BUNT & AINSWORTH, P.C.
`100 E. Ferguson Suite 418
`Tyler, Texas 75702
`903-531-3535
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`Attorneys for Plaintiff,
`Express Mobile, Inc.
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`6
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`Facebook's Exhibit No. 1016
`Page 006
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`Page 6 of 7
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`GOOGLE EXHIBIT 1016
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that on February 5, 2021, a copy of the foregoing was
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`served via email to all counsel of record.
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`By: /s/ Adriana Cole
` Adriana Cole
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`7
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`Facebook's Exhibit No. 1016
`Page 007
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`Page 7 of 7
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`GOOGLE EXHIBIT 1016
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