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`JAWBONE INNOVATIONS, LLC,
`
`
`Plaintiff,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION

`

`Case No. 6:21-cv-00985-ADA

`

`JURY TRIAL DEMANDED

`






`
`
`PLAINTIFF’S DISCLOSURE OF
`ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
`
`
`
`
`v.
`
`
`GOOGLE LLC,
`
`
`
`Defendant.
`
`Plaintiff Jawbone Innovations, LLC, (“Jawbone” or “Plaintiff”) hereby makes the
`
`following infringement disclosures under the Court’s Standing Order Governing Proceedings in
`
`Patent Cases with respect to United States Patent Nos. 8,019,091 (the “’091 Patent”), 7,246,058
`
`(the “’058 Patent”), 8,280,072 (the “’072 Patent”), 8,321,213 (the “’213 Patent”), 8,326,611 (the
`
`“’611 Patent”), 10,779,080 (the “’080 Patent”), 11,122,357 (the “’357 Patent”), 8,467,543 (the
`
`“’543 Patent”), and 8,503,691 (the “’691 Patent”) (collectively,
`
`the “Jawbone Patents” or
`
`“Asserted Patents”).. Jawbone’s investigation is ongoing, and discovery is in its preliminary
`
`stages. Accordingly, these disclosures are based on information available to Jawbone at this time.
`
`Jawbone reserves the right to supplement this disclosure after further discovery from Defendant
`
`Google LLC (“Google” or “Defendant”) and non-parties, particularly documents and other
`
`discovery regarding Google’s accused devices. Jawbone also reserves the right to assert additional
`
`claims of the Jawbone Patents, accuse different products, or find alternative literal and/or
`
`equivalent infringing elements in Google’s products.
`
`
`
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 001
`
`

`

`I.
`
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS
`
`A.
`
`ASSERTED CLAIMS
`
`Google has infringed and/or continues to infringe one or more of the following claims of
`
`the Jawbone Patents in connection with the Accused Products set forth below:
`
`• Claims 1-18 of the ’091 Patent;
`
`• Claims 1-4 of the ’058 Patent;
`
`• Claims 1-9 of the ’072 Patent;
`
`• Claims 1-42 of the ’213 Patent;
`
`• Claims 1-44 of the ’611 Patent;
`
`• Claims 1-20 of the ’080 Patent;
`
`• Claims 1-20 of the ’357 Patent;
`
`• Claims 1, 3, 6-13, 19-23, and 26 of the ’543 Patent; and
`
`• Claims 1-46 of the ’691 patent..
`
`B.
`
`ACCUSED INSTRUMENTALITIES
`
`1.
`
`Accused Products
`
`(a)
`
`’218, ’855, ’787, ’009, ’046 and ’724 Patents
`
`Jawbone is currently aware that certain of Defendant’s products infringe one or more of
`
`the Asserted Patents. Upon information and belief, these Accused Products include: all versions
`
`and variants of Google smartphones, smart speakers, and earbuds made, sold, offered for sale,
`
`used, or imported in the United States since 2015, including but not limited to: Nexus 5, Nexus 6,
`
`Nexus 5X, Nexus 6P, Pixel (1st Generation), Pixel 2, Pixel 3, Pixel 3a, Pixel 4, Pixel 4a, Pixel 5,
`
`Pixel 5a, Pixel 6, Pixel Buds, Pixel Buds A-Series, Pixel Buds 2, Google Home, Home Mini, Home
`
`Max, Home Hub/Nest Hub, Nest Mini, Nest Audio, and Nest Hub (2nd Generation), as well as
`
`2
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 002
`
`

`

`software providing and/or utilizing acoustic noise suppression functionalities, including but not
`
`limited to all versions of the Android Operating System, Android Auto, GMS Core, and Android
`
`applications including voice sensing functionality, such as Google Assistant, Google Duo, Google
`
`Meet, Phone, Camera, Google Camera, Google Voice, and Google Now.1 For avoidance of doubt,
`
`these products include all versions and revisions thereto and associated software.
`
`2.
`
`Claim Charts
`
`Claim charts identifying a location of every element of every asserted claim of the
`
`Jawbone Patents within the Accused Products are attached hereto as Appendices A through I.
`
`Jawbone believes that the Accused Products cited in the claim charts are representative of the
`
`Accused Products, including all generations and versions.
`
`Jawbone reserves the right to amend these claim charts, as well as other information
`
`contained in this document and the Appendices attached hereto, to incorporate new information
`
`identified after these contentions were served or learned during the course of discovery including,
`
`but not limited to, information that is not publicly available or readily discernible without
`
`discovery.2
`
`C.
`
`LITERAL INFRINGEMENT AND DOCTRINE OF
`EQUIVALENTS
`
`Jawbone asserts that, under the proper construction of the asserted claims and their claim
`
`terms, the limitations of the asserted claims of the Jawbone Patents are literally present in the
`
`Accused Products, as set forth in the claim charts attached hereto as Appendices A through I.
`
`Jawbone contends that any and all elements found not to be literally infringed are infringed
`
`
`1 Jawbone has provided additional information regarding certain aspects of the Accused Products in the attached
`Claim Charts, Appendices A-I.
`2 Dkt. 23 at 1 n.1.
`
`3
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 003
`
`

`

`under the doctrine of equivalents because the differences between the claimed inventions and the
`
`accused instrumentalities, if any, are insubstantial.
`
`Jawbone also contends that Defendant has directly infringed and/or continues to directly
`
`infringe the asserted claims by making, using offering for sale, selling, and importing into the
`
`United States the accused instrumentalities. Furthermore, Jawbone also contends that Defendant
`
`indirectly infringes by contributing to and/or inducing others (e.g., Defendant’s service providers
`
`or partners, suppliers, Defendant’s customers, or its customers’ customers) to directly infringe
`
`those claims by making or using the Accused Products. In addition, Jawbone contends that
`
`Defendant directly infringes to the extent that activities of third parties may be legally
`
`attributable to Defendant. Jawbone contends that Defendant induces infringement of the Jawbone
`
`Patents by others (e.g., end-users of the Accused Products and Defendant’s customers) by
`
`inducing others to make or use the Accused Products with the knowledge that this making or
`
`using directly infringes the Jawbone Patents or, in the alternative, with the belief that there was a
`
`high probability that others infringe the Jawbone Patents, but while remaining willfully blind to
`
`the infringement. Such indirect infringement is further evidenced by Defendant’s technical
`
`materials and marketing materials including, but not limited to, marketing materials, product
`
`briefs, product specifications, troubleshooting guides, technical support websites, reference
`
`manuals, and other business documents and communications conveyed to Defendant’s
`
`customers.
`
`Jawbone also contends that Defendant has contributorily infringed and/or continues to
`
`contributorily infringe with knowledge that the Accused Products, or the use thereof, infringe the
`
`Jawbone Patents. Defendants knowingly and intentionally contributed to the direct infringement
`
`of the Jawbone Patents by others, by supplying the Accused Products and/or associated software,
`
`4
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 004
`
`

`

`that embody a material part of the claimed invention of the Jawbone Patents, that are known by
`
`the Defendant to be specially made or adapted for use in an infringing manner and are not staple
`
`articles with substantial non-infringing uses.
`
`Pursuant to the Court’s Standing Order Governing Patent Cases and Scheduling Order,
`
`Jawbone reserves the right to amend its Infringement Contentions as to literal infringement or
`
`infringement under the doctrine of equivalents in light of the Court’s claim construction.
`
`PRIORITY DATES
`
`D.
`Each of the asserted claims of the ‘091 Patent has an earliest invention date in June 2000.
`
`Each of the asserted claims of the ‘091 Patent is further entitled to at least the priority date of its
`
`earliest application, U.S. Provisional Patent Application No. 60/219,297, with a filing date of
`
`July 19, 2000.
`
`Each of the asserted claims of the ‘058 Patent has an earliest invention date in June 2000.
`
`Each asserted claim is further entitled to at least the filing date of its earliest application, U.S.
`
`Provisional Patent Application No. 60/294,383, filed May 30, 2001.
`
`Each of the asserted claims of the ‘072 Patent is entitled to at least the priority date of its
`
`earliest application, U.S. Patent Application No. 10/400,282, with a filing date of March 27,
`
`2003.
`
`Each asserted claim of the ’213 Patent has an earliest invention date in June 2005. Each
`
`of the asserted claims of the ‘213 Patent is further entitled to at least the filing date of its earliest
`
`application, U.S. Patent Application No. 11/805,987 filed May 25, 2007.
`
`Each asserted claim of the ’611 Patent has an earliest invention date of June 2005. Each
`
`of the asserted claims of the ‘611 Patent is further entitled to at least the filing date of its earliest
`
`application, U.S. Patent Application No. 11/805,987, filed May 25, 2007.
`
`5
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 005
`
`

`

`Each asserted claim of the ’080 Patent has an earliest invention date of June 2005. Each
`
`of the asserted claims of the ‘080 Patent is further entitled to at least the filing date of its earliest
`
`application, U.S. Provisional Patent Application No. 60/934,551, filed June 13, 2007.
`
`Each asserted claim of the ’357 Patent has an earliest invention date of June 2005.Each of
`
`the asserted claims of the ‘357 Patent is further entitled to at least the filing date of its earliest
`
`application, U.S. Provisional Patent Application No. 60/934,551, filed June 13, 2007.
`
`Each asserted claim of the ’543 Patent has an earliest invention date of June 2000. Each
`
`of the asserted claims of the ‘543 Patent is further entitled to at least the filing date of its earliest
`
`application, U.S. Provisional Patent Application No. 60/368,209, filed March 27, 2002.
`
`Each asserted claim of the ’691 Patent has an earliest invention date of June 2005. Each
`
`of the asserted claims of the ’691 Patent is further entitled to at least the filing date of its earliest
`
`application, U.S. Provisional Patent Application No. 60/934,551, filed June 13, 2007.
`
`Jawbone reserves the right to establish an earlier date of invention based upon actions
`
`related to conception and reduction to practice of the claimed inventions.
`
`II.
`
`PRODUCTION OF DOCUMENTS PURSUANT TO PARAGRAPH 2 OF THE
`STANDING ORDER GOVERNING PATENT CASES
`
`Jawbone is producing or making available for inspection documents that are in Jawbone’s
`
`possession, custody, or control, as set forth in the Standing Order Governing Proceedings in Patent
`
`Cases.
`
`Dated: January 13, 2022
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /s/ Peter Lambrianakos
`Raymond W. Mort, III
`Texas Bar No. 00791308
`Email: raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
`
`6
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 006
`
`

`

`
`OF COUNSEL:
`
`Alfred R. Fabricant (pro hac vice)
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice)
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice)
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`Richard Cowell (pro hac vice)
`NY Bar No. 4617759
`Email: rcowell@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`ATTORNEYS FOR PLAINTIFF
`JAWBONE INNOVATIONS, LLC
`
`
`
`7
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 007
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 13, 2022, I served all counsel of record via electronic
`
`mail with a copy of the foregoing document and appendices. Any other counsel of record will be
`
`served by first-class U.S. mail.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Peter Lambrianakos
` Peter Lambrianakos
`
`
`
`
`
`
`
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 008
`
`

`

`
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 009
`
`Jawbone's Exhibit No. 2004, IPR2022-01124
`Page 009
`
`

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