Wednesday, June 8, 2022 at 09:29:06 Central Daylight Time
`
`Subject:
`Date:
`From:
`To:
`
`XR Communica,ons v. Apple - infringement conten,ons
`Thursday, January 13, 2022 at 7:04:38 AM Central Standard Time
`Lesley Hamming
`rmirzaie@raklaw.com, pkroeger@raklaw.com, pwang@raklaw.com, jpickens@raklaw.com,
`mchan@raklaw.com, Chris,an W. Conkle, Jason Wietholter
`CC:
`Laura Mulligan, Doug Winnard, Michael Pieja, Jennie Hartjes
`AFachments: image001.png, 20220113_Apple_Ltr re infringement conten,ons.pdf
`
`Counsel -
`
`Please view the aTached leTer.
`
`Thank you,
`Lesley
`
`Lesley M. Hamming
`Associate
`200 South Wacker Dr, 22nd Floor, Chicago, IL 60606
`D 312-881-5995 C 847-309-3783 F 312-881-5191
`
`
`
`The information contained in this communication is confidential and should be considered to be attorney work product and/or attorney-client privileged.
`This communication is the property of Goldman Ismail Tomaselli Brennan & Baum LLP and is intended only for the use of the addressee. If you are not
`the intended recipient, please notify the sender, delete the message, and note that any distribution or copying of this message is prohibited. Any
`discussion of tax matters contained herein is not intended or written to be used, and cannot be used, for the purpose of avoiding any penalties that
`may be imposed under federal tax laws.
`
`APPLE ET AL. 1042
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`1
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`SENT VIA
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`January 13, 2022
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`Lesley Hamming
`312.881.5995
`lhamming@goldmanismail.com
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`SENT VIA E-MAIL
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`Reza Mirzaie
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA, 90025
`rmirzaie@raklaw.com
`
`
`
`Re: XR Communications, LLC, dba Vivato Technologies v. Apple Inc., Case No. 6:21-cv-620-ADA, XR’s
`Infringement Contentions
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`
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`Dear Reza:
`
` I
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` write regarding several deficiencies in Plaintiff XR Communications’ (“XR’s”) preliminary disclosure of
`asserted claims and infringement contentions (“PICs”), served on December 20, 2021. Under the Court’s
`Order Governing Proceedings, XR was required to provide “a chart setting forth where in the accused
`product(s) each element of the asserted claim(s) are found.” OGP Version 3.5.1 at 1. XR has failed to do
`so for at least the following reasons:
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`Claim 1
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`First, XR’s PICs for claim 1 do not show “where in the accused product(s)” each claim element is found
`because they do not even map the claims to a single product. Claim 1 requires a device that includes a
`“transceiver” that both “receives a first [and second] signal transmission from a remote station” (element
`1[d]) and uses a “set of weighting values . . . to construct one or more beam-formed transmissions”
`(element 1[g]). XR’s claim chart for elements [1b] and [1d] points to the iPhone 12 as the device that
`allegedly includes this “transceiver.” PICS, App’x A at 9 (Dec. 20, 2021). Element [1g] then refers to “the
`transceiver,” confirming that it is referring to the same “transceiver” as elements [1b] and [1d]. For
`element [1g], however, XR alleges that “the transceiver” which performs the claimed “beam-form[ing]” is
`found in “the remote station (e.g., a Wi-Fi access point).” Id. at 36. XR’s chart improperly combines
`features of two different products (only one of which is an Apple product) to satisfy the same limitation at
`different points in claim 1. It thus does not show “where in the accused” iPhone 12—or any other Apple
`product— “each element” of claim 1 is found, as the OGP requires.
`
`
`
`Chicago 200 South Wacker, 22nd Floor, Chicago, IL 60606
`Dallas 7557 Rambler Road, Suite 1450, Dallas, TX 75231
`Santa Monica 100 Wilshire Boulevard, Suite 1760, Santa Monica, CA 90401 goldmanismail.com
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`January 13, 2022
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`Further, elements [1e] and [1f] require, respectively, “first signal information” and “second signal
`information [that] is different from the first signal information.” In other words, claim 1 requires that XR
`identify two “different” pieces of signal information. In its chart, however, XR points to only a single piece
`of alleged “signal information” for both elements: “parameters in the beamforming feedback matrix.” Id. at
`18 & 27. Because the claim requires two “different” pieces of signal information, XR’s chart does not
`show “where in the accused products each” of these elements is found.
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`Claim 2
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`For claim 2, XR’s PICs merely point back to element [1d], stating, in their entirety, “see supra claim
`element [1d].” Id. at 47. But dependent claim 2 contains additional elements that are not present in claim
`[1d]. In particular, claim 2 claims “wherein the first signal transmission and the second signal
`transmission comprise electromagnetic signals comprising one more transmission peaks and one or more
`transmission nulls”—a requirement that is not present in claim [1d]. XR’s unexplained reference to a claim
`that lacks these limitations cannot satisfy the OGP’s requirement that XR show “where in the accused
`product” they are found.
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`Claims 4 and 12
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`For claims 4 and 12, XR’s PICs refer to the “Echo Show 10.” Id. at 47. This is not an Apple product at
`all—it appears to be a type of display sold by Amazon. Mapping claim 4 to an Amazon product is not a
`proper disclosure of infringement contentions against Apple.
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`Further, claims 4 and 12 require that a signal’s “content comprises data configured to be used by the
`remote station to modify the placement of one or more transmission peaks and one or more transmission
`nulls.” XR’s PICs for claim 4 merely point back to element [1d], stating, in its entirety, “see supra claim
`element [1d].” Id. at 47. XR’s PICS for claim 12, in turn, point back to claim 4.1 But element [1d] has
`nothing to do with the use of “content” or “data” to “modify the placement of one or more transmission
`peaks and . . . nulls.” Indeed, element [1d] does not even mention content, data, peak, or nulls. Instead, it
`refers to the receipt of two generic “transmissions” simultaneously. XR’s unexplained cross-reference to a
`claim that lacks any of the elements of claims 4 and 12 cannot satisfy the OGP’s requirement that XR
`show “where in the accused product each element” of that claim is found.
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`Claim 8
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`For element [8d] of claim 8, XR again relies entirely on an unexplained reference to element [1g]. Id. at
`50. But these two elements are different. Element [8d] requires a set of weighting values “configured to
`be used by the remote station” to engage in beam-forming. Element [1g], in contrast, claims a set of
`weighting values “configured to be used by the transceiver.” XR’s cross-reference thus cannot and does
`not show where XR believes the claimed weights “to be used by the transceiver” itself are found in any
`Apple product for claim 8.
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`Claims 9 and 16
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`For claims 9 and 16, it is not clear whether XR’s contentions contain a typographical error or whether the
`cross-references cited in those claims reflect XR’s actual positions. Claim 9, for example, claims
`“transmitting the third signal to the remote station via the antenna,” yet XR cites back to element [1a] that
`contains no mention of a third signal. Claim 16 likewise claims “wherein the first signal transmission and
`the second signal transmission comprise electromagnetic signals comprising one or more transmission
`peaks and one or more transmission nulls,” yet XR cites back to element [1d] that contains no mention of
`“electromagnetic signals” or “peaks” and “nulls.” Please clarify whether XR intended to cite to different
`elements of these claims, or whether this accurately reflects XR’s substantive position. If XR stands by
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`1 XR’s PICS for claim 12 also refer to claim 11, which also is unrelated to the modification of peaks, nulls,
`or any other part of a signal.
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`January 13, 2022
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`the cross-references provided, please explain why it believes they are appropriate given that claims 9 and
`16 contain limitations not present in the referenced parts of claim 1.
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`Claim 15
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`The language of element [15g] tracks that of element [1g], and XR’s contentions for both are the same.
`XR’s contentions for element [15g] suffer from the same issues set forth above with respect to claim 1,
`and fail to comply with the OGP for the same reasons.
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`Indirect Infringement
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`XR stated that it asserts “indirect infringement under 35 U.S.C. §271(b).” PICS at 2 (Dec. 20, 2021).
`These allegations are improper because the Court has dismissed XR’s indirect infringement claims
`(induced and contributory infringement).2 (Dkt. No. 18). Please confirm that XR is withdrawing its indirect
`infringement claims at this time.
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`Doctrine of Equivalents
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`XR provided no substantive disclosures in support of its allegations of infringement under the doctrine of
`equivalents (“DOE”). XR instead stated in toto: “[t]o the extent [Apple] contends that other limitations are
`not literally infringed, [XR] asserts that the limitation is infringed under the doctrine of equivalents.” PICS
`at 4 (Dec. 20, 2021). This is improper because it does not show “where in the accused product(s) each
`element of the asserted claim(s) are found”—or even where any element is found—under the doctrine of
`equivalents as required by the OGP. To the extent XR intends to assert a theory of infringement under
`the doctrine of equivalents, please confirm that it will supplement its infringement contentions to include a
`disclosure of that theory on an element-by-element basis.
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`If Plaintiffs are unwilling to provide, by January 21, supplemental contentions that address each of the
`deficiencies set forth above, please provide your availability for a meet-and-confer on January 19.
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`Apple’s evaluation of XR’s infringement contentions is preliminary and ongoing. Apple’s discussion of
`particular claim elements or parts of elements in this letter is not an admission that these or other
`elements or parts of elements are present in any Apple product or that XR’s contentions for any elements
`are sufficient. Apple reserves the right to raise other issues and identify additional deficiencies based on
`its further assessment, the parties’ and the Court’s positions on claim construction, fact or expert
`discovery, or any other information put forward in this or the CRSR Related Cases.
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`Sincerely yours,
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`CC:
`Paul A. Kroeger
`pkroeger@raklaw.com
`
`Lesley M. Hamming
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`
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`2 The dismissal was made without prejudice to XR seeking discovery relevant to these allegations, to
`which Apple reserves its right to raise appropriate objections, and without prejudice to XR amending the
`Complaint to allege induced infringement and contributory infringement.
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`January 13, 2022
`Page 4
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`Philip X. Wang
`pwang@raklaw.com
`James N. Pickens
`jpickens@raklaw.com
`Minna Chan
`mchan@raklaw.com
`Christian Conkle
`cconkle@raklaw.com
`Jason Wietholter
`jwietholter@raklaw.com
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