UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`SPEIR TECHNOLOGIES LTD.,
`
`Plaintiff,
`
`Case No. 6:22-cv-00077-ADA
`
`JURY TRIAL DEMANDED
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`PLAINTIFF’S PRELIMINARY DISCLOSURE OF ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS TO DEFENDANT APPLE INC.
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`Speir Technologies Ltd. (“Plaintiff” or “Speir”) submits the following Preliminary
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`Disclosure of Asserted Claims and Infringement Contentions to Defendant Apple Inc.
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`(“Defendant” or “Apple”). This disclosure is based on the information available to Speir as of the
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`date of this disclosure, and Speir reserves the right to amend this disclosure to the full extent
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`consistent with the Court’s Rules and Orders.
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`I.
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`Asserted Claims
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`Speir asserts that Apple has infringed and continue to infringe at least the following claims
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`of Speir’s patents (collectively, the “Asserted Claims”):
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`A. U.S. Patent No. 8,345,780 (“the ’780 Patent”): Claims 1, 2, 3, 4, 7, 8, 9, 10, 11, 12,
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`13, and 14.
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`B. U.S. Patent No. 7,110,779 (“the ’779 Patent”): Claims 18, 19, 20, 21, and 23.
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`C. U.S. Patent No. 7,321,777 (“the ’777 Patent”): Claims 1, 2, 3, 6, 12, 13, 14, 16, 20,
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`and 21.
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`D. U.S. Patent No. 7,765,399 (“the ’399 Patent”): Claims 1, 2, 3, 4, 5, 6, 7, and 9.
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`1
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`APPLE 1016
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`Speir reserves the right to seek leave of court to add, delete, substitute, or otherwise amend
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`this list of asserted claims should further discovery, the Court’s claim construction, or other
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`circumstances so merit.
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`II.
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`Accused Products
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`Speir contends that the Asserted Claims are infringed by the various apparatuses used,
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`made, sold, offered for sale, or imported into the United States by Apple (the “Accused Products”).
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`The Accused Products include at least the following, as well as products with reasonably similar
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`functionality:
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`•
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`’780 Patent: iPhone 12, iPhone 12 Mini, iPhone 12 Pro, iPhone 12 Pro Max, iPhone
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`SE (3rd Generation), iPhone 13, iPhone 13 Mini, iPhone 13 Pro, iPhone 13 Pro Max,
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`iPad Pro (5th Generation), iPad Air (5th Generation), iPad Mini (6th Generation), and
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`any other products with 5G functionality.
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`•
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`’777 and ’779 Patents: iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max, iPhone 12,
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`iPhone 12 Mini, iPhone 12 Pro, iPhone 12 Pro Max, iPhone 13, iPhone 13 Mini, iPhone
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`13 Pro, iPhone 13 Pro Max, AirTags, and any other products with ultra-wideband
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`(“UWB”) functionality.
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`•
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`’399 Patent: iPhone 5s, iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone
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`SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPhone XR, iPhone
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`XS, iPhone XS Max, iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max, iPhone SE (2nd
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`Generation), iPhone 12, iPhone 12 Mini, iPhone 12 Pro, iPhone 12 Pro Max, iPhone
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`13, iPhone 13 Mini, iPhone 13 Pro, iPhone 13 Pro Max, iPhone SE (3rd Generation),
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`iPad (5th – 9th Generation with TouchID and/or FaceID), iPad Air (2nd – 5th
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`Generation with TouchID and/or FaceID), iPad Pro (1st – 5th Generation with TouchID
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`and/or FaceID), iPad Mini (3rd – 6th Generation with TouchID and/or FaceID),
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`MacBook Air (all models from 2018 – 2020 with TouchID), and MacBook Pro (all
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`models from 2016 – present with TouchID).
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`Speir reserves the right to amend this list of Accused Products, as well as other information
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`contained in this document and the exhibits hereto, to incorporate new information learned during
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`the course of discovery, including, but not limited to, the inclusion of newly released products,
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`versions, or any other equivalent devices ascertained through discovery. Further, to the extent any
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`accused infringing products have gone through or will go through name changes, but were or will
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`be used or sold with the same accused features, earlier corresponding products under different
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`names also are accused.
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`III. Claim Charts
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`Claim charts identifying a location of every element of every asserted claim of the asserted
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`Speir Patents within accused products are attached hereto as Exhibits A-D. Speir’s analysis of the
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`Accused Products is based on limited publicly available information and based on Speir’s own
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`investigation prior to any discovery in this action. In an effort to focus the issues, Speir identifies
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`exemplary evidence for each claim limitation. The evidence cited for a particular limitation should
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`be considered in light of the additional evidence cited for the other claim limitations. Speir
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`reserves the right to rely on evidence cited for any particular limitation of an asserted claim for
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`any other limitation asserted for that claim. Unless otherwise indicated, the information provided
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`that corresponds to each claim element is considered to indicate that each claim element is found
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`within each of the different variations of each respective Accused Products described above.
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`These infringement contentions are prepared with public information and have not been
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`prepared with the benefit of discovery. The references provided in the attached charts may cite
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`particular versions of a given IEEE or 3GPP or other technical specification. It should be
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`understood that references and citations are exemplary in nature and do not limit infringement
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`assertions to only those releases or versions. Speir’s citation of portions of the IEEE and 3GPP
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`standards herein should not be interpreted to limit Speir’s infringement proof in expert reports or
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`at trial in any way. Speir’s citation of portions of the IEEE and 3GPP standards herein provides
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`detailed notice of Speir’s theory of infringement, but Speir intends to rely on additional evidence
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`including, but not limited to, data sheets, design specifications, source code, testing information,
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`reference designs, implementation and utilization information, and/or schematics as proof of
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`infringement in expert reports and at trial.
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`Speir reserves the right to amend these claim charts, as well as other information
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`contained in this document and the exhibits hereto. Speir further reserves the right to amend these
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`claim charts to incorporate new information learned during the course of discovery, including, but
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`not limited to, information that is not publicly available or readily discernible without discovery
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`or undue burden.
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`IV.
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`Literal Infringement / Doctrine of Equivalents
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`Speir asserts that Apple infringes the Asserted Claims listed above under at least 35 U.S.C.
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`§ 271(a), (b), (c), and/or (f). Speir contends that Apple has directly infringed and continues to
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`directly infringe the asserted claims by making, using, offering for sale, selling, and importing
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`into the United States the Accused Products. Speir also contends that Apple (i) induces end users
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`of the Accused Products to directly infringe the Asserted Claims and (ii) contributes to end users’
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`direct infringement of the Asserted Claims. Speir asserts that, under the proper construction of the
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`Asserted Claims and their claim terms, the limitations of the asserted claims of the asserted Speir
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`patents are literally present in the Accused Products, as set forth in the claim charts attached hereto
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`4
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`as Exhibits A-D. Speir contends that any and all elements found not to be literally infringed are
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`infringed under the doctrine of equivalents because the differences between the claimed inventions
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`and the Accused Products, if any, are insubstantial.
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`Speir’s contention is that each limitation is literally met, and necessarily also would be met
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`under the doctrine of equivalents because there are no substantial differences between the Accused
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`Products and the claims, in function, way, or result. If Apple attempts to argue that there is no
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`infringement literally and also no infringement under doctrine of equivalents and attempts to draw
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`any distinction between the claimed functionality and the functionality in the Accused Products,
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`then Speir reserves its right to rebut the alleged distinction as a matter of literal infringement and/or
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`as to whether any such distinction is substantial under the doctrine of equivalents.
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`Speir reserves the right to amend its Infringement Contentions as to literal infringement or
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`infringement under the doctrine of equivalents in light of new information learned during the
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`course of discovery and the Court’s claim construction.
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`V.
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`Priority Dates
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`The Asserted Claims are entitled to a priority date of at least the following:
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`A.
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`U.S. Patent No. 8,345,780: Each asserted claim of the ’780 Patent is entitled to at
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`least a priority date of June 4, 2008.
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`B.
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`U.S. Patent No. 7,110,779: Each asserted claim of the ’779 Patent is entitled to at
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`least a priority date of January 29, 2004.
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`C.
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`U.S. Patent No. 7,321,777: Each asserted claim of the ’777 Patent is entitled to at
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`least a priority date of January 29, 2004.
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`D.
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`U.S. Patent No. 7,765,399: Each asserted claim of the ’399 Patent is entitled to at
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`least a priority date of February 22, 2006.
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`VI.
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`Identification of Instrumentalities Practicing the Claimed Inventions
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`At this time, Speir is not relying on any assertion that any of its own instrumentalities
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`practice the claims of the Asserted Patents.
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`VII. Document Production Accompanying Disclosure
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`Speir submits the following Document Production Accompanying Disclosure, along with
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`an identification of the categories to which each of the documents corresponds.
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`Speir is presently unaware of any documents sufficient to evidence any discussion with,
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`disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the inventions
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`recited in the Asserted Claims of the asserted patents prior to the application date or priority date
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`for the asserted patents. A diligent search continues for documents and Speir reserves the right to
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`supplement this response.
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`Speir is presently unaware of documents regarding the conception, reduction to practice,
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`design, and development of each claimed invention of the asserted patents, which were created
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`before the date of application for the asserted patent or the priority date identified above. A diligent
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`search continues for documents and Speir reserves the right to supplement this response.
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`Speir identifies the following documents as being the file histories for the Asserted Patents:
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`SPEIR-APPLE-00000077 - SPEIR-APPLE-00000866.
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`
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`Dated: April 19, 2022
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`Respectfully submitted,
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`By: /s/ Brett E. Cooper
`
`
`Brett E. Cooper (NY SBN 4011011)
`bcooper@raklaw.com
`Reza Mirzaie (CA SBN 246953)
`rmirzaie@raklaw.com
`Marc A. Fenster (CA SBN 181067)
`mfenster@raklaw.com
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`Seth Hasenour (TX SBN 24059910)
`shasenour@raklaw.com
`Drew B. Hollander (NY SBN 5378096)
`dhollander@raklaw.com
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`RUSS AUGUST & KABAT
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Facsimile: (310) 826-6991
`
`Attorneys for Plaintiff Speir Technology
`Limited
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`
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`CERTIFICATE OF SERVICE
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`I certify that this document is being served upon counsel of record for Defendant via
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`electronic service.
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`
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`/s/Drew B. Hollander
` Drew B. Hollander
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