`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOPIA TECHNOLOGY, INC.,
`
`
`Plaintiff,
`
`
`v.
`
`
`BOX, INC., SAILPOINT TECHNOLOGIES
`HOLDINGS, INC. and VISTRA CORP.,
`
`
`Defendant.
`
`TOPIA TECHNOLOGY, INC.,
`
`
`Plaintiff,
`
`v.
`
`
`DROPBOX, INC., SAILPOINT
`TECHNOLOGIES HOLDINGS, INC., and
`CLEAR CHANNEL OUTDOOR
`HOLDINGS, INC.,
`Defendant.
`
`
`
`
`Civil Action No. 6:21-cv-01372-ADA
`
`
`
`JURY DEMAND
`
`
`
`
`Civil Action No. 6:21-cv-01373-ADA
`
`
`JURY DEMAND
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`
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`Topia Exhibit 2004
`Page 1 of 183
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`

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`TABLE OF CONTENTS
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`
`Page
`
`
`I.
`II.
`
`C.
`
`INTRODUCTION ............................................................................................................. 1
`A CHART SETTING FORTH WHERE IN THE PRIOR ART REFERENCES
`EACH ELEMENT OF THE ASSERTED CLAIM(S) ARE FOUND .............................. 5
`A.
`Identity of Each Item of Prior Art .......................................................................... 7
`B.
`Identification of Anticipation and Obviousness Grounds ...................................... 8
`1.
`Obviousness and Motivations to Combine .............................................. 12
`a.
`Motivations Identified During Prosecution ................................. 15
`b.
`Combinations of References Through Citations .......................... 16
`c.
`Key References and Combinations of Related References .......... 16
`d.
`Obviousness Combination Groups and Further Motivations
`to Combine ................................................................................... 17
`(1)
`“Synchronize File” References. .................................... 17
`(2)
`“Server-Based” References ........................................... 37
`(3)
`“Device Application” References .................................. 55
`(4)
`“Me-To-Me” References ............................................... 66
`(5)
`“Transfer When Modified” References ....................... 77
`(6)
`“Replace Older Version” References ........................... 94
`(7)
`“Transfer Metadata” References ............................... 104
`(8)
`“Transfer Metadata Before File” References ............ 123
`(9)
`“Graphical Availability Indication” References ....... 141
`(10)
`“Transfer Upon Communication” References .......... 155
`Obviousness Combinations ........................................................ 166
`e.
`Secondary Considerations .......................................................... 168
`f.
`An Identification of Any Limitations the Defendant Contends are
`Indefinite or Lack Written Description Under Section 112 ............................... 169
`1.
`Section 112 – Preliminary Statements ................................................... 169
`2.
`Section 112 – Contentions ..................................................................... 173
`An Identification of Any Claims the Defendant Contends are Directed to
`Ineligible Subject Matter Under Section 101..................................................... 175
`Other Prior Art ................................................................................................... 179
`
`D.
`
`E.
`
`i
`
`Topia Exhibit 2004
`Page 2 of 183
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`Defendants Box, Inc., Dropbox, Inc., SailPoint Technologies Holdings, Inc., Vistra Corp.,
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`and Clear Channel Outdoor Holdings, Inc. (each and together “Defendant” for purposes of these
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`contentions) by and through counsel, hereby serves its Preliminary Invalidity Contentions on
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`Plaintiff Topia Technology, Inc. (“Plaintiff”) regarding the following claims of U.S. Patent No.
`
`9,143,561 (the “’561 Patent”), U.S. Patent No. 10,067,942 (the “’942 Patent”), U.S. Patent No.
`
`10,289,607 (the “’607 Patent”), U.S. Patent No. 10,642,787 (the “’787 Patent”), U.S. Patent No.
`
`10,754,823 (the “’823 Patent”), and U.S. Patent No. 11,003,622 (the “’622 Patent”) (collectively,
`
`the “Asserted Claims”):
`
`• Claims 1, 3, 4, 8, 10 and 11 of the ’561 Patent
`
`• Claims 1, 3, 4, 10, 12 and 13 of the ’942 Patent
`
`• Claims 1, 3, 4, 5, 7, 12, 14, 17, 19, and 20 of the ’607 Patent
`
`• Claims 1, 2, 3, 4, 8, 9, 10, 11, 13, 14, 15, 16 of the ’787 Patent
`
`• Claims 1, 2, 3, 4, 8, 9, 10, 11, 13, 14, 15, 16 of the ’823 Patent; and
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`• Claims 1, 3, 4, 5, 7, 11, 12, 14, 16, 17 of the ’622 Patent.
`
`These contentions set forth Defendant’s preliminary Invalidity Contentions with respect to
`
`the Asserted Claims currently asserted by Plaintiff. These contentions are only preliminary.
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`Discovery is ongoing and Defendant reserves the right to amend and/or supplement these
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`Invalidity Contentions as the case proceeds, including through the service of Final Invalidity
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`Contentions.
`
`I.
`
`INTRODUCTION
`
`The following contentions are served in view of Defendant’s current understanding of the
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`Asserted Claims as applied in Plaintiff’s April 28, 2022 Infringement Contentions (“Infringement
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`Contentions”). In many instances, Defendant’s contentions as stated may reflect or imply a certain
`
`1
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`Topia Exhibit 2004
`Page 3 of 183
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`claim scope or claim interpretation, which is set forth in view of positions or interpretations
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`suggested by Plaintiff’s submissions to date, and in many instances Defendant’s contentions may
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`suggest different alternative claim interpretations. To the extent these contentions state, reflect, or
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`suggest a particular interpretation or reading of any claim element, Defendant does not adopt,
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`advocate, or acquiesce to such an interpretation or reading. Defendant’s contentions therefore
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`should not be relied upon as a statement of Defendant’s claim interpretations and should not be
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`relied upon as any admission regarding the proper scope of the claims. Defendant’s claim
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`construction positions will be provided at a later appropriate time in this case, as noted above. Nor
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`do these Invalidity Contentions constitute any admission by Defendant that any accused products
`
`or services, including any current or past versions of those products or services, are covered by
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`any Asserted Claim. Defendant does not take any position herein regarding the proper scope or
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`construction of the Asserted Claims.
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`These Invalidity Contentions try to take into account and apply Plaintiff’s apparent
`
`interpretations of the Asserted Claims. Accordingly, any assertion herein that a particular
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`limitation is disclosed by a prior art reference or references may be based in part on Plaintiff’s
`
`apparent interpretation and is not intended to be, and is not, an admission by Defendant that any
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`such construction or application of the claim language is supportable or correct. To the extent the
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`following contentions reflect constructions of claim limitations consistent with or implicit in
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`Plaintiff’s Infringement Contentions, no inference is intended, nor should any be drawn, that
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`Defendant agrees with or concedes those claim constructions. Defendant expressly does not do
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`so, and reserves its right to contest them.
`
`To the extent that prior art cited for a particular limitation discloses functionality that is the
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`same or similar in some respects to the alleged functionality in the accused products and/or services
`
`2
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`Topia Exhibit 2004
`Page 4 of 183
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`as set forth in Plaintiff’s Infringement Contentions, Defendant does not concede that those
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`limitations are in fact met by those accused functionalities. However, to the extent Plaintiff
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`accuses the same or similar functionality as that disclosed in the prior art, Defendant contends such
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`functionality is evidence of invalidity.
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`Defendant further reserves the right to supplement and amend these disclosures and
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`associated document production based on further investigation, analysis, and discovery,
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`Defendant’s consultation with experts and others, and contentions or court rulings on relevant
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`issues such as claim construction and priority dates. For example, since generalized fact discovery
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`has not opened and Plaintiff has produced limited documents to date, additional document
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`production from Plaintiff and deposing the alleged inventors may reveal information that affects
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`the disclosures and contentions herein. Furthermore, in its initial Infringement Contentions, and
`
`as part of the Court’s requirement that Plaintiff “shall also identify the priority date (i.e. the earliest
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`date of invention) for each asserted claim,” Plaintiff asserts that “the Patents-in-Suit are entitled to
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`a priority date of at least May 18, 2004,” and separately asserts in its Infringement Contentions
`
`that it has provided for inspection software that “shows periodic commits related to Topia’s
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`software development efforts embodying features of the invention from at least January 6, 2006.”
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`Plaintiff has not demonstrated that any asserted claim is entitled to any claimed invention priority
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`date or effective filing date prior to the November 10, 2008 filing of application no. 12/267,852,
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`including not demonstrating any entitlement to support by provisional application no. 60/986,896
`
`filed November 9, 2007. Accordingly, Defendant has included prior art references that constitute
`
`prior art prior to November 10, 2008, and reserves the right to further investigate and develop prior
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`art dating prior to earlier dates in view of further discovery, information, and analysis. To the
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`extent Plaintiff is permitted to provide additional evidence and/or disclosures relating to priority
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`3
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`Topia Exhibit 2004
`Page 5 of 183
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`claims, Defendant reserves the right to amend these Invalidity Contentions and/or modify its
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`selection of prior art references in view of such additional information. Defendant also reserves
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`the right to amend these Invalidity Contentions and/or to modify its selection of prior art references
`
`in the event that Plaintiff serves supplemental or modified infringement contentions.
`
`Because Defendant is continuing its search for and analysis of relevant prior art, and has
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`not had an opportunity to serve subpoenas on third parties, Defendant reserves the right to revise,
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`amend, and/or supplement the information provided herein, including identifying, charting, and/or
`
`relying upon additional prior art references, relevant disclosures, and bases for Invalidity
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`Contentions. Additional prior art, disclosures, and invalidity grounds, whether or not cited in this
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`disclosure and whether known or not known to Defendant, may become relevant as investigation,
`
`analysis, and discovery continue, and following claim construction proceedings in this case.
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`Defendant is currently unaware of the extent, if any, to which Plaintiff will contend that limitations
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`of the Asserted Claims are not disclosed in the prior art identified by Defendant. To the extent
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`that such an issue arises, Defendant reserves the right to identify and rely upon other references or
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`portions of references regarding the allegedly missing limitation(s).
`
`Additionally, because discovery has not yet completed and generalized discovery has not
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`yet commenced in this action, Defendant reserves the right to present additional prior art references
`
`and/or disclosures under 35 U.S.C. §§ 102(a), (b), (e), (f), and/or (g), and/or § 103, located during
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`the course of discovery or further investigation, and to assert invalidity under 35 U.S.C. §§ 102(c),
`
`(d), or (f), to the extent that such discovery or investigation yields information forming the basis
`
`for such invalidity.
`
`Additionally, Defendant reserves the right to use these disclosures as well as further
`
`discovery and disclosures relating to the alleged utility and advantages of the Asserted Claims over
`
`4
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`Topia Exhibit 2004
`Page 6 of 183
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`old modes and devices for purposes of any damages issues in the case.
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`Furthermore, to the extent Plaintiff asserts the doctrine of equivalents, a “doctrine of
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`equivalents theory cannot be asserted if it will encompass or ‘ensnare’ the prior art.” Jang v.
`
`Boston Sci., 872 F.3d 1275, 1285 (Fed. Cir. 2017). To the extent Plaintiff asserts the doctrine of
`
`equivalents for any of the claimed limitations, they would ensnare the prior art for the reasons and
`
`based on the evidence discussed below and in the accompanying charts. Defendant reserves the
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`right to use these disclosures as well as further discovery and disclosures for purposes of
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`noninfringement.
`
`II.
`
`A CHART SETTING FORTH WHERE IN THE PRIOR ART REFERENCES
`EACH ELEMENT OF THE ASSERTED CLAIM(S) ARE FOUND
`
`Subject to Defendant’s reservation of rights, attached hereto as exhibits and incorporated
`
`by reference are claim charts providing an element-by-element analysis of where specifically, in
`
`each prior art item, each element of the Asserted Claims of the Asserted Patents is found. Any
`
`reference to a figure in cited text incorporates by reference the figure itself, and any citation to a
`
`figure incorporates by reference any description of that figure in a reference. Similarly, any
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`reference to a cited part or portion of a document encompasses all figures and text within the cited
`
`page or portion.
`
`As noted above, these claim charts are based on Defendant’s understanding of the claim
`
`constructions applied by Plaintiff, even though Defendant does not necessarily agree with those
`
`constructions, and reserves the right to dispute them. To the extent certain claim elements are
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`indefinite under 35 U.S.C. § 112(2), as identified and described herein, the claim charts attempt to
`
`apply the prior art to the extent Defendant can understand the claim constructions applied by
`
`Plaintiff as found in Plaintiff’s Infringement Contentions. By doing so, however, Defendant does
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`not concede that these claim elements are definite or that one of skill in the art would have been
`
`5
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`Topia Exhibit 2004
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`informed with reasonable certainty about the scope of the claim element under Nautilus Inc. v.
`
`Biosig Instrument, Inc., 134 S. Ct. 2120 (2014). To the extent any limitation is deemed not to be
`
`met exactly by an item of prior art, Defendant contends that the difference would have been
`
`obvious to a person of ordinary skill in the art/or and within the knowledge of one skilled in the
`
`art at the time of the alleged invention, so that the claimed invention would have been obvious
`
`both in light of the single reference alone and/or in light of combined references. Defendant does
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`not admit or concede that such element is not expressly or inherently disclosed by the reference at
`
`issue.
`
`As a general matter, all portions of each prior art item are relied upon to support the
`
`disclosure of each patent claim limitation, as all portions provide general support and context.
`
`Supporting citations are nevertheless provided, but do not necessarily represent every location
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`where a particular claim element may be found in the prior art item. Defendant reserves the right
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`to rely on additional, or different, portions of the prior art items other than those specifically cited
`
`in these claims charts, and to supplement and/or amend these charts.
`
`The following chart summarizes the prior art claim chart exhibits submitted herewith.
`
`Exhibits
`
`Reference(s)
`
`Sigurdsson ’246 – U.S. Pat. Pub. 2007/0174246A1
`1.
`2. Venkataraman ’372 – U.S. Pat. Pub. 2002/0174372
`3. Matsubara ’098 – U.S. Pat. Pub. 2005/0076098
`Salas ’600 – U.S. Patent No. 6,233,600
`4.
`5. Aboulhosn ’042 – U.S. Patent No. 6,938,042
`6. Moromisato ’690 – U.S. Patent No. 7,734,690
`Savage ’050 – U.S. Pat. Pub. 2007/0283050 A1
`7.
`8. Rao ’890 – U.S. Patent No. 7,720,890
`9. Braginsky ’414 – U.S. Pat. Pub. 2015/0199414 A1
`Shappell ’987 – U.S. Patent No. 7,567,987
`10.
`11.
`Sagar ’410 – U.S. Patent No. 7,941,410
`12. Kaasten ’022 – U.S. Patent No. 7,743,022
`13. Brown ’826 – U.S. Patent No. 7,734,826
`14. Brown ’847 – U.S. Patent No. 7,035,847
`
`6
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`Topia Exhibit 2004
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`Exhibits
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`Reference(s)
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`15. Hesselink ’353 – U.S. Patent No. 7,546,353
`16. Nurminen ’601 – U.S. Pat. Pub. 2008/144601 A1
`17. U.S. Pat. Pub. 2006/0101064, 2006/0242206, and 2004/0267697, and WO 2000/075781
`(Strong, Brezak, Hamidi, and Ellman)
`SmartSync Pro system
`18.
`Foldershare system
`19.
`20. BeInSync system
`iFolder system
`21.
`22. Apple iDisk system
`23. Apple iSync system
`SharpCast system
`24.
`25. GoodSync system
`26. Unison File Synchronizer system
`Subversion system
`27.
`28.
`Intellisync system
`29. TortoiseCVS system
`
`A.
`
`Identity of Each Item of Prior Art
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`Subject to Defendant’s reservation of rights, Defendant identifies each item of prior art that
`
`anticipates or renders obvious one or more of the Asserted Claims as cited in the claim charts
`
`submitted herewith. Where a prior art system or product is charted along with documents that
`
`describe the system or product, Defendant reserves the right to rely upon the documents as prior
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`art to the extent such documents qualify as prior art. To the extent that references produced
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`herewith are not identified as items of prior art that anticipate or render obvious an Asserted Claim,
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`Defendant intends to rely on these references as background and as evidence of the state of the art
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`at the time of Plaintiff’s alleged invention.
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`Additionally, many of the prior art references are related patent applications and issued
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`patents that contain substantially the same subject matter (e.g., published U.S. patent applications,
`
`and issued U.S. patents, foreign applications or issued patents). Any citation to or quotation from
`
`any of these patent applications or patents, therefore, should be understood as encompassing any
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`parallel citation to the same subject matter in other related or corresponding applications or patents.
`
`7
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`Defendant also reserves the right to later rely upon all references or portions of references cited
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`and submitted herewith to supplement or amend its disclosures contained herein. Also, to the
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`extent not expressly mentioned herein, Defendant incorporates by reference (1) any and all prior
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`art contained or identified in documents produced thus far by Plaintiff to Defendant in this case;
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`(2) any and all additional materials regarding invalidity that should have been produced to
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`Defendant but have not been produced to date, to the extent that any exist; and (3) any prior art of
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`which any named inventor of the Asserted Patents is aware and/or on which they contend the
`
`alleged invention of the Asserted Patents build upon or improve.
`
`Each disclosed item of prior art is evidence of a prior invention and making of the invention
`
`in the United States by another under 35 U.S.C. § 102(g), as evidenced by the named inventor,
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`authors, organizations, and publishers involved with each such reference, with the circumstances
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`described and reflected in each reference including publications and system implementation
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`references. Defendant further intends to rely on admissions of the named inventors concerning the
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`prior art, including statements found in the Asserted Patents, the prosecution history, related
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`patents and/or patent applications, any deposition testimony, and the papers filed and any evidence
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`submitted by Plaintiff in conjunction with this litigation. For systems and products that are
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`disclosed, Defendant also intends to rely on additional information describing those same systems
`
`and products, including information not yet received from third-parties in response to subpoenas.
`
`B.
`
`Identification of Anticipation and Obviousness Grounds
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`Subject to Defendant’s reservation of rights, Defendant identifies in the attached Prior Art
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`Invalidity Charts prior art references that anticipate the Asserted Claims under at least 35 U.S.C.
`
`§§ 102(a), (b), (e), and/or (g), either expressly or inherently, and/or render obvious the Asserted
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`Claims under 35 U.S.C. § 103 either alone or in combination with other references. Each Asserted
`
`8
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`Claim is anticipated by, and/or obvious in view of, one or more items of prior art identified in these
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`disclosures, alone or in combination. Tables identifying ways in which the prior art references
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`cited herein anticipate and/or render obvious the Asserted Claims are provided below.
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`Much of the art identified in the attached exhibits/charts reflects common knowledge and
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`the state of the art at the time of the filing date of the Asserted Patents. Defendant may rely on
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`additional citations, references, expert testimony, fact testimony and other corroborating evidence,
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`and other material to provide context and background illustrating the knowledge of a person of
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`ordinary skill in the art at the time of the claimed inventions and/or to aid in understanding the
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`cited portions of the references and/or cited features of the systems. Defendant may also rely on
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`expert testimony explaining relevant portions of references, relevant hardware or software
`
`products or systems, and other discovery regarding these subject matters. Additionally, Defendant
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`may rely on other portions of any prior art reference for purposes of explaining the background
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`and general technical subject area of the reference.
`
`Where an individual reference is cited with respect to all elements of an Asserted Claim,
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`Defendant contends that the reference anticipates the claim under 35 U.S.C. §§ 102(a), (b), (e),
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`and/or (g) and also renders obvious the claim under 35 U.S.C. § 103, both by itself in view of the
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`knowledge of a person of ordinary skill in the art and in combination with the other cited references
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`to the extent the reference is not found to disclose one or more claim elements. A single prior art
`
`reference, for example, can establish obviousness where the differences between the disclosures
`
`within the reference and the claimed invention would have been obvious to one of ordinary skill
`
`in the art. For example, “[c]ombining two embodiments disclosed adjacent to each other in a prior
`
`art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp.,
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`554 F.3d 982, 991 (Fed. Cir. 2009). To the extent Plaintiff contends that an embodiment within a
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`9
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`particular item of prior art does not fully disclose all limitations of a claim, Defendant accordingly
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`reserves its right to rely on other embodiments in that prior art reference, or other information, to
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`show single reference obviousness under 35 U.S.C. § 103(a).
`
`Where an individual reference is cited with respect to fewer than all elements of an
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`Asserted Claim, Defendant contends that the reference renders obvious the claim under 35 U.S.C.
`
`§ 103(a) in view of each other reference and combination of references that discloses the remaining
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`claim element(s), as indicated in the claim charts submitted herewith and in the discussion below.
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`“Under § 103, the scope and content of the prior art are to be determined; differences between the
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`prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent
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`art resolved. Against this background, the obviousness or nonobviousness of the subject matter is
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`determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007), quoting Graham v. John
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`Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). Exemplary motivations to combine references
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`are discussed below and in the accompanying charts. Defendant reserves the right to rely upon
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`any references or assertions identified herein in connection with Defendant’s contention that each
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`Asserted Claim is invalid under 35 U.S.C. § 103 and to rely upon expert testimony addressing such
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`references and assertions. The fact that prior art is identified to anticipate the Asserted Claims
`
`presents no obstacle in also relying on that reference as a basis for invalidity based on obviousness.
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`It is established that “a rejection for obviousness under § 103 can be based on a reference which
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`happens to anticipate the claimed subject matter.” In re application of Meyer, 599 F.2d 1026, 1031
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`(C.C.P.A. 1979). To the extent any prior art item cited above may not fully disclose a limitation
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`of an Asserted Claim or is alleged by Plaintiff to lack disclosure of the limitation, such limitation
`
`is present and identified in another prior art item as shown in the attached claim charts.
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`Many of the cited references cite or relate to additional references and/or products, services,
`
`10
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`or projects. Many of the cited references also cite software, hardware, or systems. Defendant may
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`rely upon such cited additional references and copies or exemplars of such software, hardware, or
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`systems. Defendant will produce or make available for inspection any such cited references,
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`software, hardware, or systems that it intends to rely upon. Defendant may also rely upon the
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`disclosures of the references cited and/or discussed during the prosecution of the Asserted Patents
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`and/or the assertions presented regarding those references.
`
`Although Defendant has identified at least one disclosure of a limitation for each prior art
`
`reference, each and every disclosure of the same limitation in the same reference is not necessarily
`
`identified. In an effort to focus the issues, Defendant cites representative portions of an identified
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`reference, even where a reference may contain additional support for a particular claim limitation.
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`Persons of ordinary skill in the art generally read an item of prior art as a whole and in the context
`
`of other publications and literature. Thus, to understand and interpret any specific statement or
`
`disclosure within a prior art reference, such persons would rely on other information within the
`
`reference, along with other publications and their general scientific knowledge. As such,
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`Defendant may rely upon uncited portions of the prior art references and on other publications and
`
`expert testimony to provide context, and as aids to understanding and interpreting the portions that
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`are cited.
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`Defendant reserves the right to further streamline and reduce the number of anticipation or
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`obviousness references relied upon with respect to a given Asserted Claim and to exchange or
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`otherwise modify the specific references relied upon for anticipation and within each obviousness
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`combination for each Asserted Claim. Generalized discovery has not yet begun, and Plaintiff has
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`not provided any allegation as to any alleged pre-filing invention dates or with respect to claim
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`limitations that are allegedly lacking or not obvious in the prior art. Each limitation of the Asserted
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`11
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`Claims was well-known to those of ordinary skill in the art before the filing date of the non-
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`provisional applications from which the Asserted Patents claim priority, as detailed below. As
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`explained in detail throughout these Contentions, the Asserted Claims of the Asserted Patents are
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`anticipated by, and/or obvious in view of the prior art references identified herewith.
`
`1.
`
`Obviousness and Motivations to Combine
`
`Each prior art reference may be combined with one or more other prior art references to
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`render obvious the Asserted Claims in combination, as explained in more detail below. The
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`disclosures of these references also may be combined with information known to persons skilled
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`in the art at the time of the alleged invention, and understood and supplemented in view of the
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`common sense of persons skilled in the art at the time of the alleged invention, including any
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`statements in the intrinsic record of the Asserted Patents and related applications.
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`A person of ordinary skill would have been motivated to combine the identified prior art
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`based on the nature of the problem to be solved, the teachings of the prior art, and the knowledge
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`of persons of ordinary skill in the art. The identified prior art references, including portions cited
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`in the Prior Art Invalidity Charts, address the same or similar technical issues and suggest the same
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`or similar solutions to those issues as the Asserted Claims. On such basis, on an element-by-
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`element basis, Defendant expressly intends to combine one or more prior art items identified in
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`the claim charts with each other to address any further contentions from Plaintiff that a particular
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`prior art item supposedly lacks one or more elements of an Asserted Claim. In other words,
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`Defendant contends that each charted prior art item can be combined with other charted prior art
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`items when a particular prior art item lacks or does not explicitly disclose an element or feature of
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`an Asserted Claim. The suggested obviousness combinations described below are not to be
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`construed to suggest that any reference included in the combinations is not anticipatory. Further,
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`to the extent that Plaintiff contends that any of the anticipatory prior art fails to disclose one or
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`more limitations of the Asserted Claims, Defendant reserves the right to identify other prior art
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`references that, when combined with the anticipatory prior art, would render the claims obvious
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`despite an allegedly missing limitation. Defendant will further specify the motivations to combine
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`the prior art, including through reliance on expert testimony, at the appropriate later stage of this
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`lawsuit.
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`A person of skill in the art would have been motivated to combine the identified prior art
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`items. As the United States Supreme Court held in KSR International Company v. Teleflex, Inc.,
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`550 U.S. 398, 416 (2007): “The combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results.” The Supreme Court
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`further held that, “[w]hen a work is available in one field of endeavor, design incentives and other
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`market forces can prompt variations of it, either in the same field or a different one. If a person of
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`ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the
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`same reason, if a technique has been used to improve one device, and a person of ordinary skill in
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`the art would recognize that it would improve similar devices in the same way, using the technique
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`is obvious unless its actual application is beyond his or her skill.” Id. at 417.
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`The Supreme Court has further held that “in many cases a person of ordinary skill will be
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`able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. It is
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`sufficient that a combination of elements was “obvious to try” holding that, “[w]hen there is a
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`design need or market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, a person of ordinary skill has good reason to pursue the known options
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`within his or her technical grasp. If this leads to the anticipated success, it is likely the product not
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`of innovation but of ordinary skill and common sense.” Id. at 421. “In that instance the fact that
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`a combination was obvious to try might show that it was obvious under § 103.” Id. Finally, the
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`Supreme Court recognized that “[g]ranting patent protection to advances that would occur in the
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`ordinary course without real innovation retards progress and may, in the case of patents combining
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`previously known elements, deprive prior inventions of their value or utility.” Id. at 419. All of
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`the following rationales recognized in KSR support a finding of obviousness:
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`• Combining prior art elements according to known methods to yield predictable
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`results;
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`• Simple substitution of one known element for another to obtain predictable results;
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`• Use of known technique to improve similar devices (methods, or products) in the
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`same way;
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`• Applying a known technique to a known device (method, or product) ready for
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`improvement to yield predictable results;
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`• “Obvious to try”—choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success;
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`• Known work in one field of endeavor may prompt variations of it for use in either
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`the same field or a different one based on design incentives or other market forces
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`if the variations would have