COBBLESTONE WIRELESS, LLC,
`
`Plaintiff,
`
`
`
`
`v.
`
`T-MOBILE USA, INC.
`
`Defendant,
`
`NOKIA OF AMERICA CORPORATION,
`ERICSSON, INC.
`Intervenors.
`
`
`COBBLESTONE WIRELESS, LLC,
`Plaintiff,
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`AT&T SERVICES INC.; AT&T
`MOBILITY LLC; AT&T CORP.,
`Defendants,
`NOKIA OF AMERICA CORPORATION,
`ERICSSON, INC.
`Intervenors.
`
`CASE NO. 2:22-cv-00477-JRG-RSP
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`CASE NO. 2:22-cv-00474-JRG-RSP
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`COBBLESTONE WIRELESS, LLC,
`Plaintiff,
`
`
`
`
`
`v.
`CELLCO PARTNERSHIP d/b/a
`VERIZON WIRELESS,
`Defendant,
`NOKIA OF AMERICA CORPORATION,
`ERICSSON, INC.
`Intervenors.
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`CASE NO. 2:22-cv-00478-JRG-RSP
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANTS’ AND INTERVENORS’ PRELIMINARY INVALIDITY CONTENTIONS
`FOR U.S. PATENT NO. 9,094,888
`
`
`
`
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 1 of 38
`
`

`

`
`
`
`Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, Defendants AT&T
`
`Corp., AT&T Mobility LLC, AT&T Services Inc., (collectively, “AT&T” or “Defendant”), Cellco
`
`Partnership d/b/a Verizon Wireless (collectively, “Verizon” or “Defendant”), T-Mobile USA, Inc.
`
`(“T-Mobile” or “Defendant”), Intervenors Nokia of America Corporation (“Nokia” or
`
`“Intervenor”) and Ericsson Inc. (“Ericsson” or “Intervenor”), hereby provide their Preliminary
`
`Invalidity Contentions with respect to the claims identified by Plaintiff Cobblestone Wireless, LLC
`
`(“Plaintiff”) in its previously served Infringement Contentions in the above captioned matters
`
`(“Infringement Contentions”).
`
`I.
`
`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
`A.
`
`ASSERTED CLAIMS
`
`According to the Infringement Contentions regarding U.S. Patent No. 9,094,888 (the “’888
`Patent” or the “Asserted Patent”), Plaintiff asserts the following claims, and priority date in its
`Infringement Contentions (collectively, “Asserted Claims”).
`
`
`Asserted Patent
`
`Asserted Claims
`
`Asserted Priority Date
`
`U.S. Patent No. 9,094,888
`(the 888 Patent)
`
`
`
`9, 10, 12, 20, 21, and 23
`
`April 29, 2011
`
`Defendants and Intervenors contend that each of the Asserted Claims is invalid under at
`least one or more of 35 U.S.C. §§ 102, 013, or 112.1 Pursuant to the Patent Rules, Defendants and
`Intervenors do not provide any contentions regarding any claims not asserted by Plaintiff. To the
`extent that the Court permits Plaintiff to assert additional claims against Defendants and/or
`Intervenors in the future, Defendants and Intervenors reserve all rights to amend or supplement
`these Preliminary Invalidity Contentions or to otherwise disclose new or supplemental invalidity
`
`1 Intervenors’ contentions are only for those claims of the patents specifically asserted against its
`equipment.
`
`2
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 2 of 38
`
`

`

`
`
`contentions regarding such claims. Furthermore, because discovery is ongoing,2 Defendants and
`Intervenors reserve the right to revise, amend, and/or supplement the information provided herein,
`including identifying, charting, and relying on additional references, should discovery yield
`additional information or references. Defendants and Intervenors further reserve the right to
`amend these contentions in response to any claim construction rulings, as permitted by the Patent
`Rules or with permission of the Court.
`The Infringement Contentions are deficient in multiple respects and do not provide
`Defendants and Intervenors with sufficient information to understand the specific accused features
`and components and the alleged factual and evidentiary bases for Plaintiff’s infringement
`allegations. Among other things, the Infringement Contentions lack the specificity required by P.
`R. 3-1, fail to properly identify accused instrumentalities, and fail to explain adequately Plaintiff’s
`infringement theories for numerous claim elements. Plaintiff has prejudiced Defendants’ and
`Intervenors’ ability to understand, for purposes of preparing these Preliminary Invalidity
`Contentions, what Plaintiff alleges to be the scope of the Asserted Claims. If Plaintiff modifies
`any assertion or contention in its Infringement Contentions, or presents any new assertion or
`contention relevant to these Preliminary Invalidity Contentions to the extent allowed by the Patent
`Rules or the Court, Defendants and Intervenors reserve the right to supplement or otherwise amend
`these initial Invalidity Contentions.
`
`
`2 Defendants’ and Intervenors’ ongoing efforts include but are not limited to: serving subpoenas
`on prior artists and inventors regarding prior art, seeking additional information related to the
`references and systems disclosed in these Preliminary Invalidity Contentions, and seeking
`additional information related to available prior art systems, as well as Plaintiff’s Infringement
`Contentions and the products accused of infringing therein. In addition, Defendants and
`Intervenors have not yet had the benefit of taking the deposition of any of the named inventors or
`those that worked with the named inventors, or of the named inventors, authors, and entities listed
`on any references or systems identified in these Preliminary Invalidity Contentions. Further,
`should Plaintiff or any third party identify or produce any further prior art, Defendants and
`Intervenors reserve the right to review and supplement these Preliminary Invalidity Contentions
`with any such art.
`
`
`3
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 3 of 38
`
`

`

`
`
`B.
`
`CLAIM CONSTRUCTION
`
`Because the Court has not yet construed any terms of any claim of the Asserted Patent,
`Defendants’ and Intervenors’ Preliminary Invalidity Contentions are based on (1) Defendants’ and
`Intervenors’ present understanding of the Asserted Claims, and (2) the claim constructions Plaintiff
`appears to be proposing based on the Infringement Contentions, all without regard to whether
`Defendants and Intervenors agree with Plaintiff’s apparent or expressed claim constructions.
`Defendants and Intervenors reserve the right to supplement or otherwise amend these Preliminary
`Invalidity Contentions in response to any proposed claim constructions or alleged supporting
`evidence offered by Plaintiff, any report from any expert witness for Plaintiff regarding claim
`construction issues, any claim construction briefing filed by Plaintiff, and any position taken by
`Plaintiff concerning claim construction, infringement, or invalidity.
`Defendants and Intervenors take no position on any matter of claim construction in these
`Preliminary Invalidity Contentions. If Defendants’ and Intervenors’ apparent claim constructions
`herein are consistent with any explicit, apparent, or implied claim constructions in the Infringement
`Contentions, no inference is intended and no inference should be drawn that Defendants and
`Intervenors agree with any of Plaintiff’s claim constructions. Any statement herein describing or
`tending to describe any claim element is provided solely for the purpose of understanding and/or
`applying the cited prior art. Defendants and Intervenors expressly reserve the right (1) to propose
`any claim construction Defendants and Intervenors consider appropriate, (2) to contest any claim
`construction proposed by Plaintiff that Defendants and Intervenors consider inappropriate or
`inaccurate, and/or (3) to take positions with respect to claim construction issues that are
`inconsistent with, or even contradictory to, claim construction positions expressed or implied in
`these Preliminary Invalidity Contentions.
`Prior art not included in these Preliminary Invalidity Contentions, whether now known to
`Defendants and Intervenors, might become relevant depending on the claim constructions
`proposed by Defendants and Intervenors and/or the Court’s claim construction rulings. Defendants
`
`4
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 4 of 38
`
`

`

`
`
`and Intervenors reserve all rights to supplement or modify the positions and information in these
`Preliminary Invalidity Contentions, including without limitation the prior art and grounds of
`invalidity set forth herein, pursuant to P.R. 3-6 after the Court has construed the asserted claims.
`
`C.
`
`ONGOING DISCOVERY AND SUPPLEMENTATION
`
`Defendants’ and Intervenors’ investigation, including its investigation of prior art and
`grounds for invalidity, is ongoing. Furthermore, Defendants’ and Intervenors’ invalidity positions
`will be the subject of expert testimony. Defendants and Intervenors base these Preliminary
`Invalidity Contentions on their current knowledge and understanding of the Asserted Claims,
`Plaintiff’s Infringement Contentions, the prior art, and other facts and information available as of
`the date of these contentions. Defendants and Intervenors reserve the right to supplement these
`Preliminary Invalidity Contentions, including, without limitation, by adding additional prior art
`and grounds of invalidity in accordance with the Federal Rules of Civil Procedure, the Local Rules,
`the local Patent Rules, the Docket Control Order, any Order issued by this Court, or otherwise.
`D.
`PRIORITY DATE OF THE ASSERTED PATENT
`
`Plaintiff’s Infringement Contentions contain allegations regarding the priority dates to
`which Plaintiff alleges it is entitled for each of the Asserted Claims. See e.g., March 13, 2023
`Infringement Contentions in 2:22-cv-00474-JRG-RSP at 4. Defendants and Intervenors do not
`agree that Plaintiff is entitled to the alleged priority dates for each of the Asserted Claims.
`Any reference to an “asserted priority date” in these Preliminary Invalidity Contentions
`refers to the priority dates identified in Plaintiff’s Infringement Contentions. Reference to a
`“priority date” or an “asserted priority date” should not be construed to mean that Defendants and
`Intervenors agree that the Asserted Patent is in fact entitled to such priority date, or that Plaintiff
`has provided proper notice as to its contentions for priority dates. To the extent Plaintiff alleges
`that any prior art relied on in these Preliminary Invalidity Contentions does not actually qualify as
`prior art to an Asserted Patent, Defendants and Intervenors reserve the right to rebut those
`
`5
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 5 of 38
`
`

`

`
`
`allegations (e.g., by demonstrating an earlier critical date for the challenged prior art and/or a later
`priority date for a particular Asserted Patent and/or Asserted Claim).3 Likewise, to the extent
`Plaintiff successfully establishes an invention date before any of the prior-art references relied on
`by Defendants and Intervenors, then those references serve as evidence of secondary
`considerations of obviousness, particularly, contemporaneous invention by others.
`
`
`E.
`
`PRIOR ART IDENTIFICATION AND CITATIONS THERETO
`
`In these Preliminary Invalidity Contentions, Defendants and Intervenors identify specific
`portions of prior art references that disclose the elements of each of the Asserted Claims. While
`Defendants and Intervenors have identified exemplary prior art references for each element, they
`do not necessarily identify every disclosure of the same element in each prior art reference. A
`person of ordinary skill in the art would read a prior art reference as a whole and in the context of
`other publications, literature, and general knowledge in the field and would rely upon other
`information including other publications and general scientific or engineering knowledge.
`Defendants and Intervenors therefore reserve the right to rely upon other unidentified portions of
`the prior art references and on other publications and prior art products and expert testimony to
`provide context and to aid understanding and interpretation of the identified portions of the prior
`art.
`
`Defendants and Intervenors also reserve the right to rely upon (1) other portions of the cited
`prior art references, other publications, prior art products, and the testimony of experts to establish
`that the alleged inventions would have been obvious to a person of ordinary skill in the art,
`including on the basis of modifying or combining certain cited references; (2) admissions relating
`to prior art in the Asserted Patent or related patents, the prosecution history of the Asserted Patent
`
`
`3 Defendants and Intervenors reserve the right to rely on additional documents and evidence to
`rebut any efforts by Plaintiff to allege any reference was not publicly available or otherwise
`available as prior art.
`
`6
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 6 of 38
`
`

`

`
`
`or related patents, or other admissions obtained during discovery; and (3) foreign counterparts of
`any U.S. patents identified in Defendants’ Preliminary Invalidity Contentions.
`Where Defendants and Intervenors identify a particular figure in a prior art reference, the
`identification should be understood to encompass the caption and description of the figure as well
`as any text relating to the figure in the remainder of the prior art reference (e.g., if a patent
`reference, in the specification and prosecution history). Similarly, where an identified portion of
`text refers to a figure or other material, the identification of the text should be understood to include
`the referenced figure or other material.
`
`F.
`
`INVALIDITY, UNENFORCEABILITY AND/OR INELIGIBILITY BASED
`ON NON-REQUIRED DISCLOSURE(S)
`
`Defendants and Intervenors reserve the right to prove the invalidity, unenforceability
`and/or ineligibility of one or more of each of the Asserted Claims on bases other than those
`required by P.R. 3-3 to be disclosed in these disclosures.
`
`G.
`
`INVALIDITY UNDER SECTION 102(F) PRIOR ART
`
`Defendants and Intervenors reserve the right to assert that the Asserted Claims of the
`Asserted Patent are invalid under 35 U.S.C. § 102(f) in the event they obtain evidence that the
`applicants named on the Asserted Patent or related patents, did not themselves “invent” the subject
`matter claimed. Should Defendants and Intervenors obtain such evidence, they will provide the
`name of the person(s) from whom and the circumstances under which the claimed subject matter
`or any part of it was derived.
`
`H.
`
`INVALIDITY UNDER SECTION 102(G) PRIOR ART
`
`The ’888 Patent is likewise invalid under 35 U.S.C. § 102(g) because the claims of the ’888
`Patent were made in this this country by another inventor who had not abandoned, suppressed, or
`concealed it. 35 U.S.C. § 102(g). For example, under § 102(g), claims 9, 10, 12, 20, 21, and 23 are
`invalid because Nokia made at least the Nokia Flexi Multiradio 10 Base Station before the priority
`
`7
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 7 of 38
`
`

`

`
`
`date of the ’888 patent. Likewise, Ericsson made at least the Ericsson RBS 6000 series before the
`priority date of the ’888 patent. As will be shown by the exemplary evidence listed in Exhibit B-
`07, each and every element of those asserted claims is invalid under § 102(g).
`
`
`I.
`
`NO PATENTABLE WEIGHT
`
`Defendants and Intervenors reserve the right to argue that various portions of each of the
`Asserted Claims, such as an intended use or result, non-functional descriptive material, and certain
`preamble language, are entitled to no patentable weight. Mapping of a portion of an Asserted
`Claim to a prior art reference does not represent that such portion of the claim is entitled to
`patentable weight when comparing the claimed subject matter to the prior art.
`
`II.
`
`INVALIDITY CONTENTIONS
`
`As explained herein and in Exhibits B-01 through B-08, and Appendix B, Defendants and
`Intervenors contend that each of the Asserted Claims of the Asserted Patent are invalid under
`35 U.S.C. §§ 102, 103, and/or 112.
`
`A.
`
`P.R. 3-3(A) – IDENTIFICATION OF PRIOR ART
`
`Pursuant to P. R. 3-3(a), and subject to Defendants’ and Intervenors’ reservation of rights
`as stated herein, Defendants and Intervenors identify the prior art that anticipates or renders
`obvious the Asserted Claims of the Asserted Patent in the tables set forth below.4 On information
`and belief, each listed reference qualifies as prior art to the Asserted Patent.5
`To the extent that any of the following are prior art, Defendants and Intervenors reserve
`the right to rely upon foreign counterparts of the U.S. patents identified herein; U.S. counterparts
`
`4 Defendants and Intervenors also hereby identify any systems or products that embody the
`technology described in any patent or publication identified in these Preliminary Invalidity
`Contentions. Defendants and Intervenors reserve the right to rely on any documents or other
`evidence regarding any such systems.
`5 Defendants and Intervenors may rely on any document produced with the prefix JD-COBB to
`explain the background and/or state of the art to the Asserted Patent.
`
`8
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 8 of 38
`
`

`

`
`
`of foreign patents and foreign patent applications identified herein; and U.S. and foreign patents
`and patent applications corresponding to articles and publications identified herein. Defendants
`and Intervenors also reserve the right to rely upon parent or ancestor patents or patent
`applications from which any of the patents or patent applications identified herein claim priority
`to as continuation, divisional, or continuation-in-part applications.
`
`1.
`
`888 Patent
`
`a.
`
`Identification of Prior Art Patents
`
`Patent/Publication No.
`
`Country of Origin
`
`U.S. Patent No. 6,580,910 to Mazur et al.
`(“Mazur”)
`U.S. Patent No. 7,336,953 to Kim et al.
`(“Kim”)
`U.S. Patent Publication No. 2004/0176094
`(“Kim-094”)
`U.S. Patent No. 7,657,288 to Chitrapu et al.
`(“Chitrapu”)
`U.S. Patent Publication No.
`2006/0111149A1(“Chitrapu-149”)
`U.S. Patent No. 8,489,093 to Souissi et al.
`(“Souissi”)
`U.S. Patent No. 9,002,362 to Marce et al.
`(“Marce”)
`U.S. Patent No. 9,113,379 to Jung et al.
`(“Jung”)
`U.S. Patent No. 9,426,712 to Hagerman et
`al. (“Hagerman”)
`U.S. Patent Publication No. 2009/0298502
`(“Hagerman-502”)
`U.S. Patent Application Publication No.
`2002/0137538 to Chen et al. (“Chen”)
`U.S. Patent Application Publication No.
`2005/0070285 to Goransson (“Goransson”)
`U.S. Patent Application Publication No.
`2008/0181180 to Karaoguz (“Karaoguz”)
`
`9
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`Date of
`Issue/Publication
`
`June 17, 2003
`
`February 26, 2008
`
`September 9, 2004
`
`February 2, 2010
`
`February 2, 2010
`
`July 16, 2013
`
`April 7, 2015
`
`August 18, 2015
`
`August 23, 2016
`
`December 3, 2009
`
`September 26, 2002
`
`March 31, 2005
`
`July 31, 2008
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 9 of 38
`
`

`

`
`
`
`
`Patent/Publication No.
`
`Country of Origin
`
`Chinese Patent No. CN101217819 to Li et
`al. (“Li”)
`U.S. Patent Publication No. 2005/0073977
`(“Vanghi-977”)
`U.S. Patent Publication No.
`US20110206009A1 (“Attar”)
`U.S. Patent Publication No.
`US20100099416A1 to Kazmi et al.
`(“Kazmi”)
`
`China
`
`U.S.
`
`U.S.
`
`U.S.
`
`Date of
`Issue/Publication
`
`July 9, 2008
`
`April 7, 2005
`
`Aug. 25, 2011
`
`April 22, 2010
`
`b.
`
`Identification Of Prior Art Publications
`
`Title, Author(s), and Publisher
`
`Date of Publication
`
`Adaptive Handoff Algorithm for Multi-beam GEO Mobile
`Satellite System by Li Song, Ai-Jun Liu, and Yi-Fei Ma; 2008
`IEEE International Conference on Communications
`
`Dynamic Resource Allocation Schemes During Handoff for
`Mobile Multimedia Wireless Networks, by Parameswaran
`Ramanathan, Krishna M. Sivalingam, Prathima Agrawal, and
`Shalinee Kishore; IEEE Journal on Selected Areas in
`Communications
`
`Wireless Communications, Theodore S. Rappaport (2002)
`(“Rappaport”).
`
`LTE: The UMTS Long Term Evolution From Theory to
`Practice by Sesia et al. (“Sesia”)
`
`LTE for UMTS OFDMA and SC-FDMA Based Radio Access
`by Holma & Toskala (“Holma & Toskala (2009)”)
`
`UMTS Networks Architecture, Mobility, and Services by
`Kaaranen et al. (“Kaaranen”)
`
`WCDMA for UMTS by Holma and Toskala (“Holma &
`Toskala (2004)”)
`
`May 2008
`
`July 1999
`
`2002
`
`July 22, 2011
`
`2009
`
`2001
`
`2004
`
`LTE for UMTS: Evolution to LTE-Advanced Second Edition
`(“Holma & Toskala (2011)”
`
`March 2011
`
`10
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 10 of 38
`
`

`

`
`
`Title, Author(s), and Publisher
`
`4G LTE/LTE-Advanced for Mobile Broadband by Dahlman
`and Parkvall (“Dahlman and Parkvall”)
`
`LTE-Advanced: A Practical Systems Approach to
`Understanding 3GPP LTE Releases 10 and 11 Radio Access
`technologies by Ahmadi (“Ahmadi”)
`
`3GPP TS 36.300 v10.3.0
`
`3GPP TS 36.300 v10.2.0
`
`3GPP TS 23.401 v10.3.0
`
`3GPP TS 23.401 v10.2.0
`
`3GPP TS 36.331 v10.1.0
`
`3GPP TS 36.331 v.10.0.0
`
`3GPP TS 36.211 v.10.1.0
`
`3GPP TS 36.211 v10.0.0
`
`3GPP TS 36.213 v10.1.0
`
`3GPP TS 36.213 v10.0.0
`
`3GPP TS 36.214 v10.1.0
`
`3GPP TS 36.214 v10.0.0
`
`3GPP TS 36.321 v10.1.0
`
`3GPP TS 36.321 v10.0.0
`
`3GPP TS 36.306 v10.1.0
`
`3GPP TS 36.306 v10.0.0
`
`3GPP TR 21.900 v10.0.0
`
`11
`
`Date of Publication
`
`March 20, 2011
`
`October 13, 2010
`
`April 5, 2011
`
`December 21, 2010
`
`March 28, 2011
`
`December 20, 2010
`
`March 30, 2011
`
`December 21, 2010
`
`March 30, 2011
`
`December 21, 2010
`
`March 30, 2011
`
`December 22, 2010
`
`March 30, 2011
`
`December 22, 2010
`
`April 6, 2011
`
`December 21, 2010
`
`April 5, 2011
`
`December 21, 2010
`
`April 4, 2011
`
`Headwater Research LLC
`Ex. 2013, IPR2024-00137
`Page 11 of 38
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`

`

`
`
`Title, Author(s), and Publisher
`
`Date of Publication
`
`3GPP TR 21.905 v10.3.0
`
`3GPP TS 36.214 v10.1.0
`
`3GPP TS 36.302 v10.1.0
`
`3GPP TS 36.321 v10.1.0
`
`3GPP TS 36.413 v10.1.0
`
`3GPP TS 24.301 v10.2.0
`
`3GPP TS 25.413 v10.1.0
`
`March 28, 2011
`
`March 30, 2011
`
`March 28, 2011
`
`April 6, 2011
`
`April 5, 2011
`
`April 3, 2011
`
`April 4, 2011
`
`c.
`
`Identification Of Prior Art Sales/Public Uses
`
`Item Offered for Sale and/or Publicly Used
`
`Date of
`Offer/Public Use
`
`Nokia base station equipment
`
`Ericsson base station equipment
`
`All systems or products that embody the
`technology described in any patent or
`publication identified in these Preliminary
`Invalidity Contentions.
`
`
`
`
`
`
`
`
`Person or Entity
`Who Made and
`Received Offer,
`Made Public Use, or
`Made Information
`Known
`
`Nokia
`
`Ericsson
`
`
`
`B.
`
`P.R. 3-3(B) – ANTICIPATION AND OBVIOUSNESS
`
`Pursuant to P.R. 3-3 (b), and subject to Defendants’ and Intervenors’ reservation of rights,
`Defendants and Intervenors attach claim charts hereto that are directed to the prior art references
`that anticipate each of the Asserted Claims of each of the Asserted Patent under 35 U.S.C. §§
`
`12
`
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`Ex. 2013, IPR2024-00137
`Page 12 of 38
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`

`

`
`
`102(a), (b), (e), and/or (g), either expressly or inherently, and/or the prior art references that, in the
`alternative, would have rendered the Asserted Claims obvious under 35 U.S.C. § 103. See Exs.
`B-01 through B-08 and Appendix B. Some claim charts also contain explanations about the
`motivation to combine the references. Any combinations contained or referenced in Defendants’
`and Intervenors’ claim charts are exemplary. Any prior art reference cited herein may be combined
`with any other reference to demonstrate the invalidity of any of the Asserted Claims, as set forth
`below and in Appendix B.
`To the extent any claim limitation is construed to have a similar meaning, or to encompass
`similar feature(s) and/or function(s), as any other claim limitation, the citations to prior art
`references for each of those claim limitations in Defendants’ and Intervenors’ claim charts are
`incorporated by reference with respect to each other.
`Defendants’ and Intervenors’ claim charts provide exemplary citations to the prior art
`references that teach or suggest every element of each of the Asserted Claims of the Asserted
`Patent. To the extent that an element of an Asserted Claim is not shown in a chart, the Asserted
`Claims would have been obvious based on a combination of one or more other prior art references,
`as set forth below and in Appendix B.
`Much of the art cited in these Preliminary Invalidity Contentions reflects common
`knowledge and the state of the art at the time of the earliest filing date of the Asserted Patent.
`Defendants and Intervenors may rely on additional citations, references, expert testimony, and
`other material to provide context or to aid in understanding the cited portions of the references
`and/or cited features of the systems. Defendants and Intervenors also may rely on expert testimony
`explaining relevant portions of references, relevant hardware or software products or systems, and
`other discovery regarding these subject matters. Additionally, Defendants and Intervenors may
`rely on other portions of any prior art reference for purposes of explaining the background and
`general technical subject area of the reference.
`Where an individual reference is cited with respect to all elements of an Asserted Claim,
`Defendants contend 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
`knowledge of a person of ordinary skill in the art and in combination with the other cited references
`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.” Bos. Sci. Scimed, Inc. v. Cordis Corp., 554
`F.3d 982, 991 (Fed. Cir. 2009). To the extent Plaintiff contends that an embodiment within a
`particular item of prior art does not fully disclose all limitations of a claim, Defendants and
`Intervenors accordingly reserve their rights to rely on other embodiments in that prior art reference,
`or other information, to 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
`Asserted Claim, Defendants and Intervenors contend 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 claim element(s), as indicated in the claim charts submitted herewith.
`“Under § 103, the scope and content of the prior art are to be determined; differences between the
`prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent
`art resolved. Against this background, the obviousness or nonobviousness of the subject matter is
`determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
`Deere Co. of Kan. City, 383 U.S. 1, 17 (1966)).
`Exemplary motivations to combine references are discussed below and in some instances
`within the accompanying charts. Defendants and Intervenors reserve the right to rely upon any
`references or assertions identified herein in connection with Defendants’ and Intervenors’
`contentions that each Asserted Claim is invalid under 35 U.S.C. § 103 and to rely upon expert
`testimony addressing such 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. It is established that “a rejection for obviousness under § 103
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`can be based on a reference which happens to anticipate the claimed subject matter.” In re Meyer,
`599 F.2d 1026, 1031 (C.C.P.A. 1979). To the extent any cited prior art item may not fully disclose
`a limitation 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.
`Many of the cited references cite or relate to additional references and/or products, services,
`or projects. Many of the cited references also cite software, hardware, or systems. Defendants
`and Intervenors might rely upon such cited additional references and/or products and copies or
`exemplars of such software, hardware, or systems. Defendants and Intervenors will produce or
`make available for inspection any such cited references, products, software, hardware, or systems
`that it intends to rely upon. Defendants and Intervenors may also rely upon the disclosures of the
`references cited and/or discussed during the prosecution of the Asserted Patent and/or the
`assertions presented regarding those references.
`Defendants and Intervenors reserve the right to further streamline and reduce the number
`of anticipation or obviousness references relied upon with respect to a given Asserted Claim and
`to exchange or otherwise modify the specific references relied upon for anticipation and within
`each obviousness combination for each Asserted Claim.
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`C.
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`P.R. 3-3(C) – CLAIM CHARTS
`
`Defendants and Intervenors attach the following claim charts pursuant to P.R. 3-3(c):
`
` Ex. B-01: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of the prior art 3GPP
`standards (“3GPP Standards”)
`
` Ex. B-02: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of U.S. Patent Publication
`No. 2006/0111149A1(“Chitrapu-149”)
`
` Ex. B-03: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of LTE for UMTS:
`Evolution to LTE-Advanced, 2d Ed., Edited by Holma, H. and Toskala, A. (2011)
`(“Holma”) and LTE for UMTS OFDMA and SC-FDMA Based Radio Access by Holma
`& Toskala (“Holma & Toskala (2009)”)
`
` Ex. B-04: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of U.S. Patent Publication
`No. 2009/0298502 (“Hagerman-502”)
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` Ex. B-05: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of U.S. Patent Publication
`No. 2004/0176094 (“Kim-094”)
`
` Ex. B-06: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of U.S. Patent Publication
`No. 2005/0073977 (“Vanghi-977”)
`
` Ex. B-07: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of prior art Nokia and
`Ericsson base station equipment
`
` Ex. B-08: U.S. Patent No. 9,094,888 (“’888 Patent”) in view of U.S. Patent Publication
`No. US 2010/0099416A1 to Kazmi et al. (“Kazmi”)
`
`The attached claim charts are based, in whole or in part, on Plaintiff’s asserted theories of
`
`infringement in this case, to the extent discernible from Plaintiff’s Infringement Contentions. As
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`an initial matter, all portions of each prior art reference cited in each of the attached claim charts
`
`are relied upon to support the disclosure of each patent claim limitation, as all portions provide
`
`general support. Representative descriptions and supporting citations are nevertheless provided,
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`but are merely exemplary; they do not necessarily reflect every instance where a particular claim
`
`term or claim limitation may be disclosed in or taught by the prior art reference. References to
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`figures or drawings refer to the figures/drawings themselves, as well as to any accompanying text
`
`or text necessary to understand the figures or drawings. References to text refers to the text itself,
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`as well as the accompanying figures or drawings that accompany the text. Defendants and
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`Intervenors reserve the right to rely on additional, or different, portions of the prior art references,
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`other publications and expert testimony to establish what these references would have taught one
`
`of ordinary skill in the art, or in what manner they would have motivated a particular combination
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`of references. Moreover, in certain instances, representative documents for certain prior art
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`systems are cited, but, again, are merely exemplary; they do not necessarily reflect or include every
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`document relating to the prior art system that exists and that discloses or teaches a particular claim
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`term or claim limitation. Defendants and Intervenors reserve the right to rely on any and all
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`documents that describe or relate to prior art systems, including relying on the system itself.
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