IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`Case No. 2:23-cv-00712
`
`JURY TRIAL DEMANDED
`
`))))))))))
`
`
`
`IMMERSION CORPORATION,
`
`Plaintiff,
`
`
`
`v.
`
`VALVE CORPORATION,
`
`Defendant.
`
`PRELIMINARY INFRINGEMENT CONTENTIONS OF PLAINTIFF IMMERSION
`CORPORATION TO DEFENDANT VALVE CORPORATION
`
`Plaintiff Immersion Corporation (“Immersion”) hereby provides
`
`its Preliminary
`
`Infringement Contentions to Defendant Valve Corporation. (“Valve”) as to U.S. Patent Nos.
`
`7,336,260 (the “’260 Patent”), 8,749,507 (the “’507 patent”), 9,430,042 (the “’042 patent”),
`
`9,116,546 (the “’546 Patent”), 10,627,907 (the “’907 Patent”), 10,665,067 (the “’067 Patent”), and
`
`11,175,738 (the “’738 Patent”) (collectively, “the Asserted Patents”). This disclosure is without
`
`any concession, agreement, admission, or waiver of any ultimate determination of relevance,
`
`admissibility, or discoverability of particular information for any purpose, and without waiver of
`
`any attorney-client, work product or other privilege or immunity. Immersion makes this disclosure
`
`based on its present information, without the benefit of discovery. Moreover, to the extent the
`
`Court construes the claims of any of the asserted patents, additional arguments and/or information
`
`may be relevant in light of any such construction. Immersion, therefore, reserves the right to
`
`supplement and/or amend this disclosure at any time in view of the Court’s construction, in view
`
`of any new information learned during fact and expert discovery, or for any other reason
`
`1
`
`Valve Exhibit 1078
`Valve v. Immersion
`
`
`FOR THE WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`Case No. 2:23-cv-00712
`
`JURY TRIAL DEMANDED
`
`))))))))))
`
`
`
`IMMERSION CORPORATION,
`
`Plaintiff,
`
`
`
`v.
`
`VALVE CORPORATION,
`
`Defendant.
`
`PRELIMINARY INFRINGEMENT CONTENTIONS OF PLAINTIFF IMMERSION
`CORPORATION TO DEFENDANT VALVE CORPORATION
`
`Plaintiff Immersion Corporation (“Immersion”) hereby provides
`
`its Preliminary
`
`Infringement Contentions to Defendant Valve Corporation. (“Valve”) as to U.S. Patent Nos.
`
`7,336,260 (the “’260 Patent”), 8,749,507 (the “’507 patent”), 9,430,042 (the “’042 patent”),
`
`9,116,546 (the “’546 Patent”), 10,627,907 (the “’907 Patent”), 10,665,067 (the “’067 Patent”), and
`
`11,175,738 (the “’738 Patent”) (collectively, “the Asserted Patents”). This disclosure is without
`
`any concession, agreement, admission, or waiver of any ultimate determination of relevance,
`
`admissibility, or discoverability of particular information for any purpose, and without waiver of
`
`any attorney-client, work product or other privilege or immunity. Immersion makes this disclosure
`
`based on its present information, without the benefit of discovery. Moreover, to the extent the
`
`Court construes the claims of any of the asserted patents, additional arguments and/or information
`
`may be relevant in light of any such construction. Immersion, therefore, reserves the right to
`
`supplement and/or amend this disclosure at any time in view of the Court’s construction, in view
`
`of any new information learned during fact and expert discovery, or for any other reason
`
`1
`
`Valve Exhibit 1078
`Valve v. Immersion
`
`
`
`permissible under the Federal and Local Rules, or any other applicable rules or Order in the above-
`
`captioned matter, including the Court’s ruling on Valve’s pending motion to dismiss. (Dkt. 37).
`
`
`
`Local Patent Rule 120(a) “Asserted Claims”
`
`Immersion identifies the following claims (together the “Asserted Claims”) from each
`
`patent in suit that Immersion alleges are infringed by Valve and the statutory subsection of 35
`
`U.S.C. § 271 asserted:
`
`’260 Patent: Claims 1, 2, 5, 6, 7; 35 U.S.C. § 271(a), (b), and (f)
`
`’507 Patent: Claims 1-8; 35 U.S.C. § 271(a), (b), and (f)
`
`’042 Patent: Claims 1, 2, 3, 7, 8, 9, 10, 11, 13, 14, 15, 16, 18, 19; 35 U.S.C. § 271(a), (b),
`
`and (f)
`
`’546 Patent: Claims 1, 2, 3, 5, 6, 7; 35 U.S.C. § 271(a), (b), and (f)
`
`’907 Patent: Claims 1-20; 35 U.S.C. § 271(a), (b), and (f)
`
`’067 Patent: Claims 1, 2, 3, 5, 6, 7, 8, 11, 12, 15, 17-21; 35 U.S.C. § 271 (a), (b), and (f)
`
`’738 Patent: Claims 1, 2, 3, 6, 14, 15, 19; 35 U.S.C. § 271 (a), (b), and (f)
`
`Local Patent Rule 120(b) “Accused Device”
`
`Immersion identifies the following apparatus, product, device, process, method, act or
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`instrumentality Accused Instrumentalities made, imported, offered for sale, and/or sold by Valve.
`
`As explained in Immersion’s Complaint, Valve makes, uses, sells, offers for sale, and/or imports
`
`handheld as well as augmented reality and virtual reality (“AR/VR”) video game systems such as
`
`the Steam Deck and Valve Index. These video game systems integrate multiple game engines
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`including, for example and without limitation, Steam VR and Steam Input, as well as game titles
`
`by Valve through its Steam platform, including for example and without limitation, Half-Life:
`
`Alyx, MoonDust: Knuckles Tech Demo, Counter-Strike: Global Offensive, STAR WARS Jedi:
`
`2
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`
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`Survivor, War Thunder, Apex Legends, Call of Duty®: Black Ops III, Call of Duty®: Modern
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`Warfare II, Warframe, Marvel’s Guardians of the Galaxy, Grand Theft Auto V, and any other
`
`game titles sold on the Steam platform that incorporate haptic capabilities. “Accused Handheld
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`Instrumentalities” means the Valve Steam Deck and the corresponding software (including Steam)
`
`and game titles that provide examples of infringement of the Asserted Claims. “Accused VR
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`Instrumentalities” means the Valve Index (including the headset and controllers) and the
`
`corresponding software (including SteamVR), and game titles that provide examples of
`
`infringement of the Asserted Claims.
`
`’260 Patent: For the identified claims above, the Accused Instrumentalities for the ’260
`
`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
`
`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
`
`chart for the ’260 Patent.
`
`’507 Patent: For claims 1-3, the Accused Instrumentalities for the ’507 Patent are the
`
`Accused Handheld Instrumentalities and the Accused VR Instrumentalities. For claims 4-8, the
`
`Accused Instrumentalities are the Accused Handheld Instrumentalities. Immersion further
`
`identifies certain game titles that provide non-limiting examples of infringement of the Asserted
`
`Claims in the corresponding claim chart for the ’507 Patent.
`
`’042 Patent: For the identified claims above, the Accused Instrumentalities for the ’042
`
`Patent are the Accused Handheld Instrumentalities. Immersion further identifies certain game titles
`
`that provide non-limiting examples of infringement of the Asserted Claims in the corresponding
`
`claim chart for the ’042 Patent.
`
`’546 Patent: For the identified claims above, the Accused Instrumentalities for the ’546
`
`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
`
`3
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`
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`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
`
`chart for the ’546 Patent.
`
`’907 Patent: For the identified claims above, the Accused Instrumentalities for the ’907
`
`Patent are the Accused Handheld Instrumentalities. Immersion further identifies certain game titles
`
`that provide non-limiting examples of infringement of the Asserted Claims in the corresponding
`
`claim chart for the ’907 Patent.
`
`’067 Patent: For the identified claims above, the Accused Instrumentalities for the ’067
`
`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
`
`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
`
`chart for the ’067 Patent.
`
`’738 Patent: For the identified claims above, the Accused Instrumentalities for the ’738
`
`Patent are the Accused VR Instrumentalities. Immersion further identifies certain game titles that
`
`provide non-limiting examples of infringement of the Asserted Claims in the corresponding claim
`
`chart for the ’738 Patent.
`
`Local Patent Rule 120(c) “Claim Charts”
`
`Immersion hereby incorporates by reference the Complaint filed in the above-captioned
`
`matter, and any amended pleadings that may be filed by Immersion in this matter. The enclosed
`
`charts disclose where each element of each Asserted Claim is found within each Accused Device
`
`to the extent such information is presently known to Immersion and without the benefit of
`
`discovery. Immersion reserves the right to provide further details regarding Valve’s infringement
`
`as discovery is provided by Valve.
`
`Ex. A ’260 Patent
`
`Ex. B ’507 Patent
`
`4
`
`
`
`Ex. C ’042 Patent
`
`Ex. D ’546 Patent
`
`Ex. E ’907 Patent
`
`Ex. F ’067 Patent
`
`Ex. G ’738 Patent
`
`Local Patent Rule 120(d) Indirect & Joint Infringement
`
`Immersion alleges that all of the Asserted Claims are infringed directly or indirectly by
`
`Valve in violation of 35 U.S.C. § 271, et seq., including 35 U.S.C. § 271(a), (b), and (f).
`
`Valve directly infringes the Asserted Claims as detailed in Exhibits A-G.
`
`Valve indirectly infringes the Asserted Claims to the extent Valve’s users are direct
`
`infringers of the Asserted Claims as referenced in Exhibits A-G, and their acts of direct
`
`infringement are use of the Accused Instrumentalities in an infringing manner as described in
`
`Exhibits A-G. With knowledge of infringement of the Asserted Claims going back to at least the
`
`filing of the Complaint in the above-captioned matter, Valve has taken and continues to take active
`
`steps to induce infringement of the Asserted Claims by its users. Such active steps include, but
`
`are not limited to, making and selling the Accused Instrumentalities, encouraging third parties to
`
`develop infringing features for the Accused Instrumentalities, providing its users with instructions
`
`on use of the accused features of each Accused Instrumentality.
`
`In addition, Valve infringes by supplying or causing to be supplied in or from the United
`
`States all or a substantial portion of the components of the Accused Instrumentalities, including
`
`software, in such manner as to actively induce the combination of such components outside of the
`
`United States in a manner that would infringe the patent if such combination occurred within the
`
`United States. Valve further also causes to be supplied in or from the United States components of
`
`5
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`
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`the Accused Instrumentalities especially made for use in the Accused Instrumentalities, including
`
`without limitation software, that are not staple articles of commerce suitable for substantial
`
`noninfringing use, knowing that such component is so made or adapted and intending that such
`
`component will be combined outside of the United States in a manner that would infringe the
`
`patent if such combination occurred within the United States.
`
`Local Patent Rule 120(e) Literal Infringement & Doctrine of Equivalents
`
`Immersion identifies all the Asserted Claims as literally infringed. Immersion further
`
`identifies the following claims as also infringed under the doctrine of equivalents: ’738 Patent,
`
`Claim 1; ’738 Patent, Claim 15. Immersion reserves the right to provide further details regarding
`
`Valve’s infringement under the doctrine of equivalents as discovery is provided by Valve.
`
`Local Patent Rule 120(f) Priority Date
`
`Immersion presently asserts the following priority dates for all asserted claims of the
`
`Asserted Patents:
`
`’260 Patent – November 1, 2001
`
`’507 Patent – November 26, 2003
`
`’042 Patent – December 27, 2006
`
`’546 Patent – August 29, 2012
`
`’907 Patent – December 23, 2014
`
`’067 Patent – June 15, 2018
`
`’738 Patent – December 13, 2016
`
`
`
`Immersion reserves the right to supplement and/or amend this disclosure in view of the
`
`Court’s construction, new information learned during fact and expert discovery, or for any other
`
`reason permissible under the Federal and Local Rules.
`
`6
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`
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`Date: October 20, 2023
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`Respectfully submitted,
`
`FOLIO LAW GROUP PLLC
`
`
`
`
`/s/ Stefan Szpajda
`Stefan Szpajda, WA Bar No. 50106
`Cristofer I. Leffler, WA Bar No. 35020
`David Schumann, CA Bar No. 223936
`C. Maclain Wells, CA Bar No. 221609 (pro hac vice)
`Sam Kim, CA Bar No. 282582
`Palani P. Rathinasamy, CA Bar No. 269852
`Cliff Win, Jr., CA Bar No. 270517
`1200 Westlake Ave. N., Suite 809
`Seattle, WA 98109
`Tel: (206) 880-1802
`Email: stefan@foliolaw.com
`cris.leffler@foliolaw.com
`david.schumann@foliolaw.com
`maclain@foliolaw.com
`sam.kim@foliolaw.com
`palani@foliolaw.com
`cliff.win@foliolaw.com
`
`
`Joseph M. Abraham, TX Bar No. 24088879
`Timothy F. Dewberry, TX Bar No. 24090074
`Folio Law Group PLLC
`13492 Research Blvd., Suite 120, No. 177
`Austin, TX 78750
`Tel: (737) 234-0201
`Email: joseph.abraham@foliolaw.com
`timothy.dewberry@foliolaw.com
`
`Attorneys for Immersion Corporation
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned counsel hereby certifies that on October 20, 2023, a true and correct
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`copy of the foregoing was served on all counsel of record via email.
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`/s/ Stefan Szpajda
`Stefan Szpajda
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`8
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