IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Civil Action No. 6:23-cv-00479-DC
`
`JURY TRIAL DEMANDED
`
`S.M.R INNOVATIONS LTD and Y.M.R
`TECH LTD,
`
` v.
`
`APPLE INC.,
`
`Plaintiffs,
`
`Defendant.
`
`DEFENDANT APPLE INC.’S INVALIDITY CONTENTIONS
`
`EX2006, Page 1
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`

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`Pursuant to the June 7, 2024, Joint Motion to Enter Agreed Scheduling Order (ECF. No.
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`49), Defendant Apple Inc. (“Apple”) provides the following contentions regarding the invalidity
`
`of U.S. Pat. Nos. 7,969,990 (“the ’990 Patent”); 8,711,866 (“the ’866 Patent”); 9,699,223 (“the
`
`’223 Patent”); and 10,547,648 (“the ’648 Patent”). Apple’s Invalidity Contentions (“Invalidity
`
`Contentions”) address the patents and asserted claims identified in Defendants S.M.R Innovations
`
`LTD and Y.M.R Tech LTD’s (collectively, “Defendants” or “SMR”) Infringement Contentions of
`
`May 17, 2024.
`
`Apple’s Invalidity Contentions reflect its knowledge and contentions as of this date in the
`
`present action. The disclosures are based upon the knowledge, information and/or belief presently
`
`available to Apple. Apple’s search for prior art is ongoing, and Apple reserves the right to modify
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`and supplement its Invalidity Contentions, as permitted by this Court’s Order Governing
`
`Proceedings, any Court order, and any other applicable rules and statutes, including in the event
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`that additional prior art is identified during the course of discovery and/or in response to any
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`amendment by SMR of its Infringement Contentions or any claim construction issued by the Court.
`
`Apple will serve Final Invalidity Contentions at the time directed by the Agreed Scheduling Order.
`
`Each of the asserted claims of the ’990, ’866, ’223, and ’648 Patents is anticipated by and/or
`
`obvious in view of the items of prior art identified in Exhibits A1–D2 hereto, alone or in
`
`combination, as set forth in those Exhibits. Much of the art identified in the attached Exhibits
`
`reflects common knowledge and the state of the art at the time of filing of the ’990, ’866, ’223,
`
`and ’648 Patents. Specific examples of anticipation and obviousness, along with exemplary
`
`motivations to combine the selected prior art, are set forth below.
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`EX2006, Page 2
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`

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`I.
`
`IDENTIFICATION OF PRIOR ART
`
`A.
`
`Prior Art Patents and Applications
`
`Apple identifies the following prior art patents and applications that anticipate and/or
`
`render obvious the asserted claims of the ’990, ’866, ’223, and ’648 Patents (collectively, the
`
`“Asserted Patents”) under pre-AIA 35 U.S.C. §§ 102(a), (b), and/or (e) and/or 35 U.S.C. § 103, or
`
`provide information relating to the background state of the art at the time the Asserted Patents
`
`were allegedly conceived:
`
`Inventor(s)
`Patent Number
`Han
`EP 1 132 847
`Fillebrown
`US 2001/0053134
`US 2002/0062406 Chang
`US 2002/0068600 Chihara
`US 2002/0076025
`Liversidge
`US 2002/0102998
`Lin
`US 2002/0178279
`Janik
`US 2002/0196378
`Slobodin
`US 2003/0061493 Angelo
`US 5,793,415
`Gregory
`US 6,144,366
`Numazaki
`US 6,195,545
`Baker
`US 6,587,450
`Pasanen
`US 6,701,162
`Everett
`US 6,703,930
`Skinner
`US 7,058,414
`Rofheart
`US 7,124,166
`Brown
`US 7,286,502
`Rao
`US 7,295,809
`Moore
`US 7,536,182
`Zhang
`US 7,574,474
`Thornton
`US 7,580,005
`Palin
`WO 01/18665
`Hendricks
`
`Exemplary Date
`9/12/2001
`12/20/2001
`5/23/2002
`6/6/2002
`6/20/2002
`8/1/2002
`11/28/2002
`12/26/2002
`3/27/2003
`8/11/1998
`11/7/2000
`2/27/2001
`7/1/2003
`3/2/2004
`3/9/2004
`6/6/2006
`10/17/2006
`10/23/2007
`11/13/2007
`5/19/2009
`8/11/2009
`8/25/2009
`3/15/2001
`
`Beg Bates
`APL-SMR_00001519
`APL-SMR_00001575
`APL-SMR_00001591
`APL-SMR_00001623
`APL-SMR_00001655
`APL-SMR_00001727
`APL-SMR_00001735
`APL-SMR_00001755
`APL-SMR_00001782
`APL-SMR_00001789
`APL-SMR_00001811
`APL-SMR_00001958
`APL-SMR_00001981
`APL-SMR_00001999
`APL-SMR_00002006
`APL-SMR_00002018
`APL-SMR_00002050
`APL-SMR_00002067
`APL-SMR_00002085
`APL-SMR_00002099
`APL-SMR_00002115
`APL-SMR_00002129
`APL-SMR_00002146
`
`In addition, Apple identifies the prior art patents and applications cited in the following
`
`petitions filed before the Patent Trial And Appeal Board relating to SMR’s Asserted Patents:
`
`IPR2024-01047, -01048, -01049, and -01050, to the extent they are not listed above. To the extent
`
`that any of the patents and applications listed above describe systems, apparatuses, or methods that
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`EX2006, Page 3
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`

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`were implemented, built, used, or reduced to tangible form, Apple reserves the right to rely upon
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`such systems, apparatuses, or methods as independent pieces of prior art.
`
`B.
`
`Prior Art Publications
`
`Apple identifies the following prior art publications that anticipate and/or render obvious
`
`the asserted claims of the Asserted Patents under pre-AIA 35 U.S.C. §§ 102(a) and (b) and/or
`
`35 U.S.C. § 103, or provide disclosures regarding the state of the art at the time the inventions
`
`claimed in the Asserted Patents were allegedly conceived:
`
`Publication Title
`Specification of the Bluetooth System,
`Version 1.1
`Protocols for Service Discovery in
`Dynamic and Mobile Networks
`A Situated Computing Framework for
`Mobile and Ubiquitous Multimedia
`Access using Small Screen and
`Composite Devices
`
`Author(s)
`Bluetooth SIG
`
`Beg Bates
`Date
`2/22/2001 APL-SMR_00000435
`
`Lee
`
`Pham
`
`2002
`
`2000
`
`APL-SMR_00001554
`
`APL-SMR_00001566
`
`To the extent that any of the publications listed above describe systems, apparatuses, or
`
`methods that were implemented, built, used, or reduced to tangible form, Apple reserves the right
`
`to rely upon such systems, apparatuses, or methods as independent pieces of prior art.
`
`C.
`
`Prior Invention Prior Art under 35 U.S.C. §§ 102 (f) and (g)
`
`In its Infringement Contentions, SMR asserted a pre-filing conception date of October 16–
`
`18, 2000 for its Asserted Patents. Thus, each prior art patent or publication identified above that
`
`was either filed or issued (for patents) or published (for publications) before October 16–18, 2000,
`
`necessarily constitutes evidence of prior invention pursuant to 35 U.S.C. § 102(g).
`
`Additionally, although SMR has alleged that the Asserted Patents are entitled to a pre-filing
`
`conception date of October 16–18, 2000, it has not produced evidence that would suggest that any
`
`claim of the Asserted Patents is, in fact, entitled to such a pre-filing conception date, and based on
`
`the facts now known to it, Apple does not believe any such evidence exists. The earliest possible
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`EX2006, Page 4
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`priority date for the Asserted Patents, based on SMR’s filings with the Patent and Trademark
`
`Office, is July 25, 2002. As a result, any prior art patent or publication identified above that was
`
`either filed or issued (for patents) or published (for publications) in the United States before July
`
`25, 2002, necessarily constitutes evidence of prior invention pursuant to 35 U.S.C. § 102(g).
`
`Further still, SMR’s claim to a July 25, 2002, priority date for the Asserted Patents is based
`
`on the ability of the Asserted Patents to claim the benefit of the provisional filing date of U.S.
`
`Provisional Patent Application No. 60/398,077. As set forth below, however, the asserted claims
`
`are not entitled to claim the benefit of this priority date because U.S. Provisional Patent Application
`
`No. 60/398,077 does not satisfy the requirements of 35 U.S.C. § 112 with respect to such claims.
`
`Thus, each piece of prior art patent or publication identified above that was either filed or issued
`
`(for patents) or published (for publications before January 21, 2003), which is SMR’s earliest
`
`claimed non-provisional filing date, constitutes evidence of prior invention pursuant to 35 U.S.C.
`
`§ 102(g).
`
`Further still, the asserted claims of at least the ’223 and ’648 Patents are invalid under
`
`35 U.S.C. § 102(f) because, on information and belief, SMR, having not previously been in
`
`possession of the alleged inventions ultimately claimed therein, derived these claims from Apple’s
`
`commercial products (such as Apple’s AirPlay, Call Relay, and/or Continuity features) or the
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`commercial products of one or more of Alphabet Inc. (f/k/a Google); Samsung Electronics Co.,
`
`Ltd.; LG Electronics, Inc.; and Motorola Mobility LLC, and thereafter falsely claimed, during the
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`prosecution of the ’223 and ’648 Patents, to have invented them.
`
`II.
`
`OBVIOUSNESS
`
`Claims are obvious, and therefore unpatentable, where “the differences between the subject
`
`matter sought to be patented and the prior art are such that the subject matter as a whole would
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`EX2006, Page 5
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`have been obvious at the time the invention was made to a person having ordinary skill in the art
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`to which said subject matter pertains.” 35 U.S.C. § 103(a).
`
`In KSR Int’l Co. v. Teleflex Inc., the U.S. Supreme Court noted that the obviousness
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`analysis must also allow for consideration of “the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” 550 U.S. 398, 418 (2007). The U.S. Supreme Court
`
`mandated that the obviousness analysis allow for “common sense” and “ordinary creativity”
`
`without necessarily requiring “precise teachings directed to the specific subject matter of the
`
`challenged claim[s].” Id. According to the U.S. Supreme Court, “[t]he combination of familiar
`
`elements according to known methods is likely to be obvious when it does no more than yield
`
`predictable results.” Id. at 416. The U.S. Supreme Court also pointed out that “common sense
`
`directs one to look with care at a patent application that claims as innovation the combination of
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`two known devices according to their established functions, [and] it can be important to identify a
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`reason that would have prompted a person of ordinary skill in the relevant field to combine the
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`elements in the way the claimed new invention does.” Id. at 418.
`
`To the extent that applicable law requires evidence of motivation to combine, motivation
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`exists to combine the references included in these Invalidity Contentions with each other.
`
`Generally, motivation to combine any of these references with others exists within the references
`
`themselves, as well as within the knowledge of those of ordinary skill in the art at the relevant
`
`time. Apple further contends that motivation to combine exists for all of the following categories
`
`of references:
`
`• References which describe the same project or system;
`
`• References written by or created by the same author(s) or inventor(s) regarding the
`same or related subject matter;
`
`• References which specifically incorporate or refer to the teachings of another
`reference; and
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`EX2006, Page 6
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`• References addressing the same problem or seeking to reach the same objective—
`e.g., creating user or device identifiers in order to authorize software upgrades.
`
`Appendix A provides exemplary citations for specific motivations to combine particular
`
`references or particular classes, groups, or types of references.
`
`As set forth in Exhibits A1–D2, the asserted claims of the Asserted Patents are obvious
`
`over (a) the individual references described therein, taken alone; (b) the individual references
`
`described therein, in view of the background knowledge held by a person having ordinary skill in
`
`the art; and (c) the combinations of references disclosed therein. Apple may rely upon a subset of
`
`the references or all of the references depending upon the Court’s claim construction and Apple’s
`
`further investigation. Apple’s contentions that the references in Exhibits A1–D2, respectively, in
`
`the disclosed combinations, render the asserted claims of the Asserted Patents obvious under
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`35 U.S.C. § 103 are in no way an admission or suggestion that each reference does not
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`independently anticipate the asserted claims under 35 U.S.C. § 102.
`
`III. CHARTS SETTING FORTH APPLE’S THEORIES REGARDING
`ANTICIPATION AND OBVIOUSNESS OF THE ASSERTED PATENTS
`
`As set forth above, each of the asserted claims of the Asserted Patents is anticipated by
`
`and/or obvious in view of one or more of items of prior art identified above. Apple has attached
`
`charts identifying the prior art that it contends anticipates and/or renders obvious the asserted
`
`claims of the Asserted Patents as follows:
`
`• Exhibits A1–A6 provide Apple’s theories regarding how the references
`
`illustrated above anticipate or render obvious all asserted claims of the ’990
`
`Patent;
`
`• Exhibits B1–B6 provide Apple’s theories regarding how the references
`
`illustrated above anticipate or render obvious all asserted claims of the ’866
`
`Patent;
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`EX2006, Page 7
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`

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`• Exhibits C1–C2 provide Apple’s theories regarding how the references
`
`illustrated above anticipate or render obvious all asserted claims of the ’223
`
`Patent;
`
`• Exhibits D1–D2 provide Apple’s theories regarding how the references
`
`illustrated above anticipate or render obvious all asserted claims of the ’648
`
`Patent; and
`
`• Appendix A provides information about combinations of prior art references
`
`that render obvious certain limitations or elements present in the asserted claims
`
`of the Asserted Patents, as well as motivations to make the combinations in
`
`question.
`
`Further still, the claims of the Asserted Patents contain multiple variations of the same
`
`elements, arranged in different groupings and permutations. Therefore, a reference or combination
`
`of references that renders obvious claims of one Asserted Patent also renders obvious claims of
`
`other Asserted Patents that include all, a subset, or a related set of limitations. By way of example,
`
`Exhibits A1–A6 and B1–B6 also provide theories regarding how the references illustrated therein
`
`anticipate or render obvious all asserted claims of the ’648 Patent; and Exhibits A1, A2, A4–A6,
`
`B1, B2, B4–B6, and D2 also provide theories regarding how the references illustrated therein
`
`anticipate or render obvious all asserted claims of the ’223 Patent.
`
`The Court has not yet construed the asserted claims and, thus, has not determined whether
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`the preambles of any of these claims are limiting. Apple’s statements herein should not be
`
`construed as taking a position as to whether the claim preambles are limiting. Apple reserves the
`
`right to take such a position at a later time, such as during claim construction. For the sake of
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`EX2006, Page 8
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`completeness, however, where asserted claims include substantive limitations within their
`
`preambles, Apple has addressed the preambles in its Invalidity Charts.
`
`Each chart identifies by citation the disclosures within the prior art references that teach
`
`the relevant claim elements, limitations, and/or rationale supporting the combinations. While
`
`Apple has identified citations in the references for the claim limitations, each and every disclosure
`
`of the same limitation in the same reference is not necessarily identified. In an effort to focus the
`
`issues, Apple cites only the portions of the references that it presently deems most relevant, even
`
`when a reference may contain additional support for or disclosure of a particular claim element.
`
`Where Apple cites a particular figure in a prior art reference, the citation should be
`
`understood to encompass any text referring or relating to that figure, in addition to the figure itself.
`
`Conversely, where a cited portion of text refers to a figure, the citation should be understood to
`
`include the figure as well.
`
`Persons of ordinary skill in the art read a prior art reference as a whole, and in the context
`
`of other publications and literature. Apple may rely on portions of a charted reference that are not
`
`specifically cited at a later time to explain, clarify, or support its contentions regarding the
`
`disclosures of that reference. Apple may rely on portions of the prior art references that are not
`
`specifically cited, other publications, and expert testimony to provide context, and as aids to
`
`understanding and interpreting the portions of references that are cited. Apple may also rely on
`
`portions of the prior art references that are not specifically cited, other publications, and the
`
`testimony of experts to establish that a person of ordinary skill in the art would have been
`
`motivated to modify or combine certain of the cited references so as to render the claims obvious.
`
`In addition, as set forth below, Apple contends that certain limitations of the asserted claims
`
`either are indefinite or are not enabled by any disclosure in the Asserted Patents. Apple’s citations
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`EX2006, Page 9
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`to portions of a prior art reference as disclosing a claim limitation for obviousness purposes is not
`
`a concession that the limitation, as received in any of the Asserted Patents, is definite. In some
`
`cases, Apple’s citations with respect to a limitation that Apple has elsewhere contended is
`
`indefinite identify prior art disclosures whose scope the parties do not dispute fall within the claim
`
`or would fall within the claim under any plausible interpretation thereof; the term may still be
`
`indefinite, however, because a person of skill would not be able to understand with reasonable
`
`certainty the term’s outer bounds. In other cases, Apple’s citations to prior art disclosures with
`
`respect to a limitation that Apple has elsewhere contended is indefinite are made based on SMR’s
`
`apparent interpretation of the scope of the claim if it is not indefinite, with which Apple disagrees.
`
`Further, Apple’s citations to certain portions of a prior art reference as disclosing a claim
`
`limitation for obviousness purposes is not a concession that a disclosure in the ’990, ’866, ’223, or
`
`’648 Patents with an equivalent level of detail did or would suffice to enable that element to a
`
`person of ordinary skill in the art. As an initial matter, a reference that anticipates the asserted
`
`claims of any of the ’990, ’866, ’223, or ’648 Patents is presumed to be enabled regardless of
`
`whether an equivalent disclosure in the asserted patent would have qualified as enabling. Further,
`
`most of the prior art references cited by Apple provide a more detailed disclosure than is present
`
`in the Asserted Patents, and, therefore, such references are enabling while the disclosures of
`
`Asserted Patents are not. For the remaining references, the citations in Exhibits A1–D2 show that,
`
`to the extent SMR contends that the disclosures of the Asserted Patents are enabling, the
`
`disclosures of the prior art are equally or more detailed and are therefore enabling as well.
`
`IV.
`
`INELIGIBLE SUBJECT MATTER
`
`The asserted claims of the Asserted Patents are each directed to patent-ineligible subject
`
`matter because each such claim is directed to an abstract idea and does not contain an inventive
`
`concept that amounts to substantially more than a claim directed to the abstract idea itself. The
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`EX2006, Page 10
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`claims are thus invalid under 35 U.S.C. § 101 and the two-step test set forth in Alice Corp. v. CLS
`
`Bank International, 573 U.S. 208, 217–18 (2014).
`
`At Alice step one, the asserted claims of the Asserted Patents are generally directed to the
`
`abstract idea of identifying available recipients for routing media, alone or in combination with the
`
`further abstract idea of routing media to the identified recipients in some manner. The ’223 and
`
`’648 Patents recite nothing more than receiving media content, like a phone call, at a mobile device
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`and then identifying available devices nearby to route the media to. The additional limitations that
`
`the ’990 and ’866 Patents’ claims add to this concept, such as transforming or cloning media before
`
`routing it, do nothing to move the claims beyond this general abstract idea. The Federal Circuit
`
`has repeatedly held claims about directing streams of audio or video data to a selected recipient to
`
`be abstract. See, e.g., Two-Way Media v. Comcast Cable Communications, 874 F.3d 1329 (Fed.
`
`Cir. 2017) (abstract claims required “functional results of ‘converting,’ ‘routing,’ [and]
`
`‘controlling,’” but did “not sufficiently describe how to achieve these results in a non-abstract
`
`way”); Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016)
`
`(“the concept of delivering user-selected media content to portable devices is an abstract idea”).
`
`District courts have also found claims directed to receiving audio or video streams and routing
`
`them to compatible recipients to be abstract. 24/7 Customer, Inc. v. LivePerson, Inc., No. 15-cv-
`
`02897-JST, 2017 WL 2311272, at *6 (N.D. Cal. May 25, 2017) (invalidating claims about “routing
`
`a call to ‘the best matched agent’” because “any potential solution . . . would involve” generic
`
`functions of “identifying the caller’s mode of communication and routing the call to an agent who
`
`uses the same form of communication”).
`
`Further underscoring their abstractness, the asserted claims are analogous to a longstanding
`
`practice in the physical world. Specifically, SMR’s claims are analogous to a manager receiving a
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`EX2006, Page 11
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`customer’s call and identifying which of her employees is in the office and is available and able to
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`assist the customer. The manager either personally transfers the customer’s call to the chosen
`
`employee (or a conference room with multiple employees) or asks a receptionist to help do so.
`
`The Asserted Patents fare no better at Alice step two. Beyond the abstract idea of
`
`identifying available recipients for routing media, none of the claims recite any element or
`
`combination of elements beyond “well-known, routine, conventional activities previously known
`
`to the industry.” Alice, 573 U.S. at 225 (quotation omitted). Rather, the claims recite only
`
`conventional elements, such as “mobile device[s],” that perform routine functions, such as
`
`“wirelessly communicating information” and “receiving” media. But adding “conventional steps,
`
`specified at a high level of generality,” to an abstract idea does not make it patentable. Alice, 573
`
`U.S. at 222. Not only do the asserted claims recite conventional components, but they combine
`
`them in a conventional way. Identifying available recipients before signaling them or routing
`
`media to them is a conventional order of steps for routing a phone call or media as shown by the
`
`longstanding practice of routing calls between colleagues in an office. Moreover, the Federal
`
`Circuit has found this order of steps to be conventional. Two-Way Media, 874 F.3d at 1339 (finding
`
`“first processing the data, then routing it” to be a “conventional ordering of steps”). Because the
`
`claims fail both steps of the Alice test, they are patent-ineligible and thus invalid under § 101.
`
`Further details regarding Apple’s defense relating to the unpatentability of the asserted
`
`claims of the Asserted Patents may be found in Apple’s Motion to Dismiss Pursuant to Fed. R.
`
`Civ. P. 12(b)(6) and 35 U.S.C. § 101 (ECF. No. 21) and its Reply in support of that motion (ECF.
`
`No. 23), which Apple incorporates herein by reference. While Apple’s Motion to Dismiss is
`
`directed specifically to the ’223 and ’648 Patents, the ’990 and ’866 Patents are directed to the
`
`same basic abstract idea, and the arguments in the Motion to Dismiss apply to them as well.
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`EX2006, Page 12
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`V.
`
`INDEFINITENESS
`
`The asserted claims of the Asserted Patents are invalid under 35 U.S.C. § 112 as indefinite
`
`because they do not apprise, with reasonable certainty, a person of ordinary skill in the art at the
`
`time of the claimed invention of the scope of the claims. For completeness, in the Invalidity Charts,
`
`Apple has attempted to identify the disclosures that most closely correspond to SMR’s apparent
`
`reading of those elements of the asserted claims that Apple contends are indefinite. Apple’s
`
`identification of these disclosures corresponding to these limitations reflects Apple’s best efforts
`
`to ascertain what SMR asserts that these limitations could possibly mean. This identification is not
`
`an admission that these elements are definite or that their metes and bounds could reasonably have
`
`been ascertained by a person of ordinary skill in the art.
`
`The asserted claims of the ’990 Patent are invalid as indefinite because they contain at least
`
`the following limitations:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`“an announcer device . . .”;
`
`“associated with said mobile communication device”;
`
`“surrounding equipment”;
`
`“thereby to enable receipt of rerouted data from said surrounding equipment”;
`
`“a scout device . . .”;
`
`“compatible equipment in the vicinity”;
`
`“thereby to reroute data from said mobile communication device to a selected one
`of said surrounding equipment”;
`
`“reroute data” / “rerouting”;
`
`“a media transformer, associated with said scout device, for transforming media
`into a form that accords with said determined media type requirements . . .”;
`
`“a plurality of types correspond[ing] to said media type requirements”;
`
`“allowing a user to select one of said media type requirements for transforming”;
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`EX2006, Page 13
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`• “a media cloner, associated with said media transformer, for making multiple
`copies of a single incoming data stream . . .”;
`
`• “. . . operable to transmit at least status information to respective surroundings”;
`and
`
`• “a cellular telephone comprising the apparatus of claim 1.”
`
`The asserted claims of the ’866 Patent are invalid as indefinite because they contain at least
`
`the following limitations:
`
`• “an announcer device . . .”;
`
`• “thereby to enable receipt of rerouted data from said surrounding media handling
`devices”;
`
`• “a scout device . . .”;
`
`• “thereby to reroute streaming data between said streaming device and a selected
`one of said surrounding media handling devices”;
`
`• “reroute data” / “rerouting”;
`
`• “a media transformer, configured to transform media into a form that accords with
`respective determined media type requirements . . .”;
`
`• “wherein there are a plurality of said types”;
`
`• “. . . there being a plurality of said media type requirements”;
`
`• “allowing a user to select one of said media type requirements for transforming”;
`and
`
`• “a media cloner, associated with said media transformer, for making multiple
`copies of a single incoming data stream, thereby to enable said apparatus to redirect
`said single incoming data stream to a plurality of locations, at least some of said
`multiple copies being transformed via said media transformer.”
`
`The asserted claims of the ’223 Patent are invalid as indefinite because they contain at least the
`
`following limitations:
`
`• “a media data stream transmitted according to a streaming protocol”;
`
`• “a plurality of devices, identified as compatible to handle said media content”;
`
`EX2006, Page 14
`
`

`

`• “wirelessly announce an availability for accepting a routed media via said local
`wireless communication network”;
`
`• “said selected compatible device”;
`
`• “. . . said selecting comprises carrying out a selection between devices found to be
`available, based on a predetermined user profile”;
`
`• “transmitting said media content to a plurality of copies”;
`
`• “a form that accords with a media type requirement of said selected device”;
`
`• “before said causing said media data stream is constantly received and presented .
`. . before said scanning is performed”; and
`
`• “a scouting detector adapted to . . . .”
`
`The asserted claims of the ’648 Patent are invalid as indefinite because they contain at least the
`
`following limitations:
`
`• “available devices compatible to handle the media content”;
`
`• “an intermediate routing device”;
`
`• “indirectly routing messages or media content”;
`
`• “the signaling received from the one or more device”; and
`
`• “setting up a wireless communication link between the at least one of the one or more
`available devices.”
`
`VI.
`
`LACK OF ENABLEMENT
`
`The asserted claims of the Asserted Patents that are set forth below are invalid under 35
`
`U.S.C. § 112 ¶ 1 because the specifications do not enable a person of ordinary skill in the art to
`
`practice the claims without undue experimentation. In particular, the specifications of the Asserted
`
`Patents do not enable the full scope that SMR has asserted those claims to have in its Infringement
`
`Contentions.
`
`The asserted claims of the ’990 Patent are invalid for lack of enablement because they
`
`contain at least the following limitations:
`
`EX2006, Page 15
`
`

`

`• “a mobile communication device comprising . . . an announcer device associated
`with said mobile communication device, and configured for indicating to
`surrounding equipment that said mobile communication device is available to
`receive rerouting, thereby to enable receipt of rerouted data from said surrounding
`equipment”;
`
`• “a mobile communication device comprising . . . a scout device . . . configured for
`scanning surroundings . . . to identify and determine availability of compatible
`equipment in the vicinity, thereby to reroute data from said mobile communication
`device to a selected one of said surrounding equipment, wherein said rerouting
`comprises setting up a bidirectional communication link between said mobile
`communication device and said selected surrounding equipment . . . said
`bidirectional link carrying streaming data over both directions of said first link
`direction and said second link direction”;
`
`• “ a mobile communication device comprising . . . a media transformer, associated
`with said scout device, for transforming media into a form that accords with said
`determined media type requirements”;
`
`• “a mobile communication device comprising . . . a media cloner, associated with
`said media transformer, for making multiple copies of a single incoming data
`stream”; and
`
`• “a cellular telephone comprising the apparatus of claim 1.”
`
`The asserted claims of the ’866 Patent are invalid for lack of enablement because they
`
`contain at least the following limitations:
`
`• “[an] apparatus being mobile and comprising . . . an announcer device configured
`to indicate to surrounding media handling devices that said streaming device is
`available to receive streaming data, thereby to enable receipt of rerouted data from
`said surrounding media handling devices”;
`
`• “[an] apparatus being mobile and comprising . . . a scout device configured to scan
`surroundings of said streaming device to identify surrounding media handling
`devices as being compatible to handle given media . . . thereby to reroute streaming
`data between said streaming device and a selected one of said surrounding media
`handling devices . . . said apparatus configured to set up a bidirectional wireless
`communication link between said streaming device and a respective one of said
`media handling devices, said bidirectional link carrying streaming data over either
`direction as required of said bidirectional link;”
`
`• “[an] apparatus being mobile and comprising . . . a media transformer, configured
`to transform media into forms that accord with respective determined media type
`requirements”; and
`
`EX2006, Page 16
`
`

`

`• “[an] apparatus being mobile and comprising . . . a media cloner, associated with
`said media transformer, for making multiple copies of a single incoming data
`stream, thereby to enable said apparatus to redirect said single incoming data stream
`to a plurality of locations, at least some of said multiple copies being transformed
`via said media transformer.”
`
`The asserted claims of the ’223 Patent are invalid for lack of enablement because they
`
`contain at least the following limitations:
`
`•
`
`. . . “scan[ning] said local wireless communication network using said mobile
`device to identify a plurality of devices, identified as compatible to handle said
`media content, said plurality of devices are wirelessly connected to said local
`wireless communication network and wirelessly announce an availability for
`accepting a routed media via said local wireless communication network”;
`
`• “selecting, based on a user interaction made with said mobile device and while said
`media data stream is streamed to said mobile device from said external source
`according to said streaming protocol, one of said plurality of devices;”
`
`• “transmitting said media content to a plurality of copies so as to perform said
`routing to a number of said plurality of devices . . . wherein said selecting comprises
`carrying out a selection between devices found to be available, based on a
`predetermined user profile”;
`
`• “a scouting detector adapted to scan said local wireless communication network to
`identify a plurality of devices, identified as compati