Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 1 of 12 PageID 147
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
`v.
`
`
`SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Case No. 2:12-CV-2825 JPM tmp
`
`JURY DEMAND
`
`INITIAL INFRINGEMENT CONTENTIONS AND DOCUMENT PRODUCTION
`ACCOMPANYING INITIAL INFRINGEMENT CONTENTIONS
`
`Plaintiff B.E. Technology, L.L.C. (“Plaintiff” or “B.E.”) hereby submits to Defendant
`
`Samsung Electronics America, Inc. (“Defendant” or “Samsung Electronics”) its Initial
`
`Infringement Contentions and Document Production Accompanying Initial Infringement
`
`Contentions pursuant to Local Patent Rules 3.1 and 3.2.
`
`Plaintiff makes these contentions based upon information reasonably available to it as of
`
`this date. Plaintiff has not completed its preparation of this matter for trial and discovery has not
`
`yet begun. Because Plaintiff’s investigations are ongoing and discovery is not yet complete,
`
`Plaintiff reserves the right to amend, modify, supplement, or narrow any portion of its asserted
`
`claims and infringement contentions, including, but not limited to, the identification of the claims
`
`infringed by Defendant and of the products and/or services accused of infringement. In
`
`particular, B.E. reserves the right to supplement its contentions as necessary and in accordance
`
`with this Court’s Local Rules in light of Defendant’s future document production, interrogatory
`
`answers, admissions, disclosures, fact witness testimony expert witness evidence, additional
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 2 of 12 PageID 148
`
`discovery, future rulings from the Court, any amendments to the pleadings, any additional items
`
`of evidence, and/or for any other reason authorized by statute, rule, or applicable case law. B.E.
`
`similarly reserves the right to supplement its Initial Infringement Contentions to assert
`
`infringement of claims currently not addressed. B.E. further reserves the right to supplement its
`
`Initial Infringement Contentions and the associated infringement claim charts after Defendant
`
`identifies which claim elements it contends are not present in Defendant’s products and/or
`
`services, and the bases for any such contentions.
`
`I.
`
`L.P.R 3.1: INITIAL INFRINGEMENT CONTENTIONS.
`
`A.
`
`Identification Of Asserted Claims.
`
`Based on the information presently known and reasonably available to Plaintiff, Plaintiff
`
`identifies Claims 2-3 of U.S. Pat. No. 6,771,290 (“the ’290 Patent”) to be the Asserted Claims.
`
`These contentions of Asserted Claims are, at this stage in the proceedings, necessarily limited in
`
`the sense that Plaintiff has had limited access to information concerning the structure and
`
`function of Defendant’s products and/or services. Plaintiff therefore reserves the right to
`
`supplement these contentions as it obtains additional information concerning Defendant’s
`
`products and/or services over the course of discovery.
`
`The applicable statutory subsections of 35 U.S.C. § 271 for each of the Asserted Claims
`
`are as follows:
`
`Claims 2-3 of the ’290 Patent: 35 U.S.C. §§ 271(a).
`
`Plaintiff reserves the right to amend, modify, supplement, or narrow these contentions
`
`pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`B.
`
`Identification Of Accused Instrumentalities.
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. presently accuses at least (but not limited to) the following of
`
`- 2 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 3 of 12 PageID 149
`
`Defendant’s products and/or services of infringing the Asserted Claims of the ’290 Patent:
`
`Google-Samsung Galaxy Nexus, Google/Samsung Nexus S, Samsung Acclaim, Samsung
`
`Admire, Samsung ATIV Smart PC (XE500T1C), Samsung ATIV Smart PC 500T, Samsung
`
`ATIV Smart PC Pro 700T, Samsung Captivate Glide, Samsung Captivate, Samsung Conquer
`
`4G, Samsung Continuum i400, Samsung Dart, Samsung DoubleTime, Samsung Droid Charge,
`
`Samsung Epic 4G, Samsung Exhibit 4G, Samsung Fascinate, Samsung Focus 2, Samsung Focus
`
`Flash, Samsung Focus S, Samsung Focus, Samsung Galaxy Ace, Samsung Galaxy Admire 4G,
`
`Samsung Galaxy Appeal, Samsung Galaxy Attain 4G, Samsung Galaxy Axiom, Samsung
`
`Galaxy Cameras, Samsung Galaxy Exhibit 4G, Samsung Galaxy Exhilarate, Samsung Galaxy
`
`Express, Samsung Galaxy Fit, Samsung Galaxy Gio, Samsung Galaxy Indulge, Samsung Galaxy
`
`Mini, Samsung Galaxy Note 2, Samsung Galaxy Note 10.1 (Wi-Fi), Samsung Galaxy Note 10.1,
`
`Samsung Galaxy Note, Samsung Galaxy Player 3.6, Samsung Galaxy Player 4.0, Samsung
`
`Galaxy Player 4.2, Samsung Galaxy Player 5.0, Samsung Galaxy Pocket Duos, Samsung Galaxy
`
`Pocket, Samsung Galaxy Precedent, Samsung Galaxy Prevail, Samsung Galaxy Proclaim,
`
`Samsung Galaxy Reverb, Samsung Galaxy Rugby Pro, Samsung Galaxy Rugby, Samsung
`
`Galaxy S 4G, Samsung Galaxy S Advance, Samsung Galaxy S Aviator, Samsung Galaxy S
`
`Blaze 4G, Samsung Galaxy S2 4G, Samsung Galaxy S2, Samsung Galaxy S3, Samsung Galaxy
`
`S Showcase, Samsung Galaxy Stellar, Samsung Galaxy Stratosphere II, Samsung Galaxy Tab 2
`
`7.0 (Wi-Fi), Samsung Galaxy Tab 2 7.0, Samsung Galaxy Tab 2 10.1 (Wi-Fi), Samsung Galaxy
`
`Tab 2 10.1, Samsung Galaxy Tab 7.0 (Wi-Fi), Samsung Galaxy Tab 7.0 Plus (Wi-Fi), Samsung
`
`Galaxy Tab 7.0 Plus, Samsung Galaxy Tab 7.0, Samsung Galaxy Tab 7.7 (Wi-Fi), Samsung
`
`Galaxy Tab 7.7, Samsung Galaxy Tab 8.9 (3G), Samsung Galaxy Tab 8.9 (Wi-Fi), Samsung
`
`Galaxy Tab 10.1 (Wi-Fi), Samsung Galaxy Tab 10.1, Samsung Galaxy Victory, Samsung Gem,
`
`- 3 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 4 of 12 PageID 150
`
`Samsung Gravity, Samsung Illusion, Samsung Indulge, Samsung Infuse 4G, Samsung Intercept,
`
`Samsung LCD 550 Series Smart TV 40”, Samsung LED 5300 Series Smart TV 32”, Samsung
`
`LED 5300 Series Smart TV 40”, Samsung Galaxy Metrix 4G, Samsung LED 5300 Series Smart
`
`TV 46”, Samsung LED 5300 Series Smart TV 50”, Samsung LED 6100 Series Smart TV 40”,
`
`Samsung LED 6100 Series Smart TV 46”, Samsung LED 6100 Series Smart TV 50”, Samsung
`
`LED 6100 Series Smart TV 55”, Samsung LED 6100 Series Smart TV 60”, Samsung LED 6150
`
`Series Smart TV 40”, Samsung LED 6150 Series Smart TV 46”, Samsung LED 6150 Series
`
`Smart TV 50”, Samsung LED 6150 Series Smart TV 55”, Samsung LED 6150 Series Smart TV
`
`60”, Samsung LED 6500 Series Smart TV 32”, Samsung LED 6500 Series Smart TV 40”,
`
`Samsung LED 6500 Series Smart TV 46”, Samsung LED 6500 Series Smart TV 50”, Samsung
`
`LED 6500 Series Smart TV 55”, Samsung LED 6500 Series Smart TV 60”, Samsung LED 6500
`
`Series Smart TV 65”, Samsung LED 6550 Series Smart TV 55”, Samsung LED 6550 Series
`
`Smart TV 65”, Samsung LED 6580 Series Smart TV 40”, Samsung LED 6580 Series Smart TV
`
`46”, Samsung LED 6580 Series Smart TV 50”, Samsung LED 6580 Series Smart TV 55”,
`
`Samsung LED 6900 Series Smart TV 50”, Samsung LED 6900 Series Smart TV 60”, Samsung
`
`LED 7100 Series Smart TV 46”, Samsung LED 7100 Series Smart TV 55”, Samsung LED 7100
`
`Series Smart TV 60”, Samsung LED 7150 Series Smart TV 55”, Samsung LED 7150 Series
`
`Smart TV 60”, Samsung LED 7500 Series Smart TV 60”, Samsung LED 7550 Series Smart TV
`
`55”, Samsung LED 8000 Series Smart TV 46”, Samsung LED 8000 Series Smart TV 55”,
`
`Samsung LED 8000 Series Smart TV 60”, Samsung LED 8000 Series Smart TV 65”, Samsung
`
`LED 9000 Series Smart TV 75”, Samsung Mesmerize, Samsung Plasma 550 Series Smart TV
`
`51”, Samsung Plasma 550 Series Smart TV 60”, Samsung Plasma 550 Series Smart TV 64”,
`
`Samsung Plasma 6500 Series Smart TV 51”, Samsung Plasma 6500 Series Smart TV 60”,
`
`- 4 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 5 of 12 PageID 151
`
`Samsung Plasma 7000 Series Smart TV 51”, Samsung Plasma 7000 Series Smart TV 60”,
`
`Samsung Plasma 7000 Series Smart TV 64”, Samsung Plasma 8000 Series Smart TV 51”,
`
`Samsung Plasma 8000 Series Smart TV 60”, Samsung Plasma 8000 Series Smart TV 64”,
`
`Samsung Replenish, Samsung Repp, Samsung Series 3 15.6” Notebook, Samsung Series 3 17.3”
`
`Notebook, Samsung Series 5 13.3” Notebook, Samsung Series 5 14” Notebook, Samsung Series
`
`5 15.6” Notebook, Samsung Series 5 All in One PC, Samsung Series 7 17.3” Notebook,
`
`Samsung Series 7 All in One PC, Samsung Series 7 Gamer, Samsung Series 9 13.3” Premium
`
`Ultrabook, Samsung Series 9 15” Premium Ultrabook, Samsung Showcase, Samsung Sidekick
`
`4G, Samsung Smart Blu-ray Player BD-E5700, Samsung Smart Blu-ray Player BD-E5900,
`
`Samsung Smart Blu-ray Player BD-E6500, Samsung Smart Blu-ray Player BD-EM57C,
`
`Samsung Smart Blu-ray Player BD-EM59C, Samsung Smart Blu-ray Player BD-ES6000,
`
`Samsung Smart Blu-ray Player BD-D5300, Samsung Smart Blu-ray Player BD-D6500, Samsung
`
`Smart Blu-ray Player BD-E5300, Samsung Smart Blu-ray Player BD-E5400, Samsung Smart
`
`Blu-ray Player BD-E5500, Samsung Smart Blu-ray Player BD-EM53C, Samsung Smart Home
`
`Theater HT-E3500, Samsung Smart Home Theater HT-E4500, Samsung Smart Home Theater
`
`HT-E5400, Samsung Smart Home Theater HT-E5500W, Samsung Smart Home Theater HT-
`
`E6500W, Samsung Smart Home Theater HT-E6730W, Samsung Smart Home Theater HT-
`
`EM45C, Samsung Smart Home Theater HT-EM53C, Samsung Stratosphere, Samsung Transfix,
`
`Samsung Transform Ultra, Samsung Transform, Samsung Vibrant, Samsung Vitality, Google-
`
`Samsung Nexus 10, any other products and/or services identified in the attached Appendix A,
`
`and all reasonably similar products and/or services (“Accused Instrumentalities”). In addition,
`
`B.E. presently accuses all of Defendant’s products and/or services with the following programs,
`
`features, software, firmware, or applications of infringing the Asserted Claims of the ’290 patent:
`
`- 5 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 6 of 12 PageID 152
`
`Android Market, Google Play (including Play Store, Play Music, Play Books, Play Magazines,
`
`and Play Movies & TV), YouTube, Samsung Apps, Smart Hub, Media Hub, Music Hub, Netflix,
`
`Hulu Plus, Amazon (Prime) Instant Video, Windows Store, Xbox Video, Xbox Music, Xbox
`
`Games, Windows Phone Marketplace, Windows Phone Store, Nook Store, Kindle Store, and
`
`Kno Textbooks (also, “Accused Instrumentalities”).
`
`Based on the information presently known to B.E., B.E. contends that the Asserted
`
`Claims of the ’290 Patent are infringed by the Accused Instrumentalities. B.E. believes that
`
`discovery will reveal additional Accused Instrumentalities, products, and/or services that infringe
`
`the’290 Patent, and B.E. explicitly reserves the right to amend, modify, supplement, or narrow its
`
`contentions to identify additional Accused Instrumentalities, products, and/or services pursuant
`
`to Local Patent Rule 3.11.
`
`C.
`
`Claim Chart Identifying Claim Elements Present In Accused
`Instrumentalities.
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. provides the attached Appendix A (which explains how the
`
`Accused Instrumentalities and other products/services infringe each of the Asserted Claims of
`
`the ’290 Patent). B.E.’s attached Appendices are incorporated by reference as if fully set forth
`
`herein. The infringement contention charts appended hereto are exemplary and not limiting, and
`
`address the Asserted Claims without the benefit of full discovery. Any citations included in the
`
`infringement contention charts are exemplary only, and should not be construed to be limiting.
`
`In the attached Appendices containing B.E.’s infringement contention charts, B.E. has
`
`subdivided each Asserted Claim to better explain where each claim element may be found with
`
`the respective Accused Instrumentalities and other products/services. The subdivisions in the
`
`appended infringement contention charts should not be taken as an indication of the boundaries
`
`- 6 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 7 of 12 PageID 153
`
`of claim elements with respect to doctrine of equivalents, or any other issue. Additionally, the
`
`Accused Instrumentalities and Defendant’s other products/services may infringe the Asserted
`
`Claims in multiple ways. B.E. reserves the right to provide an alternative claim mapping or
`
`infringement contention.
`
`B.E. reserves the right to amend, modify, supplement, or narrow these contentions
`
`pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`D.
`
`Identification Of Direct Infringement Underlying Allegations Of Indirect
`Infringement.
`
`B.E. contends that the Asserted Claims of the ’290 Patent are directly infringed by
`
`Defendant. Defendant, without B.E.’s authority, directly infringes the Asserted Claims of the
`
`’290 Patent under 35 U.S.C. § 271(a) by making, using, offering to sell, or sell its Accused
`
`Instrumentalities and other products/services within the United States, or imports into the United
`
`States its Accused Instrumentalities and other products/services.
`
`B.E. reserves the right to amend, modify, supplement, or narrow these contentions
`
`pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`E.
`
`Identification Of Elements Present Literally And Present Under The
`Doctrine Of Equivalents.
`
`Based on the information presently available to B.E., B.E. contends that each Asserted
`
`Claim is literally met in the Accused Instrumentalities and/or other Defendant products/services.
`
`At present, B.E. knows of no elements of the Asserted Claims where the doctrine of equivalents
`
`would change the infringement analysis set forth in the attached infringement claim charts.
`
`Without the benefit of the Court’s claim construction, B.E. presently believes that Defendant’s
`
`Accused Instrumentalities and other products/services literally infringe the Asserted Claims of
`
`the ’290 Patent.
`
`- 7 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 8 of 12 PageID 154
`
`Regardless, B.E. also contends that each Asserted Claim is met in the Accused
`
`Instrumentalities and/or other Defendant products/services under the doctrine of equivalents.
`
`Specifically, to the extent a claim element is not met literally, it is met under the doctrine of
`
`equivalents because they perform substantially the same function, in substantially the same way,
`
`to achieve substantially the same result. To the extent that any differences are alleged to exist
`
`between the Asserted Claims and Defendant’s Accused Instrumentalities, products and/or
`
`services, such differences are insubstantial.
`
`Information regarding the formulations of the Accused Instrumentalities and Defendant’s
`
`products/services, and the processing conditions used to manufacture the Accused
`
`Instrumentalities and Defendant’s products/services, is either confidential or is not publically
`
`available. Following discovery regarding Defendant’s products/services, Accused
`
`Instrumentalities, and technical information relating to the Accused Instrumentalities and
`
`Defendant’s products/services, B.E. reserves the right to amend, modify, supplement, or narrow
`
`these contentions pursuant to Local Patent Rule 3.11 as discovery in this case proceeds.
`
`Moreover, because discovery has not yet commenced, B.E. reserves the right to further apply the
`
`doctrine of equivalents to each and every Asserted Claim element after full discovery from
`
`Defendant, or as appropriate in response to the Court’s legal determination of issues, including,
`
`without limitation, the construction of the Asserted Claims.
`
`Should Defendant contend that any element or limitation of the Asserted Claims are
`
`absent in an Accused Instrumentality and/or Defendant’s products/services, B.E. reserves the
`
`right to demonstrate that the allegedly missing element or limitation is present in the Accused
`
`Instrumentality and/or Defendant’s products/services under the doctrine of equivalents.
`
`- 8 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 9 of 12 PageID 155
`
`F.
`
`Identification Of Priority Date.
`
`The ’290 patent was filed on July 16, 1999, claiming priority from Continuation-in-Part
`
`of U.S. Patent Application No. 09/118,351, filed July 17, 1998, now U.S. Patent No. 6,141,010.
`
`Thus, the ’290 Patent and each asserted claim are entitled to a priority date of at least as early as
`
`July 17, 1998. B.E. reserves the right to present evidence that the ’290 Patent is entitled to an
`
`earlier priority date based on an earlier conception of the claimed inventions and an earlier
`
`diligent reduction to practice.
`
`G. Willful Infringement.
`
`Based on the information presently known to B.E., without the benefit of complete
`
`discovery from Defendant, B.E. contends that Defendant willfully infringed the ’290 Patent
`
`beginning no later than September 2012 when B.E. filed its Complaint for Patent Infringement
`
`against Defendant. Plaintiff believes that discovery will reveal that Defendant was aware of the
`
`’290 Patent long before September 2012, but Defendant nevertheless proceeded with its
`
`infringing conduct. At all times when Defendant was aware of the ’290 Patent, Defendant
`
`undertook no efforts to design its products/services around the ’290 Patent to avoid infringement
`
`despite Defendant’s knowledge and understanding that its products/services infringe these
`
`patents.
`
`As such, Defendant proceeded with the infringing conduct with knowledge of the ’290
`
`Patent. Moreover, Defendant proceeded in the face of an unjustifiably high risk that it was
`
`infringing the claims of valid and enforceable ’290 Patent.
`
`Moreover, Defendant cannot formulate a credible defense based on non-infringement.
`
`Because Defendant is very familiar with the formulations of the Accused Instrumentalities and
`
`its other products/services, as well as the method of manufacturing the Accused Instrumentalities
`
`and Defendant’s other products/services, Defendant is aware that each and every element of each
`
`- 9 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 10 of 12 PageID 156
`
`Asserted Claim of the ’290 Patent is present in the Accused Instrumentalities and Defendant’s
`
`other products/services. Defendant cannot articulate a convincing non-infringement argument.
`
`Given the facts and circumstances available prior to and during Defendant’s infringing
`
`actions, a reasonable person in Defendant’s position would have appreciated a high likelihood
`
`that acting in Defendant’s manner would infringe the ’290 Patent. Furthermore, Defendant knew
`
`or should have known of the unjustifiably high risk that it was infringing the ’290 Patent, which
`
`is valid and enforceable.
`
`II.
`
`L.P.R. 3.2: DOCUMENT PRODUCTION ACCOMPANYING INITIAL
`INFRINGEMENT CONTENTIONS.
`
`A.
`
`Disclosure, Transfer, Sale, Offers To Sell Claimed Invention.
`
`Based on the information presently known to B.E., B.E. is not aware of any responsive,
`
`relevant, non-privileged, non-immune documents that correspond to this category. B.E. reserves
`
`the right to supplement this disclosure if, and as, warranted.
`
`B.
`
`Conception And Reduction To Practice.
`
`Based on the information presently known to B.E., B.E. refers Defendant to the
`
`documents produced in conjunction with the service of this disclosure and identified by Bates
`
`production numbers BE00000001-BE00002165, BE00002779-BE00002870.
`
`C.
`
`File Histories.
`
`Based on the information presently known to B.E., B.E. refers Defendant to the file
`
`histories produced in conjunction with the service of this disclosure and identified by Bates
`
`production numbers BE00002166-BE00002778.
`
`- 10 -
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 11 of 12 PageID 157
`
`D.
`
`Ownership.
`
`Based on the information presently known to B.E., B.E. refers Defendant to the
`
`assignment records produced in conjunction with the service of this disclosure and identified by
`
`Bates production numbers BE00002871-BE00002873.
`
`
`
`Respectfully submitted,
`
`
`
`
`s/Craig R. Kaufman
`Robert E. Freitas (CA Bar No. 80948)
`Craig R. Kaufman (CA Bar No. 159458)
`James Lin (CA Bar No. 241472)
`Qudus B. Olaniran (CA Bar No. 267838)
`FREITAS TSENG & KAUFMAN LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`Facsimile: (650) 593-6301
`rfreitas@ftklaw.com
`ckaufman@ftklaw.com
`jlin@ftklaw.com
`qolaniran@ftklaw.com
`
`
`Richard M. Carter (TN B.P.R. #7285)
`Adam C. Simpson (TN B.P.R. #24705)
`MARTIN, TATE, MORROW & MARSTON, P.C.
`6410 Poplar Avenue, Suite 1000
`Memphis, TN 38119-4839
`Telephone: (901) 522-9000
`Facsimile: (901) 527-3746
`rcarter@martintate.com
`asimpson@martintate.com
`
`Attorneys for Plaintiff B.E. Technology, L.L.C.
`
`- 11 -
`
`Dated: January 7, 2013
`
`
`
`
`
`
`

`
`Case 2:12-cv-02825-JPM-tmp Document 31-4 Filed 01/22/13 Page 12 of 12 PageID 158
`
`CERTIFICATE OF SERVICE
`I hereby certify that on this 7th day of January, 2013, a copy of the foregoing was
`served upon the following counsel by email:
`
`Shepherd D. Tate
`Jonathan E. Nelson
`BASS, BERRY & SIMS, PLC
`100 Peabody Place, Suite 900
`Memphis, Tennessee 38103
`Telephone: (901) 543-5900
`Facsimile: (901) 543-5999
`state@bassberry.com
`jenelson@bassberry.com
`
`Counsel for Defendant SAMSUNG ELECTRONICS AMERICA, INC.
`
`s/ Elizabeth Kim
`Elizabeth Kim
`
`
`
`
`
`
`
`
`
`
`
`- 12 -