Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 1 of 34 PageID #: 9690
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`GESTURE TECHNOLOGY PARTNERS,
`LLC,
`
`Plaintiff
`
`
`v.
`HUAWEI DEVICE CO., LTD., AND
`HUAWEI DEVICE USA, INC.,
`
`
`Defendants.
`
`
`JURY TRIAL DEMANDED
`
`C.A. NO. 2:21-cv-00040-JRG
` LEAD CONSOLIDATED CASE
`
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Defendants.
`
`
`C.A. NO. 2:21-cv-00041-JRG
`
`
`
`[PROPOSED] JOINT PRETRIAL ORDER
`
`The Pretrial Conference is scheduled for January 31, 2022 at 9:00 a.m. in Marshall, Texas.
`
`Pursuant to the Sixth Amended Docket Control Order (Dkt. 155), Local Rule CV-16(b), and Rule
`
`16 of the Federal Rules of Civil Procedure, Gesture Technology Partners, LLC (“GTP”) and
`
`Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.’s (collectively,
`
`“Samsung”) submit this Joint Pretrial Order. Subject to the other rulings made at the Pretrial
`
`Conference, the Court enters this Order.
`
`A.
`
`COUNSEL FOR THE PARTIES
`
`Attorneys for Plaintiff GTP
`
`Fred I. Williams
`Texas State Bar No. 00794855
`Michael Simons
`Texas State Bar No. 24008042
`Robert Daniel Garza
`Texas State Bar No. 24097730
`Robert Rhodes
`
`
`
`1
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`

`

`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 2 of 34 PageID #: 9691
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`
`
`Texas State Bar No. 24116958
`WILLIAMS SIMONS & LANDIS PLLC
`327 Congress Ave., Suite 490
`Austin, TX 78701
`Tel: 512-543-1354
`fwilliams@wsltrial.com
`msimons@wsltrial.com
`dgarza@wsltrial.com
`rrhodes@wsltria.com
`
`Todd E. Landis
`State Bar No. 24030226
`WILLIAMS SIMONS & LANDIS PLLC
`2633 McKinney Ave., Suite 130 #366
`Dallas, TX 75204
`Tel: 512-543-1357
`tlandis@wsltrial.com
`
`John Wittenzellner
`Pennsylvania State Bar No. 308996
`WILLIAMS SIMONS & LANDIS PLLC
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`Tel: 512-543-1373
`johnw@wsltrial.com
`
`Kevin S. Kudlac
`Texas Bar No. 00790089
`Kudlac PLLC
`1916 Wimberly Lane
`Austin, TX 78735
`Tel: 512-656-5743
`kevin@kudlacIP.com
`
`Attorneys for Samsung
`
`Christopher W. Kennerly (TX Bar No. 00795077)
`chriskennerly@paulhastings.com
`Radhesh Devendran (pro hac vice)
`radheshdevendran@paulhastings.com
`Boris S. Lubarsky (pro hac vice)
`borislubarsky@paulhastings.com
`David M. Fox (pro hac vice)
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`
`
`
`2
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`

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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 3 of 34 PageID #: 9692
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`
`
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Allan M. Soobert
`allansoobert@paulhastings.com
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`Telephone: 202-551-1700
`Facsimile: 202-551-1705
`
`Elizabeth L. Brann
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Robert Laurenzi
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Melissa R. Smith (TX Bar No. 24001351)
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`STATEMENT OF JURISDICTION
`
`B.
`
`This Court has subject matter jurisdiction of the action under Title 28, U.S.C. §§ 1331,
`
`1338(a), because this action arises under the Patent Laws of the United States, 35 U.S.C. § 1 et
`
`seq. Subject matter jurisdiction, personal jurisdiction, and venue under 28 U.S.C. §§ 1391(b) and
`
`
`
`3
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`

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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 4 of 34 PageID #: 9693
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`
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`1400(b) are not disputed in this case with respect to GTP’s claims of infringement or Samsung’s
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`defenses thereto.
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`C.
`
`NATURE OF ACTION
`
`This is a case of alleged patent infringement. The case involves four United States Patents
`
`that have been asserted by GTP against Samsung: U.S. Patent No. 7,933,431 (“’431 Patent”),
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`8,194,924 (“’924 Patent”), 8,553,079 (“’079 Patent”), and 8,878,949 (“’949 Patent”) (collectively,
`
`“Patents-in-Suit”). GTP alleges that Samsung has directly infringed Claims 1, 2, 3, 6, 7, 8, 9, 11,
`
`12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 25, 26, 27, 28 and 30 of the ’431 Patent; Claims 1, 2, 3,
`
`4, 5, 6, 7, 10, 12 and 14 of the ’924 Patent; Claims 1, 2, 3, 4, 5, 6, 7, 9, 11, 14, 15, 19, 21, 22, 23,
`
`24, 25 and 30 the ’079 Patent; and Claims 13, 14, 16 and 18 of the ’949 Patent (the “Asserted
`
`Claims”).
`
`GTP alleges that Samsung infringed the Asserted Patents through their use of the following
`
`applications and/or features in conjunction with the associated hardware on Samsung’s cellular
`
`phones and tablets: Air Gestures, Palm Solutions, Iris Scan Unlock, Face ID Unlock, AR Emojis,
`
`and Smart Stay (the “Accused Features1”).GTP alleges that Samsung made, used, sold, or imported
`
`the following cellular phones and tablets to infringe the Asserted Patents: Galaxy S5, Galaxy S6,
`
`Galaxy S6 Edge, Galaxy Note 5, Galaxy S6 Active, Galaxy Tab A 8.0 (2015), Galaxy S7, Galaxy
`
`S7 Edge, Galaxy S7 Active, Galaxy Note 7, Galaxy Tab A 10.1 (2016), Galaxy S8, Galaxy S8+,
`
`Galaxy S8 Active, Galaxy Tab S3, Galaxy Tab A 8.0 (2017), Galaxy Tab Active, Galaxy S9,
`
`
`1 GTP objects to the use of the defined term “Accused Features.” GTP’s infringement theories
`from the outset of this litigation revolve around hardware. Samsung’s proposal interjects its
`noninfringement and/or invalidity theories into the jury instruction. GTP has not labeled anything
`in its infringement contentions as “Accused Features.” As GTP has previously made clear,
`including in response to Samsung’s Motion to dismiss, the term to “Accused Features” is not a
`defined term in the complaint. See Dkt. No. 1. In every other instance when referencing Samsung
`features, GTP uses the defined term “Features.” See Dkt. No. 1 at ¶¶ 26, 41, 56, and 71.
`
`
`
`4
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`

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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 5 of 34 PageID #: 9694
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`
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`Galaxy S9+, Galaxy Tab S4, Galaxy Tab A 10.5, Galaxy Note 9, Galaxy Tab A 8.0 (2019), Galaxy
`
`Tab A Kids 8.0 (2019), Galaxy Tab A 10.1 (2019), Galaxy S10, Galaxy S10+, Galaxy S10e,
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`Galaxy S10 5G, Galaxy (Z) Fold, Galaxy Tab S5e, and Galaxy S6 Edge+ (the “Accused
`
`Products”). GTP seeks monetary damages that are adequate to compensate it for Samsung’s
`
`alleged infringement, but in no event less than a reasonable royalty. GTP also seeks prejudgment
`
`and post-judgment interests and costs pursuant to 35 U.S.C. § 284, and attorney fees pursuant to
`
`35 U.S.C. § 285.
`
`Samsung denies that it has infringed any of the Asserted Claims. Samsung further contends
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`that the Asserted Claims are invalid under 35 U.S.C. §§ 101, 102, 103, 112, 2642 and/or 282, and
`
`also under the doctrine of double patenting. Samsung denies that GTP is entitled to any monetary
`
`relief whatsoever.
`
`D.
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`CONTENTIONS OF THE PARTIES
`
`a. GTP Statement of Contentions
`
`By providing these contentions, GTP does not concede that all of these issues are
`
`appropriate for trial. In addition, GTP does not waive any of its motions in limine.
`
`1.
`
`GTP contends that Samsung infringed the Asserted Claims, under 35 U.S.C. § 271,
`
`literally, by implementing the Accused Features on the Accused Products without authority or
`
`license from GTP.
`
`2.
`
`GTP is the owner of all rights, title and interest in and to the Asserted Patents and
`
`possesses all rights of recovery under the Asserted Patents.
`
`
`2 Reference to 35 U.S.C. § 264 for improper inventorship is meant to encompass pre-AIA 35
`U.S.C. § 112(f).
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`
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`5
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`

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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 6 of 34 PageID #: 9695
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`
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`3.
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`GTP contends that it has been damaged by Samsung’s conduct and seeks damages
`
`adequate to compensate for the infringement by Samsung, but in no event less than a reasonable
`
`royalty, together with prejudgment and post-judgment interest and costs as fixed by the Court.
`
`4.
`
`GTP contends that this case is exceptional and GTP is entitled to its costs, expenses,
`
`and reasonable attorney fees pursuant to 35 U.S.C. § 285.
`
`5.
`
`GTP contends that Samsung’s defenses and declaratory judgment claims are
`
`without merit.
`
`6.
`
`GTP contends that this case is not exceptional, and Samsung is not entitled to
`
`recover their attorney’s fees and costs in this action.
`
`7.
`
`8.
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`GTP contends that jurisdiction is proper in this Court.
`
`GTP contends that venue is proper in the United States District Court for the
`
`Eastern District of Texas.
`
`9.
`
`10.
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`GTP contends that the Accused Products are handheld devices
`
`GTP contends that the Accused Products include a light source that it is capable of
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`directly illuminating an object in the field of view of a camera.
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`b. Defendants’ Statement of Contentions
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`By providing these contentions, Samsung does not concede that all these issues are
`
`appropriate for trial; nor do the contentions below include every detail underlying each contention.
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`Samsung does not waive any of its pending motions, including its dispositive motions,
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`Daubert motions and motions to strike, any motions in limine, and any other already pending
`
`motions and future motions it may file.
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`
`
`6
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`

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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 7 of 34 PageID #: 9696
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`
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`1.
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`Samsung contends that it has not infringed any asserted valid and enforceable claim
`
`of the Patents-in-Suit under any theory of infringement, with regard to any of the Samsung mobile
`
`device products and related methods that GTP alleges infringed the Patents-in-Suit.
`
`2.
`
`GTP is not entitled to argue that any elements or limitations of the Asserted Claims
`
`are met under the Doctrine of Equivalents.
`
`3.
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`Samsung contends that the Asserted Claims are invalid for, inter alia, failure to
`
`comply with one or more of the requirements of 35 U.S.C. §§ 101, 102, 103, 112, 264 and/or 282.
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`4.
`
`Samsung contends that the priority dates of the Patents-in-Suit are the following:
`
`June 15, 2004 for the ’431 Patent, December 14, 2011 for the ’924 Patent, July 24, 2013 for the
`
`’079 Patent, and May 11, 2000 for the ’949 Patent.
`
`5.
`
`Samsung contends that all of the Asserted Claims of the Patents-in-Suit are invalid
`
`as being patent ineligible under 35 U.S.C. § 101.
`
`6.
`
`Samsung contends that the Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 14, 15, 16, 17, 18, 19,
`
`20, 21, 22, 25, 26, 27, 28 and 30 of the ’431 Patent; Claims 3, 6, and 12 of the ’924 Patent; Claims
`
`1, 2, 3, 4, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 23, 24, 25 and 30 of the ’079 Patent; and Claims 13, 14,
`
`16 and 18 of the ’949 Patent are invalid because they are anticipated by the prior art under 35
`
`U.S.C. § 102.
`
`7.
`
`Samsung contends that all of the Asserted Claims are invalid for being obvious in
`
`view of the prior art under 35 U.S.C. § 103.
`
`8.
`
`Samsung contends that Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19,
`
`20, 21, 22, 25, 26, 27, 28 and 30 of the ’431 Patent, Claims 1, 2, 3, 4, 5, 6, 7, 10, 12 and 14 of the
`
`’924 Patent, Claims 11, 14, 15, and 19 of the ’079 Patent and Claims 13, 14, 16 and 18 of the ’949
`
`Patent are invalid under 35 U.S.C. § 112 for lacking written description.
`
`
`
`7
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 8 of 34 PageID #: 9697
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`9.
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`Samsung contends that all of the Asserted Claims of the Patents-in-Suit are invalid
`
`for improper inventorship under 35 U.S.C. § 264.
`
`10.
`
`Samsung contends that all of the Asserted Claims of the Patents-in-Suit are invalid
`
`under 35 U.S.C. § 282.
`
`11.
`
`Samsung contends that all of the Asserted Claims of the Patents-in-Suit are invalid
`
`under the doctrine of double patenting.
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`12.
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`Samsung specifically identifies the following prior art anticipation and obviousness
`
`contentions:
`
`a. U.S. 6,144,366 (“Numazaki”) anticipates Claims 1, 2, 3, 7, 8, 9, 12, 14, 15, 16, 17, 18,
`
`19, 20, 21, 22, 28 and 30 of the ’431 Patent.
`
`b. Numazaki renders obvious Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19,
`
`20, 21, 22, 25, 26, 27, 28 and 30 of the ’431 Patent.
`
`c. Numazaki in view of CA 2,237,939 (“Mann”) Man renders obvious Claims 11, 13 and
`
`25 of the ’431 Patent.
`
`d. Numazaki in view of TV, Toy, Crane, and Game Control Systems (“MERL”) renders
`
`obvious Claim 27 of the ’431 Patent.
`
`e. Numazaki in view of U.S 6,539,100 (“Amir”) renders obvious Claim 30 of the ’431
`
`Patent.
`
`f. U.S. 6,266,061 (“Doi”) anticipates Claims 1, 2, 3, 6, 7, 8, 9, 12, 14, 15, 16, 17, 18, 19,
`
`20, 21, 22, 26, 27, 28 and 30 of the ’431 Patent.
`
`g. Doi renders obvious Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21,
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`22, 25, 26, 27, 28 and 30 of the ’431 Patent.
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`
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`8
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`

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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 9 of 34 PageID #: 9698
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`
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`h. Doi in view of Numazaki renders obvious Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15,
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`16, 17, 18, 19, 20, 21, 22, 25, 26, 27, 28 and 30 of the ’431 Patent.
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`i. Doi in view of Mann renders obvious Claims 11, 13 and 25 of the ’431 Patent.
`
`j. Doi in view of Numazaki and in further view of Mann renders obvious Claims 11, 13
`
`and 25 of the ’431 Patent.
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`k. Doi in view of MERL renders obvious Claim 27 of the ’431 Patent.
`
`l. MERL anticipates Claims 7, 8, 9, 12, 14, 15, 16, 17, 18, 19, 20, 21, 22, 25, 26, 27, 28
`
`and 30 of the ’431 Patent.
`
`m. MERL renders obvious Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20,
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`21, 22, 23, 24, 25, 26, 27, 28 and 30 of the ’431 Patent.
`
`n. MERL in view of Numazaki renders obvious Claims 1, 7 and 14 of the ’431 Patent.
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`o. MERL in view of Numazaki and in further view of MDScope renders obvious Claims
`
`1, 7 and 14 of the ’431 Patent.
`
`p. MERL in view of 3D Image Control with Hand Gestures, including Control of
`
`Molecular Biology Modeling (“MDScope”) renders obvious Claims 1, 6, 7, 14, 16, 17 and 19 of
`
`the ’431 Patent.
`
`q. MDScope anticipates Claims 2, 6, 7, 8, 9, 11, 15, 16, 17, 18, 19, 20, 21, 22, 25, 26, 28
`
`and 30 of the ’431 Patent.
`
`r. MDScope renders obvious Claims 2, 6, 7, 8, 9, 11, 15, 16, 17, 18, 19, 20, 21, 22, 25, 26,
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`28 and 30 of the ’431 Patent.
`
`s. MDScope in view of Numazaki renders obvious Claims 1, 7 and 14 of the ’431 Patent.
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`t. MDScope in view of MERL renders obvious Claims 1, 7, 11, 13, 14, 16, 17, 25 and 27
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`of the ’431 Patent.
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`9
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 10 of 34 PageID #: 9699
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`
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`u. MDScope in view of MERL and in further view of Numazaki renders obvious Claims
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`1, 7 and 14 of the ’431 Patent.
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`v. PCT Publication WO 97/26744 (“Robb”) renders obvious Claims 1, 2, 3, 4, 5, 10, 12
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`and 14 of the ’924 Patent.
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`w. Robb in view of Amir renders obvious Claims 1, 2, 3, 4, 5, 7, 10, 12 and 14 of the ’924
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`Patent.
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`x. Robb in view of Numazaki renders obvious Claims 1, 2, 3, 4, 5, 6, 12 and 14 of the ’924
`
`Patent.
`
`y. Robb in view of Amir and in further view of Numazaki renders obvious Claims 1,2, 3,
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`4, 5, 6, 7, 10, 12 and 14 of the ’924 Patent.
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`z. Mann in view of Numazaki renders obvious Claims 1, 2, 3, 4, 5, 6 and 14 of the ’924
`
`Patent.
`
`aa. Mann in view of Amir renders obvious Claims 1, 2, 3, 4, 5, 7, 10, 12 and 14 of the ’924
`
`Patent.
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`bb. Mann in view of Numazaki and in further view of Amir renders obvious Claims 1, 2,
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`3, 4, 5, 6, 7, 10, 12 and 14 of the ’924 Patent.
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`cc. MERL anticipates Claims 3, 6 and 12 of the ’924 Patent.
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`dd. MERL renders obvious Claims 3, 6 and 12 of the ’924 Patent.
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`ee. MERL in view of Mann renders obvious Claims 1, 4, 5, 6 and 12 of the ’924 Patent.
`
`ff. MERL in view of Mann and in further view of Numazaki renders obvious Claims 2 and
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`14 of the ’924 Patent.
`
`gg. MERL in view of Mann and in further view of Amir renders obvious Claims 2, 7, 10,
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`12 and 14 of the ’924 Patent.
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`
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`10
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 11 of 34 PageID #: 9700
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`
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`hh. MERL in view of Mann and in further view of Numazaki and in further view of Amir
`
`renders obvious Claims 2, 7, 10, 12 and 14 of the ’924 Patent.
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`ii. Numazaki renders obvious Claims 1, 2, 4, 5, 6, 8, 9, 11, 14, 19, 21, 22, 24, 25 and 30 of
`
`the ’079 Patent.
`
`jj. Numazaki renders obvious Claims 1, 2, 4, 5, 6, 8, 9, 11, 14, 19, 21, 22, 24, 25 and 30 of
`
`the ’079 Patent.
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`kk. Numazaki in view of U.S. 5,900,863 (“Numazaki ’863”) renders obvious Claims 2, 3,
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`14, 15, 22 and 23 of the ’079 Patent.
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`ll. U.S. Patent No. 6,198,485 (“Mack”) renders obvious Claims 1, 4, 5, 8, 9, 11, 19, 21, 24,
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`25 and 30 of the ’079 Patent.
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`mm. Mack in view of Numazaki renders obvious Claims 1, 4, 5, 8, 9, 11, 19, 21, 24, 25
`
`and 30 of the ’079 Patent.
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`nn. Mack in view of Numazaki ’863 renders obvious Claims 2, 3, 14, 15, 22 and 23 of the
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`’079 Patent.
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`oo. Mack in view of Numazaki and in further view of Numazaki ’863 renders obvious
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`Claims 2, 3, 14, 15, 22 and 23 of the ’079 Patent.
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`pp. Mack in view of U.S. 6,385,331 (“Harakawa”) renders obvious Claim 6 of the ’079
`
`Patent.
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`qq. Mack in view of Numazaki and in further view of Harakawa renders obvious Claim 6
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`of the ’079 Patent.
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`rr. MERL anticipates Claims 1, 2, 3, 4, 5, 6, 9, 11, 14, 15, 19, 21, 22, 23, 24, 25 and 30 of
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`the ’079 Patent.
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`11
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 12 of 34 PageID #: 9701
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`
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`ss. MERL renders obvious Claims 1, 2, 3, 4, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 23, 24, 25
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`and 30 of the ’079 Patent.
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`tt. MERL in view of MDScope renders obvious Claim 8 of the ’079 Patent.
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`uu. MDScope anticipates Claims 1, 2, 4, 5, 6, 8, 9, 11, 14, 19, 21, 22, 24, 25 and 30 of the
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`’079 Patent.
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`vv. MDScope renders obvious Claims 1, 2, 3, 4, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 23, 24,
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`25 and 30 of the ’079 Patent.
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`ww. MDScope in view of MERL renders obvious Claims 3, 15 and 23 of the ’079 Patent.
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`xx. Numazaki renders obvious Claims 13, 14, 16 and 18 of the ’949 Patent.
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`yy. Numazaki in view of Sears renders obvious Claims 13, 14, 16 and 18 of the ’949 Patent.
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`zz. U.S. 6,115,482 (“Sears”) anticipates Claims 13, 14, 16 and 18 of the ’949 Patent.
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`aaa. Sears renders obvious Claims 13, 14, 16 and 18 of the ’949 Patent.
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`bbb. MERL anticipates Claims 13, 14, 16 and 18 of the ’949 Patent.
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`ccc. MERL renders obvious Claims 13, 14, 16 and 18 of the ’949 Patent.
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`ddd. MERL in view of Sears renders obvious Claim 13 of the ’949 Patent.
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`eee. MDScope anticipates Claims 13, 14, 16 and 18 of the ’949 Patent.
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`fff. MDScope renders obvious Claims 13, 14, 16 and 18 of the ’949 Patent.
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`ggg. MDScope in view of MERL renders obvious Claims 13 and 18 of the ’949 Patent.
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`hhh. MDScope in view of MERL and in further view of Sears renders obvious Claim 13
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`of the ’949 Patent.
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`13.
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`Samsung contends that GTP is not entitled to damages, interest, costs, fees, or any
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`other form of recovery or relief whatsoever from Samsung.
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`12
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 13 of 34 PageID #: 9702
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`14.
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`Samsung contends that GTP has not been damaged by any infringement of the
`
`Patents-in-Suit by Samsung and that GTP is not entitled to a reasonable royalty or other
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`compensatory damages under 35 U.S.C. § 284.
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`15.
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`Samsung contends that GTP is not entitled to interest or costs, including under 35
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`U.S.C. §§ 284 and 285.
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`16.
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`Samsung contends that GTP is not entitled to attorneys’ fees, including under 35
`
`U.S.C. § 285.
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`17.
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`Samsung contends that GTP’s damage claims are limited by 35 U.S.C. § 286 to
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`damages arising from acts committed six years or less prior to the filing of this suit.
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`18.
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`Samsung contends that this is an exceptional case within the meaning of 35 U.S.C.
`
`§ 285, warranting the award of attorneys’ fees and costs to Samsung.
`
`E.
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`STIPULATIONS AND UNCONTESTED FACTS
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`The parties agree to the following stipulations and uncontested facts:
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`a. The Parties’ Statement of Stipulations
`
`1.
`
`The Parties have agreed to the motions in limine set forth in their Joint Stipulation
`
`of Agreed Motions in Limine (Dkt. 196).
`
`2.
`
`The parties will continue to meet and confer to attempt to resolve their objections
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`to deposition designations and exhibits and to identify additional potential stipulations, including
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`stipulations related to the admissibility of exhibits, and will supplement these stipulations to the
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`extent additional agreements are reached.
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`3.
`
`The parties agree that any date listed on the exhibit list is not evidence nor an
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`admission of the date of the document or video, and that failing to list a date is neither evidence
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`of, nor an admission of, whether the document or video is dated. The parties agree that any
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`13
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 14 of 34 PageID #: 9703
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`
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`description of a document or video on an exhibit list is provided for convenience only and shall
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`not be used an admission or otherwise as evidence regarding the document or video.
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`4.
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`A legible photocopy of the Patents-in-Suit and their file history may be offered as
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`evidence in lieu of certified copies thereof.
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`5.
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`More legible photocopies of documents, or color copies of documents originally
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`created in color, may be offered and received in evidence in lieu of originals thereof, subject to all
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`foundational requirements and other objections that might be made to the admissibility of
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`originals.
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`6.
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`The parties agree that demonstrative exhibits the parties intend to use at trial do not
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`need to be included on their respective trial exhibit lists attached as Exhibit F and Exhibit G to
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`this Order. The parties otherwise reserve all rights to object to any demonstrative exhibits.
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`7.
`
`The parties agree that written answers to interrogatories and requests for admission
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`or stipulations agreed to in this case shall be treated by the opposing party as having been given
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`under oath, whether or not the answers were signed or verified by the party making them.
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`8.
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`The parties understand that the Court may prefer to present a tutorial video from
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`the Federal Judicial Center regarding the U.S. Patent Office to the members of the jury as part of
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`its preliminary instructions to the jury.
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`9.
`
`The parties understand that the jurors will be provided Juror Notebooks and will be
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`permitted to take notes during the presentations of the parties.
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`10.
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`Fact witnesses will be sequestered so that they cannot hear other witnesses’
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`testimony pursuant to Federal Rule of Evidence 615. This stipulation does not apply to a party’s
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`corporate trial representative.
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`
`
`14
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 15 of 34 PageID #: 9704
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`b. The Parties’ Statement of Uncontested Facts
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`1.
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`Plaintiff GTP is a limited liability company filed under the laws of the State of
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`Ohio, with its principal place of business at 2815 Joelle Drive, Toledo, Ohio 43617.
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`2.
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`Defendant Samsung Electronics Co. Ltd (“SEC”) is a corporation organized and
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`existing under the laws of the Republic of Korea with its principal place of business located at 129,
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`Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, Korea 16677.
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`3.
`
`Defendant Samsung Electronics America, Inc. (“SEA”) is a corporation organized
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`and existing under the laws of the State of New York, with its principal place of business located
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`at 85 Challenger Road, Ridgefield Park, New Jersey 07660.
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`4.
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`SEA is a wholly owned subsidiary of SEC that sells consumer electronics goods
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`and mobile devices in the United States.
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`5.
`
`6.
`
`7.
`
`8.
`
`GTP filed a complaint in this case against Samsung on February 4, 2021.
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`The Patents-in-Suit are the ’431, ’924, ’079, and ’949 Patents.
`
`The ’431 Patent was issued on April 26, 2011.
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`The ’431 Patent is entitled “Camera Based Sensing in Handheld, Mobile, Gaming
`
`or Other Devices.”
`
`9.
`
`Claims 1, 2, 3, 6, 7, 8, 9, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 25, 26, 27,
`
`28 and 30 of the ’431 Patent are at issue and asserted in this case against Samsung.
`
`10.
`
`11.
`
`The ’924 Patent was issued on June 5, 2012.
`
`The ’924 Patent is entitled “Camera Based Sensing in Handheld, Mobile, Gaming
`
`or Other Devices.”
`
`12.
`
`Claims 1, 2, 3, 4, 5, 6, 7, 10, 12 and 14 of the ’924 Patent are at issue and asserted
`
`in this case against Samsung.
`
`
`
`15
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 16 of 34 PageID #: 9705
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`
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`13.
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`14.
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`The ’079 Patent was issued on October 8, 2012.
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`The ’079 Patent is entitled “More Useful Man Machine Interfaces and
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`Applications.”
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`15.
`
`Claims 1, 2, 3, 4, 5, 6, 7, 9, 11, 14, 15, 19, 21, 22, 23, 24, 25 and 30 of the ’079
`
`Patent are at issue and asserted in this case against Samsung.
`
`16.
`
`17.
`
`18.
`
`The ’949 Patent was issued on November 4, 2014.
`
`The ’949 Patent is entitled “Camera Based Interaction and Instruction.”
`
`Claims 13, 14, 16 and 18 of the ’949 Patent are at issue and asserted in this case
`
`against Samsung.
`
`19.
`
`The last of the Patents-in-Suit expired on July 7, 2020, before the filing of the
`
`Complaint in this litigation.
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`20.
`
`In the United States, during the Relevant Time Period,3 SEA offered to sell at least
`
`one of the Accused Products in the United States.
`
`21.
`
`In the United States, during the Relevant Time Period, SEA sold at least one of the
`
`Accused Products in the United States.
`
`22.
`
`In the United States, during the Relevant Time Period, SEA imported at least one
`
`of the Accused Products in the United States.
`
`23.
`
`24.
`
`25.
`
`26.
`
`The Accused Products are portable devices.
`
`The Accused Products include at least one cameras.
`
`The Accused Products include two or more cameras.
`
`The Accused Products include a display screen that emits light.
`
`
`3 The term “Relevant Time Period” means the time period beginning with six years before the
`filing of the Complaint in this case through the expiration of the Patents-in-Suit.
`
`
`
`16
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 17 of 34 PageID #: 9706
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`
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`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`The Accused Products include at least one camera that can sense reflected light.
`
`The Accused Products include at least one processor.
`
`The Accused Products include one side that Samsung refers to as front-facing.
`
`The Accused Products include one side that Samsung refers to as rear-facing.
`
`The Accused Products have a camera located on the side of the Accused Products
`
`that Samsung refers to as front-facing.
`
`32.
`
`The Accused Products have a camera located on the side of the Accused Products
`
`that Samsung refers to as rear-facing.
`
`33.
`
`The Accused Products include at least two cameras, having fields of view that do
`
`not completely overlap.
`
`1998.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`Cameras were known before November 9, 1998.
`
`Hand held devices containing microprocessors were known before November 9,
`
`Electro-optical sensors were known before November 9, 1998.
`
`Display screens were known before November 9, 1998.
`
`Using a light source to illuminate an image being detected by a camera was known
`
`before November 9, 1998.
`
`39.
`
`40.
`
`Peter Smith is not named as an inventor in any of the Patents-in-Suit.
`
`GTP never made Samsung aware of the Asserted Patents before the filing of the
`
`Complaint in this litigation.
`
`41.
`
`GTP did not contact Samsung regarding any claims of infringement of the Patents-
`
`in-Suit before the filing of the Complaint in this litigation.
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`
`
`17
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 18 of 34 PageID #: 9707
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`
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`42.
`
`Samsung was not aware of the Patents-in-Suit before the filing of the Complaint in
`
`this litigation.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`48.
`
`numbers.
`
`GTP has never made or sold any product or service.
`
`GTP did not develop a product that embodies any claim in the Patents-in-Suit.
`
`GTP did not manufacture a product that embodies any claim in the Patents-in-Suit.
`
`GTP did not sell a product that embodies any claim in the Patents-in-Suit.
`
`GTP did not mark a product with any of the Patents-in-Suit numbers.
`
`GTP did not cause any product to be marked with any of the Patents-in-Suit
`
`c. Stipulation for Trial Management Procedures
`
`Exhibit C incorporates the Parties’ agreement as to the procedure that will govern the
`
`disclosure of witnesses, exhibits, deposition testimony, and demonstratives to use at trial, and the
`
`process to identify any objections remaining between the Parties with regard to these disclosures.
`
`i. Notification of live witnesses
`
`See Exhibit C.
`
`Exchange of deposition designations
`
`See Exhibit C.
`
`ii. Notification of live witnesses
`
`See Exhibit C.
`
`iii. Unobjected-to trial exhibits deemed admitted
`
`See Exhibit C.
`
`iv. Deadline to resolve exhibit objections
`
`See Exhibit C.
`
`
`
`18
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 19 of 34 PageID #: 9708
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`
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`v. Agreed juror notebook
`
`Twelve (12) copies of an agreed juror notebook containing witness names and color
`
`photographs, a list of construed terms, copies of the Asserted Patent, a legal pad, and a pen will be
`
`delivered to the Court by the day before jury selection at noon.
`
`vi. Demonstrative exhibits
`
`See Exhibit C.
`
`vii.
`
`Shared audio visual equipment and electronic versions of displays
`
`The Parties will share any courtroom audio-visual equipment and will provide each other
`
`electronic versions of whatever they display immediately after the display.
`
`viii. Estimate of Finishing Presentation
`
`See Exhibit C.
`
`d. Stipulation on Treatment of Confidential, Restricted – Attorneys’ Eyes Only, and
`Restricted Confidential Source Code Information
`
`The Parties agree to abide by the procedures set forth in this case’s Protective Order (Dkt.
`
`68) to prevent public disclosure of documents containing information designated as Confidential,
`
`Restricted – Attorneys’ Eyes Only, Restricted Confidential Source Code, and/or testimony
`
`eliciting such information.
`
`F.
`
`CONTESTED ISSUES OF FACT AND LAW
`
`The parties identify the following issues of fact and law that remain to be litigated. [GTP’s
`
`Position: To the extent any issue of law discussed below is deemed to be an issue of fact, it is
`
`incorporated into this section.] The parties reserve the right to identify additional factual or legal
`
`issues that may arise, including issues raised by any further discovery undertaken in this case or
`
`the Court’s rulings on any pending motions or rulings made at the pretrial conference on this
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`action.
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`
`
`19
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`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 20 of 34 PageID #: 9709
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`
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`By providing this statement, the parties do not concede that all of these issues are
`
`appropriate for trial. The parties also do not waive any of their pending motions.
`
`
`
`Infringement
`
`[GTP’s Position:
`
`1.
`
`Whether GTP has shown by a preponderance of the evidence that the Accused
`
`Products used, made, sold, or offered for sale by Samsung directly infringe any of the Asserted
`
`Claims of the Asserted Patents.]
`
`[Samsung’s Position:
`
`1.
`
`Whether GTP has shown by a preponderance of the evidence that the Accused
`
`Products used, made, sold, or offered for sale by Samsung directly infringe any of the Asserted
`
`Claims of the Patents-in-Suit.
`
`2.
`
`Whether GTP has shown by a preponderance of the evidence that Samsung has
`
`directly infringed any of the Asserted Claims.
`
`3.
`
`Whether Samsung has infringed any of the Asserted Claims under 35 U.S.C. §
`
`271(a).]
`
`
`
`Invalidity
`
`[GTP’s Position:
`
`1.
`
`Whether Samsung has shown by clear and convincing evidence that any prior art
`
`reference or references invalidate the Asserted Claims of the Asserted Patents under 35 U.S.C. §§
`
`102 and/or 103.]
`
`[Samsung’s Position:
`
`1.
`
`Whether the Asserted Claims are invalid or unenforceable.
`
`
`
`20
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`

`

`Case 2:21-cv-00040-JRG Document 211 Filed 01/25/22 Page 21 of 34 PageID #: 9710
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`
`
`2.
`
`Whether Samsung has shown by clear and convincing evidence that each of the
`
`Asserted Claims is invalid under 35 U.S.C. §§ 101, 102, 103, 112, 264 and/or 282.
`
`3.
`
`Whether Samsung has shown by clear and convincing evidence that each of the
`
`Asserted Claims is invalid under the doctrine of double patenting.
`
`4.
`
`Whether Samsung has shown by clear and convincing evidence that each of the
`
`Asserted Claims is invalid under 35 U.S.C. § 101.
`
`5.
`
`Whether Samsung has shown by clear and convincing evidence that each of the
`
`Asserted Claims is invalid und