Case 2:21-cv-00040-JRG Document 51-1 Filed 06/29/21 Page 1 of 6 PageID #: 541
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`Exhibit 1
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`Case 2:21-cv-00040-JRG Document 51-1 Filed 06/29/21 Page 2 of 6 PageID #: 542
`PAUL
`HASTINGS
`
`
`
`
`
`
`
`
`May 7, 2021
`
`
`VIA E-MAIL
`
`Fred Williams
`Williams Simons & Landis PLLC
`327 Congress Ave., Suite 490
`Austin, TX 78701
`
`
`
`
`Re:
`
`Gesture Technology Partners LLC v. Samsung Electronics Co. LTD., et al., Plaintiff’s Disclosure
`of Asserted Claims and Infringement Contentions
`
`Counsel:
`
`On behalf of Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (together,
`
`“Samsung”), we write regarding GTP’s continued failure to satisfy the requirements of the federal and local
`rules to provide full, fair, and timely notice to Samsung of GTP’s infringement allegations with respect to
`U.S. Patents 8,194,924 (“’924 Patent”); 7,933,431 (“’431 Patent”); 8,878,949 (“’949 Patent”); and 8,553,079
`(“’079 Patent”) (together, the “Asserted Patents”).
`
`
`You will recall my e-mail correspondence of April 23, 2021 and Samsung’s subsequent motion to
`dismiss filed April 27, 2021 regarding the failure of GTP’s Complaint to sufficiently plead GTP’s allegations
`of infringement under 35 U.S.C. §§ 271(a), 271(b), and 284. Those deficiencies remain unaddressed.
`
`
`Most recently, GTP’s P.R. 3-1(b) infringement contentions served on April 28, 2021 fail to provide
`the requisite detail required by the local rules. The Patent Rules for the Eastern District of Texas specifically
`require that GTP disclose “for each asserted claim, each accused apparatus, product, device, process,
`method, act, or other instrumentality” and that “[e]ach method or process must be identified by name, if
`known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the
`claimed method or process.” P.R. 3-1 (b). The Patent Rules further require “[a] chart identifying specifically
`where each element of each asserted claim is found within each Accused Instrumentality.” P.R. 3-1(c).
`The Court has held that “broad conclusory allegations that the products are similar do not allow Plaintiffs to
`circumvent the Local Rules.… Plaintiff must provide an explanation of the technical and functional identity
`of the products represented.” UltimatePointer, LLC v. Nintendo Co., No. 6:11-CV-496, 2013 U.S. Dist.
`LEXIS 200122, at *14-16 (E.D. Tex. May 28, 2013), see also Scorpcast, LLC v. Boutique Media et al., 20-
`cv-00193-JRG-RSP, Dkt No. 152, slip op. at 2 (E.D. Tex. Mar. 26, 2021) (ordering plaintiff to amend
`infringement contentions to identify how claim limitation is met by the accused product.) As GTP’s
`infringement allegations in its Complaint fail to meet the federal pleading standards, so also do GTP’s
`infringement contentions fail to meet the local rules’ requirements.
`
`
`
`
`Paul Hastings LLP I 111 7 S. California Avenue I Palo Alto, California 94304
`t: + 1 .650.320. 1800 I www.paulhastings.com
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`

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`Case 2:21-cv-00040-JRG Document 51-1 Filed 06/29/21 Page 3 of 6 PageID #: 543
`PAUL
`HASTINGS
`
`
`
`
`Fred Williams
`May 7, 2021
`Page 2
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`
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`As detailed below, GTP’s infringement contentions against 24 Accused Features1 across multiple
`families of Accused Products2 are woefully deficient and leave Samsung unable to prepare its defenses or
`to identify and provide discovery. Each Accused Feature is unique, with its own individual functions and
`operations. For example, Iris Scan Unlock is an entirely different feature from Bixby Vision. GTP’s
`infringement contentions do not allege that any Accused Feature is representative of others, nor would
`such an allegation be proper. It is improper for infringement contentions to call out and provide detail for
`only a small fraction of the Accused Features when those features each behave differently according to
`their individual functions and operations. Samsung objects to GTP’s attempt to accuse products and
`functionalities without explaining how they allegedly infringe the particular claim elements of the Asserted
`Patents. Samsung requests a meet and confer to discuss the material deficiencies of GTP’s infringement
`contentions and the need for prompt supplementation to resolve them. If GTP does not agree to promptly
`provide such supplementation, Samsung will have no option other than to bring a Motion to Strike and/or
`Compel Supplementation of GTP’s Infringement Contentions.
`
`
`First, the claim charts for the Asserted Patents provide no evidence (e.g., not even website links)
`and no theories of infringement for at least 11 of the 24 Accused Features: Selfie Focus, Smart OIS, Smart
`Pause, Smart Scroll, Blur Background, Internet Transfer After Sense (e.g., QR Code), Bixby Vision, "Live
`Masks Track/Apply, Live Stickers Track," Beauty Mode, and Portrait Mode. See Rapid Completions LLC
`v. Bak er Hughes Inc., No. 6:15-CV-724, 2016 U.S. Dist. LEXIS 80327, at *21 (E.D. Tex. June 21, 2016) (“It
`is not a defendant's job to assume how a plaintiff believes each claim element is met or to assume how a
`plaintiff alleges the Accused Instrumentality infringes. [Plaintiff’s] inclusion of screenshots of block quotes,
`diagrams from Defendants' documents, and links to video clips made by defendants are similarly deficient
`in providing notice to defendants as to what [plaintiff’s] theories of infringement are and how [plaintiff]
`alleges each of the Accused Instrumentalities meets each claim element.”) The cover pleading for the
`infringement contentions likewise fails to provide any notice regarding GTP’s infringement theories for these
`10 Accused Features. The cover pleading provides a collection of website links for device specifications,
`teardown reports, and Wikipedia entries, none of which are specific to these 11 Accused Features. GTP’s
`infringement contentions fail to identify how these 11 Accused Features “when used allegedly result in the
`practice of the claimed method or process” as required by the Patent Rules.
`
`
`Second, the claim charts and cover pleading are so vague and general for a further 7 of the 24
`Accused Features that it is impossible for Samsung to know what feature GTP is actually referring to, let
`alone how the feature relates to the claims of the Asserted Patents. These Accused Features are: Smile
`Shutter, Smile Shot, Adjust Blur, Face Location, Active Shape Connection, Tracking Autofocus, and Control
`Exposure Based on Location.3 GTP must provide specificity as to exactly what features or operation of the
`Accused Products are alleged to meet the claim elements and why GTP contends they infringe. Mere
`reference to general camera operation, divorced from the Accused Products, fails to place Samsung on
`
`
`1 Gesture Detection, Smile Shutter, Iris Scan Unlock, Face ID Unlock, Intelligent Scan Unlock, Tracking
`Autofocus, Selfie Focus, Smart OIS, Smart Stay, Smart Pause, Smart Scroll, Blur Background, Adjust Blur,
`Face Location, Active Shape Connection, Internet Transfer After Sense (e.g., QR Code), Bixby Vision,
`Control Exposure Based On Location, Live Masks Track/Apply, Live Stickers Track, AR Emoji, Beauty
`Mode, Portrait Mode, and Smile Shot.
`2 P.R. 3-1 Disclosures, see cover pleading.
`3 Similarly, the cover pleading references hardware that has no discernable relation to any of the 24
`Accused Features. Specifically, it is completely unclear why a “Rear Heart rate sensor” is relevant to any
`of the Accused Features. Cover Pleading at 3–5.
`
`

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`Case 2:21-cv-00040-JRG Document 51-1 Filed 06/29/21 Page 4 of 6 PageID #: 544
`PAUL
`HASTINGS
`
`
`
`
`Fred Williams
`May 7, 2021
`Page 3
`
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`notice of why it allegedly infringes the Asserted Patents and does not meet GTP’s obligations under the
`Patent Rules.
`
`
`Third, the infringement claim chart for the ’079 Patent fails to identify “each accused apparatus,
`product, device, process, method” for key claim limitations and similarly fails to specify how the Accused
`Features allegedly meet these claim limitations. For example, Claim 1 of the ’079 Patent requires “providing
`a camera oriented to observe a gesture performed in the work volume, the camera being fix ed relative to
`the light source.” ’079 Patent claim chart at 1. Claims 11 and 21 have similar limitations. GTP’s claim chart
`fails to specify the “gesture performed in the work volume” for the Accused Features. For example, the
`claim chart does not identify the gesture performed by the Iris Scan Unlock or Adjust Blur features.
`
`
`Similarly, the ’079 Patent infringement claim chart fails to identify which “light source” or “display”
`from the myriad purported light sources and displays listed in the infringement contention cover pleading
`Samsung allegedly utilizes in an infringing manner for each of the 24 Accused Features. See ’079 Claim
`Chart at 2. Instead, the claim chart merely lists all 24 Accused Features collectively. It is impossible for
`Samsung to know which “light source” GTP alleges to be infringing for any of the Accused Features.
`
`
`Fourth, the infringement claim chart for the ’949 Patent fails to identify “each accused apparatus,
`product, device, process, method” for key claim limitations and similarly fails to specify how the Accused
`Features allegedly meet these claim limitations. Claim 1 of the ’949 Patent requires “a digital camera
`separate from the electro-optical sensor.” ’949 Patent claim chart at 1. Claims 8 and 13 have similar
`limitations. GTP’s infringement contentions fail to specify or otherwise identify the hardware purportedly
`compromising the claimed “digital camera” and the separate “electro-optical sensor.” Instead GTP’s claim
`chart refers back to the cover pleading’s listing of “Camera and Sensors” in the second column of the table
`identifying Accused Products. Cover pleading at 2–19. Most of the entries in that column identify “front
`cameras” or “rear cameras.” The contentions do not make clear which is the purported “camera” and which
`is the purported separate “electro-optical sensor” among the hardware listed for each device.
`
`Similarly, Claim 6 of the ’949 Patent is a dependent claim requiring that “the electro-optical sensor
`defines a resolution less than a resolution defined by the digital camera.” ’949 Patent claim chart at 5.
`Claims 12 and 17 have similar limitations. The claim chart for Claim 6 merely repeats the claim language
`that “[t]he electro-optical sensors of the Accused Products define a resolution less than a resolution defined
`by the digital camera” and references the cover pleading. Id. The cover pleading, in the second column of
`the table identifying Accused Products, merely lumps together purported “cameras” and “sensors” and fails
`to identify the claimed “electro-optical sensor” with a “resolution less than … the digital camera.”
`
`Claim 1 of the ’949 Patent further includes the step “determine a gesture has been performed in
`the electro-optical sensor field of view based on the electro-optical sensor output.” ’949 Patent claim chart
`at 1. Claims 8 and 13 have similar limitations. The claim chart fails to identify the purported gesture
`performed for each of the 24 Accused Features and additionally fails to explain how each Accused Feature
`“determine[s] a gesture has been performed… based on the electro-optical sensor output.” ’949 Patent
`claim chart at 1. For example, the infringement contentions do not identify the gesture performed by the
`Iris Scan Unlock or Adjust Blur Accused Features and provide no information as to how determination of
`that gesture (whatever it may be) relates to the output of the (unidentified) electro-optical sensor.
`
`Similarly, Claim 1 of the ’949 Patent further requires that “control the digital camera in response to
`the gesture performed in the electro-optical sensor field of view, wherein the gesture corresponds to an
`image capture command, and wherein the image capture command causes the digital camera to store an
`
`

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`Case 2:21-cv-00040-JRG Document 51-1 Filed 06/29/21 Page 5 of 6 PageID #: 545
`PAUL
`HASTINGS
`
`
`
`
`Fred Williams
`May 7, 2021
`Page 4
`
`
`image to memory.” ’949 Patent claim chart at 2. Claims 8 and 13 have similar limitations. The claim chart
`and cover pleading fail to specify the purported image that is captured for each of the listed 24 Accused
`Features. For example, the infringement contentions do not explain what image is captured in the process
`of using Iris Scan Unlock or Bixby Vision, nor do they explain what gesture causes the purported image
`capture as required by the claim.
`
`Fifth, the ’924 Patent infringement claim chart fails to identify “each accused apparatus, product,
`device, process, method” for key claim limitations and similarly fails to specify how the Accused Features
`allegedly meet these claim limitations. For example, Claim 1 of the ‘924 Patent includes the limitation “the
`computer is adapted to perform a control function of the handheld device based on at least one of the first
`camera output and the second camera output.” ’924 Patent claim chart at 2. The infringement contentions,
`however, fail to identify the purported control function for at least the following 20 Accused Features: Smile
`Shutter, Tracking Autofocus, Selfie Focus, Smart OIS, Smart Stay, Smart Pause, Smart Scroll, Blur
`Background, Adjust Blur, Face Location, Active Shape Connection, Internet Transfer After Sense (e.g., QR
`Code), Bixby Vision, Control Exposure Based On Location, Live Masks Track/Apply, Live Stickers Track,
`AR Emoji, Beauty Mode, Portrait Mode, and Smile Shot.
`
`
`Claim 4 of the ’924 Patent includes the limitation “the second camera is adapted to acquire an
`image of the object.” ’924 Patent claim chart at 4. The infringement contentions claim chart for the ’924
`Patent repeats the claim language that the “second camera of the Accused Products is adapted to acquire
`an image of the object” and cites to a YouTube video. Id. That video appears to demonstrate ways to use
`Emoji stickers at 2:14, but neither the video nor any allegation in the infringement contentions identifies
`what “object” is the alleged subject acquired by the second camera. Similarly, the infringement contentions
`provide no identification of the “object” for the other Accused Features. Claim 5 is similar to Claim 4, except
`that it recites acquisition of a video. The cited YouTube video shows no video used with AR Emojis and,
`similarly, the infringement contentions never identify the object that is supposedly the subject of the video
`for the other Accused Features.
`
`
`Claim 6 of the ’924 Patent includes the limitation “wherein the computer is operable to determine a
`gesture based on at least one of the first camera output and the second camera output.” ’924 Patent claim
`chart at 4. Here again, the claim chart fails to specify the purported gesture performed for each of the 24
`Accused Features. For example, the infringement contentions do not identify the gesture performed by the
`Iris Scan Unlock or Adjust Blur Accused Features and provide no information regarding how determination
`of that gesture (whatever that gesture may be) relates to the output of the first or second camera.
`
`
`Claim 8 of the ’924 Patent recites “wherein the computer is adapted to determine at least one of
`the position and the orientation of the object based on the second camera output.” ’924 Patent claim chart
`at 6. The infringement claim chart for Claim 8 does not identify the claimed “object” for any of the 10
`Accused Features alleged to infringe this claim. It is not clear whether GTP alleges that the claimed “object”
`is the same as the claimed “user” in Claim 1, from which Claim 8 depends.
`
`
`Claim 9 of the ’924 Patent requires that “the gesture is performed by a person other than the user
`of the handheld device.” ’924 Patent claim chart at 6. The infringement contentions fail to explain how the
`Accused Features allegedly meet this limitation. For example, it is not clear how Face ID Unlock allegedly
`utilizes, let alone requires, that a gesture be performed by anyone other than a user of t he device.
`
`
`Claim 14 of the ’924 Patent requires “the computer is adapted to transmit information over an
`internet connection.” ’924 Patent claim chart at 9. Rather than identifying the alleged claimed information
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`

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`Case 2:21-cv-00040-JRG Document 51-1 Filed 06/29/21 Page 6 of 6 PageID #: 546
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`P AUL
`HASTINGS
`
`Fred Williams
`May 7, 2021
`Page 5
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`transmitted over the internet by t he Accused Features, the infringement contentions merely cite to general
`specifications for two of t he Accused Products with no further detail.
`
`Sixth, the '431 Patent infringement claim chart fails to identify "each accused apparatus, product,
`device, process, method" for key claim limitations and similarly fails to specify how the Accused Features
`allegedly meet these claim limitations. As an example, Claim 1 ofthe'431 Patent recites "using said sensed
`finger movement information, controlling said device in accordance with said command." '431 Patent claim
`chart at 3. Claims 7 and 13 have similar limitations. The infringement contentions fail to identify the alleged
`claimed "finger movement" and the alleged claimed "controlling" operation. The infringement claim chart
`for Claim 1 of '431 Patent merely states t hat "[t]he commands used and the controls achieved within each
`Accused Product by sensing the movement of at least one finger in space are commands and contras
`associated with but are not limited to the following features of the Accused Products" and then lists 12 of
`the 24 Accused Features. Id. This language fails to disclose GTP's infringement theory. As an example,
`it is not clear what GTP alleges is the finger movement and related controlling operation for Bixby Vision or
`Smart Stay.
`
`Claim 25 of the '431 Patent requires "transmitting data to a further device." '431 Patent claim chart
`at 20. Like Claim 14 of the '924 Patent, the infringement claim chart for Claim 25 of the '431 Patent fails to
`identify the alleged claimed information transmitted over the internet by the Accused Features and instead
`merely cites generally to specifications for two of the Accused Products with no further detail. 4
`
`As Samsung would strongly prefer to resolve these issues without seeking the Court's assistance,
`we are optimistic that GTP will accept Samsung's request for a meet and confer to discuss the material
`deficiencies of GTP's infringement contentions and the need for prompt supplementation to address them.
`As noted above, however, absent GTP's agreement to prompt ly provide such supplementation, Samsung
`expects to bring a Motion to Strike and/or Compel.
`
`Regards,
`
`Chris Kennerly
`of PAUL HASTINGS LLP
`
`4 GTP's repeated statements in its infringement contentions that its theories "may also be informed by
`source code" and that it reserves t he right to assert additional theories in response to "the production of
`source code for software-based limitations" are ineffectual and irrelevant. The deficiencies noted herein
`are not source code-related. Moreover, while§ 3(a) of Chief Judge Gilstrap's Sample Discovery Order for
`Patent Cases permits deferral of infringement contentions until after initial production of source code where
`"a party claiming patent infringement asserts that a claim element is a software limitation," GTP has
`(appropriately) not in'vOked this provision.
`
`