Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 1 of 27 PageID #:
`9938
`
`EXHIBIT O
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 2 of 27 PageID #:
`9939
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:22-cv-00263-JRG-RSP
`JURY TRIAL DEMANDED
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Plaintiff
`
`v.
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`DEFENDANTS’ INITIAL INVALIDITY CONTENTIONS AND SUBJECT MATTER
`ELIGIBILITY CONTENTIONS
`
`
`INTRODUCTION
`
`I.
`
`Pursuant to the Court’s Docket Control Order (Dkt. No. 28) and Patent Local Rules 3-3
`
`and 3-4, Defendants Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
`
`(collectively, “Samsung” or “Defendants”) provide these initial invalidity contentions
`
`(“Invalidity Contentions”) to Plaintiff AGIS Software Development LLC (“AGIS”) for the
`
`following patents (collectively, “Asserted Patents”) and claims (collectively, “Asserted Claims”)
`
`identified as asserted in AGIS’s Disclosure of Asserted Claims and Infringement Contentions
`
`(“Infringement Contentions”) served on December 1, 2022:
`
`• U.S. Patent No. 8,213,970 (“’970 Patent”) — Claims 2 and 10-13 (“’970 Asserted
`Claims”)
`
`• U.S. Patent No. 9,467,838 (“’838 Patent”) — Claims 1-84 (“’838 Asserted
`Claims”)
`
`• U.S. Patent No. 9,749,829 (“’829 Patent”) — Claims 1-68 (“’829 Asserted
`Claims”)
`
`• U.S. Patent No. 9,820,123 (“’123 Patent”) — Claims 1-48 (“’123 Asserted
`Claims”)
`
`
`
`1
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 3 of 27 PageID #:
`9940
`
`
`
`Defendants address the invalidity of the Asserted Claims and conclude with a description
`
`of their document production and identification of additional reservations and explanations.
`
`These Invalidity Contentions use the acronym “PHOSITA” to refer to a person having ordinary
`
`skill in the art to which the alleged invention pertains.
`
`For the purposes of these Invalidity Contentions, Defendants assume that pre-AIA patent
`
`statutes apply based on AGIS’s claimed priority date of September 21, 2004 for all Asserted
`
`Claims. This is in no way a concession that AGIS is entitled to that priority date. If the Court
`
`later finds that AGIS is not entitled to its claimed priority date and that post-AIA patent statutes
`
`apply, Defendants reserve the right to amend their Invalidity Contentions to apply post-AIA
`
`patent statutes and assert new prior art.
`
`II.
`
`A.
`
`’970 PATENT
`
`Priority Date
`
`The application for the ’970 Patent was filed on November 26, 2008, and purports to
`
`claim priority to September 21, 2004, through a chain of three continuations-in-part. AGIS
`
`claims a priority date of September 21, 2004 in its Infringement Contentions for the ’970
`
`Asserted Claims. But, for the reasons discussed below, no claim of the ’970 Patent is entitled to
`
`an earlier effective filing date than November 26, 2008. The Patent Trial and Appeal Board
`
`(“PTAB”) previously held the same in IPR2018-010719. (IPR2018-010719, Paper 9, 8;
`
`IPR2018-01079, Paper 34).
`
`The ’970 Patent states that “[t]he heart of the invention lies in the forced message alert
`
`software application program provided in each PC or PDA/cell phone.” (’970 Patent, 4:47-49).
`
`This “forced message alert software application program” is required by every single
`
`independent claim (see id., 8:65-9:39 (claim 1) and 10:7-41 (claim 6)) and is also described
`
`throughout the specification (see id., 1:19-23, 1:57-67, 2:7-35, 2:49-55, 3:4-14, 3:22-28, 7:8-
`
`
`
`2
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 4 of 27 PageID #:
`9941
`
`8:57). Similar disclosures are not contained in any of the applications to which the ’970 Patent
`
`claims priority.
`
`The ’970 Patent claims priority to three earlier-filed applications: (i) U.S. Application
`
`No. 10/711,490 (“’490 application”), filed on September 21, 2004; (ii) U.S. Application No.
`
`11/308,648 (“’648 application”), filed on April 17, 2006; and (iii) U.S. Application No.
`
`11/612,830 (“’830 application”), filed on December 19, 2006. None of these earlier-filed
`
`applications provide sufficient written-description support for at least a forced-message alert
`
`software-application program, as required by each independent claim of the ’970 Patent.
`
`First, the ʼ490 application is directed to employing cellular telephone communications to
`
`monitor locations, initiating cellular calls and conference calls with other cellular telephones of a
`
`plurality of communications net participants by touching a display screen, and causing a remote
`
`cellular phone to annunciate audio announcements or call another phone number. (ʼ490
`
`application, Abstract, 8-32). The ʼ490 application notes that each cellular phone can poll the
`
`other cell phones to transmit their location and status. But each of the cellular phones that poll
`
`do not include a “forced message alert” in the poll, nor do they track the poll responses. (Id. at
`
`14, ¶14). And, in contrast to the ʼ970 patent, the ʼ490 application allows a sending PDA/cell
`
`phone to remotely control a recipient PDA/cell phone without action by the remote phone
`
`operator:
`
`In spite of the rapid advance in cellular phone technology, it would also be desirable
`to actuate a remote cellular phone to annunciate an audio message to alert the
`remote user that there is an emergency (or for another reason) . . . and cause the
`remote phone to call another phone number (as an example, to automatically
`establish an 800 number conference call), to vibrate, or increase the loud-ness of an
`announcement without any action by the re-mote phone operator.
`
`(Id. at 9 ¶4). Thus, the ʼ490 application performs steps for remotely controlling recipient phones
`
`without a manual response from the recipient remote phone operator. The ʼ490 application does
`
`
`
`3
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 5 of 27 PageID #:
`9942
`
`not teach or suggest a “forced message alert software application program” as described and
`
`claimed in the ’970 Patent. Accordingly, the ʼ970 Patent is not entitled to the priority date of the
`
`ʼ490 application, September 21, 2004.
`
`Second, the ’648 application also does not disclose a forced-message alert as required by
`
`the independent claims of the ’970 Patent. The ʼ648 application is directed to automatically
`
`shifting from GPRS/EDGE/CDMA/1XEVDO to SMS when any cellular phone of a plurality of
`
`cellular phones of communication net participants makes or receives a voice call and shift back
`
`upon completion of the voice call. (ʼ648 application, Abstract, 16-61). Embodiments also cause
`
`an alert (audible voice alert, beep) to emanate from a user’s device when an incoming message
`
`arrives, show a location of the sender of a message on the user’s display, and cause an alert
`
`(verbal announcement, vibration, or text) when another participant of the communication net
`
`participants is within a predetermined distance. (Id. at 42-44, ¶¶69, 72, 74). But nowhere does
`
`the ʼ648 application teach or suggest at least a “forced message alert” let alone the “forced
`
`message alert software application program” as described and claimed in the ’970 Patent.
`
`Accordingly, the ʼ970 Patent is not entitled to the priority date of the ʼ648 application, April 17,
`
`2006.
`
`Third, the ’830 application also does not disclose a forced-message alert as required by
`
`the independent claims of the ’970 Patent. The ʼ830 application is directed to a plurality of
`
`cellular phone/PDA/GPS devices of communication net participants with advanced
`
`communication software (ACS) application programs that can: poll other cell phone/PDA/GPS
`
`devices of the plurality for location, status, and identity; and remotely control one or more of the
`
`other cell phone/PDA/GPS devices of the plurality. (ʼ830 application, 7-8 (specification pages
`
`
`
`4
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 6 of 27 PageID #:
`9943
`
`3:6-4:2), 5-40). At best, the ʼ830 application generically mentions the ability of one phone to
`
`control certain functions on another phone:
`
`Each cell phone has the ability to remotely control from one cellular
`phone/PDA/GPS any of the other cellular phone/PDA/GPS systems phones
`including the ability to control remote cellular phones to make verbal prerecorded
`announcements, place return calls, place calls to another phone 15 number, vibrate,
`execute text to speech software, change sound intensity, remotely control software
`and functions resi-dent on the remote phone and process and display information
`by touching the display screen at their location on the PDA display and selecting
`the appropriate soft switch; the ability to layer a sufficient number of switches or
`buttons on the PDA display to perform the above functions without overlaying the
`map; and the ability to change the 20 nomenclature of a series of soft switches and
`symbology for different operating environments.
`
`(Id. at 23 (spec. pages 19:11-20); see also id., 6 (spec. pages 2:14-18)). But nowhere
`
`does the ’830 application disclose the concepts of (i) a manual-response list or (ii)
`
`requiring a manual response from such a response list to clear the response list from the
`
`recipient’s phone—two concepts that were explicitly added during prosecution to gain
`
`allowance of the independent claims of the ’970 patent. (See ’970 Pros. Hist., 120-31).
`
`Accordingly, the ʼ970 patent is not entitled to the priority date of the ʼ830 application,
`
`December 19, 2006. Because the ’970 patent is not entitled to priority to any of the
`
`earlier-filed applications, it is entitled to a priority date of only November 26, 2008—its
`
`actual filing date.
`
`
`
`In IPR2018-01079, the PTAB agreed, holding that the ’970 Patent was not
`
`entitled to an earlier priority date than November 26, 2008. (IPR2018-01079, Paper 9, 8
`
`(explaining that “Patent Owner, at this stage, has made no attempt to show that the ’490
`
`application, or any intervening applications through which the ’970 patent claims
`
`priority, satisfy the written description requirement of 35 U.S.C. § 112. Because Patent
`
`Owner has not yet met its burden, Patent Owner has not established that the ’970 patent is
`
`
`
`5
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 7 of 27 PageID #:
`9944
`
`entitled to rely on a filing date earlier than November 26, 2008, the filing date of the ’970
`
`patent.”; see also IPR2018-01079, Paper 1, 13-17).
`
`Samsung incorporates by reference the Petition for Inter Partes Review of the
`
`’970 Patent (IPR2018-010719, Paper 1), including the exhibits thereto, and the Petition
`
`for Inter Partes Review of the ‘970 Patent (IPR2023-00056, Paper 2), including the
`
`exhibits thereto, as if set forth fully in these Invalidity Contentions. Samsung also
`
`incorporates by reference the PTAB’s Decision granting inter partes review of the ’970
`
`Patent (IPR2018-010719, Paper 9) as if set forth fully in these Invalidity Contentions.
`
`Samsung further incorporates by reference the PTAB’s Final Written Decision
`
`Determining All Challenged Claims Unpatentable (IPR2018-010719, Paper 34) as if set
`
`forth fully in these Invalidity Contentions.
`
`Moreover, a Request for Ex Parte Reexamination of the ’970 Patent was filed on
`
`May 15, 2020 (In re Reexamination of Beyer U.S. Patent No. 8,213,970, filed May 15,
`
`2020) which is incorporated by as if set forth fully herein, and Reexamination
`
`Application No. 90/014,507.
`
`For purposes of these Invalidity Contentions, Samsung has assumed that the
`
`priority date of the ’970 Patent is its actual filing date, November 26, 2008, but has taken
`
`into account AGIS’s claimed September 21, 2004 date. Samsung reserves the right to
`
`supplement its invalidity contentions to the extent AGIS demonstrates that the ’970
`
`Patent is entitled to a different priority date.
`
`B.
`
`Prior Art References
`
`Samsung identifies the following prior art now known to Samsung to anticipate or render
`
`obvious the ’970 Asserted Claims under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either
`
`
`
`6
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 8 of 27 PageID #:
`9945
`
`expressly or inherently as understood by a PHOSITA, or based on AGIS’s apparent
`
`interpretation of the claims.
`
`1.
`
`Prior Art Patents and Publications
`
`The following patents and publications are prior art for the ’970 Asserted Claims under at
`
`least 35 U.S.C. §§ 102(a), (b), (e), and/or (g). Invalidity claim charts for these references are
`
`attached as Exhibits A1 through A20. References that are marked with an asterisk (“*”) are
`
`anticipatory. To the extent AGIS contends that any of these references are not enabling, then the
`
`claims of the ’970 Patent are invalid for lack of enablement.
`
`1.
`
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”), issued June 28, 1994 and
`
`filed June 26, 1992.* See Ex. A1.
`
`2.
`
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”), issued Apr. 21, 1998 and filed
`
`September 19, 1994. See Ex. A2.
`
`3.
`
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”), issued Feb. 8, 2005 and
`
`filed Sept. 17, 1998.* See Ex. A3.
`
`4.
`
`U.S. Patent Publication No. 2006/0218232 to Kubala et al. (“Kubala”), published
`
`Sept. 28, 2006 and filed Mar. 24, 2005.* See Ex. A4.
`
`5.
`
`U.S. Patent Publication US2003/0217109 to Ordille et al. (“Ordille”), published
`
`Nov. 20, 2003 and filed June 26, 2002.* See Ex. A5.
`
`6.
`
`U.S. Patent Publication No. 2008/0219416 to Roujinsky (“Roujinsky”), published
`
`Sept. 11, 2008 and filed Feb. 15, 2008.* See Ex. A6.
`
`7.
`
`U.S. Patent No. 7,609,669 to Sweeney (“Sweeney”), issued Oct. 27, 2009 and
`
`filed Feb. 14, 2005. See Ex. A7.
`
`8.
`
`U.S. Patent No. 7,386,589 to Tanumihardja et al. (“Tanumihardja”), issued June
`
`10, 2008 and filed June 27, 2001.* See Ex. A8.
`7
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 9 of 27 PageID #:
`9946
`
`9.
`
`U.S. Patent No. 6,816,878 to Zimmers et al. (“Zimmers”), issued Nov. 9, 2004
`
`and filed Feb. 11, 2000. See Ex. A9.
`
`10.
`
`U.S. Patent No. 7,912,913 to Accapadi et al. (“Accapadi”), issued Mar. 22, 2011
`
`and filed Sept. 15, 2005. See Ex. A10.
`
`11.
`
`U.S. Patent No. 7,619,584 to Wolf (“Wolf”), issued Nov. 17, 2009 and filed Sept.
`
`8, 2006. See Ex. A11.
`
`12. WO 2008/1188878 to Swanburg et al. (“Swanburg”), issued Oct. 2, 2008 and
`
`filed Mar. 24, 2008. See Ex. A12.
`
`13.
`
`U.S. Patent No. 7,272,382 by Servi et al. (“Servi”) published on September 18,
`
`2007 from an application filed on April 29, 2004. See Ex. A13.
`
`14. WO Publication No. 2000/022860 by Degnbol (“Degnbol”) published on April
`
`20, 2000 from an application filed on October 12, 1999. See Ex. A14.
`
`15.
`
`GB Publication No. 2,367,979 by Lynch (“Lynch”) published on April 17, 2002
`
`from an application filed on October 06, 2000. See Ex. A15.
`
`16.
`
`U.S. Patent Publication No. 2006/0256959 by Hymes et al. (“Hymes”) published
`
`on November 16, 2006 from an application filed on April 12, 2006. See Ex. A17.
`
`17.
`
`U.S. Patent No. 7,975,242 by Forstall et al. (“Forstall”) published on July 10,
`
`2008 from an application filed on December 19, 2007. See Ex. A18.
`
`18.
`
`United States Patent No. 7,330,112 by Emigh (“Emigh”) issued on Feb. 12, 2008
`
`from an application filed on Sep. 6, 2004. See Ex. A19.
`
`19.
`
`U.S. Patent No. 2003/0128195 (“Banerjee”) published on July 10, 2003 from an
`
`application filed on January 8, 2002. See Ex. A20.
`
`
`
`8
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 10 of 27 PageID #:
`9947
`
`20.
`
`U.S. Patent Publication No. 2006/0223518 (“Haney ’518”) published on October
`
`5, 2006 from an application filed on April 4, 2005. See Ex. A21.
`
`21.
`
`U.S. Patent Publication No. 2006/0199612 (“Beyer ’612”) published on
`
`September 7, 2006 from an application filed on April 17, 2006. See Ex. A22.
`
`22.
`
`U.S. Patent No. 7,031,728 (“Beyer ’728”) issued on April 18, 2006 from an
`
`application filed on September 21, 2004. See Ex. A23.
`
`Samsung’s investigation into prior art patent and publication references remains ongoing,
`
`and Samsung reserves the right to identify and rely upon additional patent or publication
`
`references.
`
`2.
`
`Prior Art Systems
`
`Samsung’s investigation and discovery for prior art systems remains ongoing, and
`
`Samsung reserves the right to identify and rely upon prior art system references. In particular,
`
`Samsung reserves the right to rely on any prior art systems that are described in the patent and
`
`publication prior art listed above or that was developed, sold, or manufactured by the original
`
`assignees or authors of the patent and publication references above.
`
`In addition, Samsung reserves the right to rely on the following systems that are prior art
`
`to the ’970 Asserted Claims under at least 35 U.S.C. §§ 102(a), (b) and/or (g). Invalidity claim
`
`charts for these references are attached as Exhibits A16. References that are marked with an
`
`asterisk (“*”) are anticipatory.
`
`1. Products, components, systems, and methods invented, designed, developed, reduced to
`practice, and/or in public use or on sale related to Force XXI Battle Command, Brigade
`and Below (“FBCB2”).* FBCB2 qualifies as prior art under § 102 because it was either
`(1) in public use or on sale in the United States no later than September 21, 2003 or (2)
`reduced to practice in the United States no later than September 21, 2004 without being
`abandoned, suppressed, or concealed. FBCB2 was likely in public use or on sale in the
`U.S. and/or reduced to practice in the United States by or before the summer of 1993. To
`support FBCB2’s substantive disclosures and status as prior art under § 102, Samsung
`reserves the right to rely on the following sources of evidence:
`9
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 11 of 27 PageID #:
`9948
`
`a. Force XXI Battle Command Brigade and Below-Blue Force Tracking
`(FBCB2-BFT). A Case Study in the Accelerated Acquisition of a Digital
`Command and Control System during Operations Enduring Freedom and
`Iraqi Freedom, by James L. Conatser and Vincent E. Grizio, dated
`December 2005 and retrieved from
`http://www.dtic.mil/dtic/tr/fulltext/u2/a443273.pdf on November 21, 2017
`(“Conatser”)
`b. Blue Force Tracking The Afghanistan and Iraq Experience and Its
`Implications for the U.S. Army, by Richard J. Dunn, III, stamped with a
`copyright dated 2003 and retrieved from
`http://www.northropgrumman.com/AboutUs/AnalysisCenter/Documents/p
`dfs/BFT-Afghanistan-and-Iraq-Exper.pdf on November 21, 2017
`(“Dunn”)
`c. FORCE XXI BATTLE COMMAND, BRIGADE AND BELOW
`(FBCB2), retrieved from
`https://web.archive.org/web/20170204113146/http://www.dote.osd.mil/pu
`b/reports/FY1999/pdf/army/99fbcb2.pdf on November 21, 2017
`(“99FBCB2”).
`d. Testimony and documents of or from Neil Siegel, including any
`documents he has produced or will produce.
`Samsung reserves the right to rely on other sources of evidence identified as discovery
`and Samsung’s investigation progresses. The substantive disclosures of FBCB2, as
`compared to the limitations of the ’970 Asserted Claims is provided in Exhibit A16.
`
`Obviousness
`
`Below is a listing of exemplary combinations of references that would render obvious the
`
`C.
`
`’970 Asserted Claims. In addition to the exemplary combinations of references below, the
`
`combination of (1) any of the references listed as anticipatory in the section above with the
`
`knowledge of one of ordinary skill or (2) any of the exemplary combinations listed below with
`
`the knowledge of ordinary skill would render obvious the ’970 Asserted Claims.
`
`These identified combinations are exemplary, and Samsung reserves the right to identify
`
`additional combinations during expert discovery and later stages of the case.
`
`1.
`
`Independent Claim 2 Exemplary Combinations
`
`Kubala in view of Hammond, Emigh, Johnson, Pepe, Banjeree,, in further view of
`Haney ’518, Beyer ’612, Beyer ’728
`• Hammond in view of Johnson, Pepe, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch,
`Hymes, Forstall in further view of Haney ’518, Beyer ’612, Beyer ’728
`
`
`
`10
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 12 of 27 PageID #:
`9949
`
`
`• Johnson in view of Pepe, Hammond, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch,
`Hymes, Forstall
`
`• Ordille in view of Johnson, Pepe, Hammond, Kubala, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch,
`Hymes, Forstall
`
`• Roujinsky in view of Johnson, Pepe, Hammond, Kubala, Ordille, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch,
`Hymes, Forstall
`
`• Tanumihardja in view of Johnson, Pepe, Hammond, Kubala, Ordille, Roujinsky,
`Sweeney, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch, Hymes,
`Forstall
`
`
`Independent Claim 10 Exemplary Combinations
`
`• Kubala in view of Hammond, Emigh, Johnson, Pepe, in further view of Haney
`’518, Beyer ’612, Beyer ’728
`
`Hammond in view of Johnson, Pepe, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch,
`Hymes, Forstall in further view of Haney ’518, Beyer ’612, Beyer ’728
`• Johnson in view of Pepe, Hammond, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, Servi, Degnbol, Lynch,
`Hymes, Forstall
`
`• Ordille in view of Johnson, Pepe, Hammond, Kubala, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg.
`
`• Roujinsky in view of Johnson, Pepe, Hammond, Kubala, Ordille, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg; , Servi, Degnbol, Lynch,
`Hymes, Forstall
`
`• Tanumihardja in view of Johnson, Pepe, Hammond, Kubala, Ordille, Roujinsky,
`Sweeney, Zimmers, Accapadi, Wolf, Swanburg
`
`
`
`
`Dependent Claim 11 (Dependent on Claim 10) Exemplary Combinations
`
`2.
`
`3.
`
`The same exemplary combinations listed above for Claim 10 apply to Claim 11.
`
`Additional exemplary combinations for Claim 11 are listed below:
`
`
`
`11
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 13 of 27 PageID #:
`9950
`
`• Kubala in view of Hammond, Emigh, Johnson, Pepe, in further view of Haney
`’518, Beyer ’612, Beyer ’728
`
`• Hammond in view of Johnson, Pepe, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, in further view of Haney
`’518, Beyer ’612, Beyer ’728
`
`• Johnson in view of Johnson in view of Pepe, Hammond, Kubala, Ordille,
`Roujinsky, Sweeney, Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg.
`
`• Ordille in view of Johnson, Pepe, Hammond, Kubala, Ordille, Roujinsky,
`Sweeney, Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg
`
`Dependent Claim 12 (Dependent on Claim 10) Exemplary Combinations
`
`The same exemplary combinations listed above for Claim 10 apply to Claim 12.
`
`4.
`
`Additional exemplary combinations for Claim 12 are listed below:
`
`• Kubala in view of Hammond, Emigh, Johnson, Pepe, in further view of Haney
`’518, Beyer ’612, Beyer ’728
`
`• Hammond in view of Johnson, Pepe, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg, in further view of Haney
`’518, Beyer ’612, Beyer ’728
`
`• Johnson in view of Pepe, Hammond, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg
`
`Dependent Claim 13 (Dependent on Claim 10) Exemplary Combinations
`
`The same exemplary combinations listed above for Claim 10 apply to Claim 13.
`
`5.
`
`Additional exemplary combinations for Claim 13 are listed below:
`
`• Kubala in view of Hammond, Emigh, Johnson, Pepe, in further view of Haney
`’518, Beyer ’612, Beyer ’728
`
`• Hammond in view of Johnson, Pepe, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg; Servi, Degnbol, Lynch,
`Hymes, Forstall, in further view of Haney ’518, Beyer ’612, Beyer ’728
`
`• Johnson in view of Pepe, Hammond, Kubala, Ordille, Roujinsky, Sweeney,
`Tanumihardja, Zimmers, Accapadi, Wolf, Swanburg; Servi, Degnbol, Lynch,
`Hymes, Forstall
`
`12
`
`
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 14 of 27 PageID #:
`9951
`
`6.
`
`Motivation to Combine
`
`No showing of a specific motivation to combine prior art is required to combine the
`
`references disclosed in the sections above (and the respective sections below for each patent) and
`
`in the attached charts, as each combination of art would have yielded expected results and at
`
`most would simply represent a known alternative to one of skill in the art. See Apple Inc. v.
`
`Samsung Elecs. Co., 839 F.3d 1034, 1058 (Fed. Cir. 2016); Intercontinental Great Brands LLC
`
`v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017); KSR Int’l Co. v. Teleflex, Inc., 127
`
`S. Ct. 1727, 1739-40 (2007) (rejecting the Federal Circuit’s “rigid” application of the teaching,
`
`suggestion, or motivation to combine test, and instead applying an “expansive and flexible”
`
`approach). Indeed, the Supreme Court held that a PHOSITA is “a person of ordinary creativity,
`
`not an automaton” and “in many cases a person of ordinary skill in the art will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S.Ct. at 1742.
`
`Nevertheless, in addition to the information contained in the section immediately above and
`
`elsewhere in these contentions, Defendants hereby identify motivations and reasons to combine.
`
`One or more combinations of the prior art references identified above would have been
`
`obvious because these references would have been combined using: known methods to yield
`
`predictable results; known techniques in the same way; a simple substitution of one known,
`
`equivalent element for another to obtain predictable results; and/or a teaching, suggestion, or
`
`motivation in the prior art generally. See Apple, 839 F.3d at 1077; Intercontinental Great
`
`Brands, 869 F.3d at 1344. In addition, it would have been obvious to try combining the prior art
`
`references identified above because there were only a finite number of predictable solutions
`
`and/or because known work in one field of endeavor prompted variations based on predictable
`
`design incentives and/or market forces either in the same field or a different one. See ACCO
`
`Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016); Sanofi-Aventis
`13
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 15 of 27 PageID #:
`9952
`
`Deutschland GmbH v. Glenmark Pharms. Inc., USA, 748 F.3d 1354, 1360 (Fed. Cir. 2014);
`
`Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1329 (Fed. Cir. 2017); KSR, 127 S. Ct.
`
`at 1742. Further, the combinations of the prior art references identified above and in the claim
`
`charts would have been obvious because the combinations represent known potential options
`
`with a reasonable expectation of success. See InTouch Techs., Inc. v. VGO Comms., Inc., 751
`
`F.3d 1327, 1347 (Fed. Cir. 2014).
`
`Additional evidence that there would have been a motivation to combine the prior art
`
`references identified above includes the interrelated teachings of multiple prior art references; the
`
`effects of demands known to the design community or present in the marketplace; the existence
`
`of a known problem for which there was an obvious solution encompassed by the Asserted
`
`Claims; the existence of a known need or problem in the field of the endeavor at the time of the
`
`alleged inventions; and the background knowledge that would have been possessed by a
`
`PHOSITA. See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1359
`
`(Fed. Cir. 2017); Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344
`
`(Fed. Cir. 2017); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016);
`
`Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322-23 (Fed. Cir. 2012).
`
`The motivation to combine the teachings of the prior art references disclosed herein is
`
`also found in the references themselves and in: (1) the nature of the problem being solved; (2)
`
`the express, implied and inherent teachings of the prior art; (3) the knowledge of PHOSITAs; (4)
`
`the predictable results obtained in combining the different elements of the prior art; (5) the
`
`predictable results obtained in simple substitution of one known element for another; (6) the use
`
`of a known technique to improve similar devices, methods, or products in the same way; (7) the
`
`predictable results obtained in applying a known technique to a known device, method, or
`
`
`
`14
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 16 of 27 PageID #:
`9953
`
`product ready for improvement; (8) the finite number of identified predictable solutions that had
`
`a reasonable expectation of success; and (9) known work in various technological fields that
`
`could be applied to the same or different technological fields based on design incentives or other
`
`market forces.
`
`Moreover, combining the references disclosed in the attached Exhibits would have been
`
`obvious, as the references identify and address the same technical issues, such as, with location
`
`and position tracking, mapping, and communication between users of devices, including mobile
`
`devices. For example, the Johnson, Pepe, Hammond, Kubala, Ordille, Roujinsky, Sweeney,
`
`Tanumihardja, Zimmers, Accapadi, Wolf, Emigh, Swanberg, Servi, Degnbol, Lynch, Hymes,
`
`and Forstall references are generally related to the sending, receiving, and tracking of messages
`
`between wireless devices. Each of those references further seeks to solve problems associated
`
`with sending and receiving messages among groups of people who are located in different
`
`places. Accordingly, someone of skill in the art at the time of the alleged inventions would have
`
`been motivated to combine the teachings of those and similar references that deal with improving
`
`systems and methods for the transmission of messages among devices located in different places.
`
`Samsung also incorporates by reference the motivations to combine discussed in the
`
`invalidity expert reports served by LG, Apple, Google, Waze, Lyft, Uber and other defendants
`
`(including Samsung’s previous invalidity expert report) in the previous lawsuits filed by AGIS
`
`against those companies. Samsung also incorporates by reference motivations to combine
`
`discussed in any IPR or reexamination proceedings concerning the Patents-in-Suit.
`
`D.
`
`Invalidity Under 35 U.S.C. § 112
`
`Samsung provides below its preliminary invalidity contentions under § 112.
`
`
`
`15
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122-16 Filed 09/07/23 Page 17 of 27 PageID #:
`9954
`
`Legal Background Regarding the Indefiniteness, Enablement, and Written
`1.
`Description Requirements
`
`Section 112, ¶ 2 includes a definiteness requirement: “[T]he specification shall conclude
`
`with one or more claims particularly pointing out and distinctly claiming the subject matter
`
`which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. “[A] patent is invalid for
`
`indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail
`
`to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
`
`The definiteness requirement requires that the claim must set forth what the applicant
`
`regards as the invention, and do so with sufficient particularity and definiteness. Allen Eng’g
`
`Corp. v. Bartell Indus., 299 F.3d 1336, 1348 (Fed. Cir. 2002). Where it would be apparent to
`
`one of skill in the art, based on the patent specification, that the “invention” set forth in a claim is
`
`not what the patent applicant regarded as the invention, the claim is invalid. Id.
`
`35 U.S.C. § 112 further includes an enablement requirement: “The specification shall
`
`contain a written description . . . of the manner and process of making and using [the invention]
`
`in such full, clear, concise and exact terms as to enable any person skilled in the art to which it
`
`pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112,
`
`¶ 1.
`
`To satisfy the enablement requirement, the disc