Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 1 of 10
`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 1 of 10
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`EXHIBIT A
`EXHIBIT A
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 2 of 10
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`JAWBONE INNOVATIONS, LLC,
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`Plaintiff,
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`APPLE INC.,
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`v.
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`Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`§
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`§
`Case No. 6:21-cv-00984-ADA
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`§
`JURY TRIAL DEMANDED
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`§
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`PLAINTIFF’S DISCLOSURE OF
`ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`Plaintiff Jawbone Innovations, LLC, (“Jawbone” or “Plaintiff”) hereby makes the
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`following infringement disclosures under the Court’s Standing Order Governing Proceedings in
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`Patent Cases with respect to United States Patent Nos. 8,019,091 (the “’091 Patent”), 7,246,058
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`(the “’058 Patent”), 8,280,072 (the “’072 Patent”), 8,321,213 (the “’213 Patent”), 8,326,611 (the
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`“’611 Patent”), 10,779,080 (the “’080 Patent”), 11,122,357 (the “’357 Patent”), 8,467,543 (the
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`“’543 Patent”), and 8,503,691 (the “’691 Patent”) (collectively, the “Jawbone Patents” or
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`“Asserted Patents”). Jawbone’s investigation is ongoing, and discovery is in its preliminary
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`stages. Accordingly, these disclosures are based on information available to Jawbone at this
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`time. Jawbone reserves the right to supplement this disclosure after further discovery from
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`Defendant Apple Inc. (“Apple” or “Defendant”) and non-parties, particularly documents and
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`other discovery regarding Defendant’s Accused Products. Jawbone also reserves the right to
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`assert additional claims of the Asserted Patents, accuse different products, or find alternative
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`literal and/or equivalent infringing elements in Defendant’s products.
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 3 of 10
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`I.
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`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`A.
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`ASSERTED CLAIMS
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`Apple has infringed and/or continues to infringe one or more of the following claims of
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`the Jawbone Patents in connection with the Accused Products set forth below:
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`• Claims 1-18 of the ’091 Patent;
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`• Claims 1-4 of the ’058 Patent;
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`• Claims 1-9 of the ’072 Patent;
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`• Claims 1-42 of the ’213 Patent;
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`• Claims 1-44 of the ’611 Patent;
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`• Claims 1-20 of the ’080 Patent;
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`• Claims 1-20 of the ’357 Patent;
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`• Claims 1, 3, 6-13, 19-23, and 26 of the ’543 Patent; and
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`• Claims 1-46 of the ’691 patent.
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`B.
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`ACCUSED INSTRUMENTALITIES
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`1.
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`Accused Products
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`Jawbone is currently aware that certain of Defendant’s products infringe one or more of
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`the Asserted Patents. Upon information and belief, these Accused Products include all versions
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`and variants of Apple smartphones, smart speakers, laptops, desktop computers, and earbuds
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`made, sold, offered for sale, used, or imported in the United States since 2015, including but not
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`limited to: all versions and variants of iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus,
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`iPhone SE (1st generation), iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPhone
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`XR, iPhone XS, iPhone XS Max, iPhone 11, iPhone 11 Pro, iPhone 11 Pro Max, iPhone SE (2nd
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`generation), iPhone 12 mini, iPhone 12, iPhone 12 Pro, iPhone 12 Pro Max, iPhone 13 mini,
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`2
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 4 of 10
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`iPhone 13, iPhone 13 Pro, iPhone 13 Pro Max, HomePod, HomePod Mini, AirPods (1st
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`generation), AirPods (2nd Generation), AirPods Pro, AirPods Max, Beats Solo Pro, Beats Solo 3
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`Wireless, Beats Studio 3 Wireless, Beats Fit Pro, Beats Studio Buds, Powerbeats, Powerbeats
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`Pro, all MacBook Pro and MacBook Air laptops (e.g. MacBook Pro (13-inch, 2018, Four
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`Thunderbolt 3 ports), MacBook Pro (15-inch, 2018), MacBook Pro (13-inch, 2019, Four
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`Thunderbolt 3 ports), MacBook Pro (15-inch, 2019), MacBook Pro (13-inch, 2019, Two
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`Thunderbolt 3 ports), MacBook Pro (16-inch, 2019), MacBook Pro (13-inch, 2020, Four
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`Thunderbolt 3 ports), MacBook Pro (13-inch, 2020, Two Thunderbolt 3 ports), MacBook Pro
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`(13-inch, M1, 2020), MacBook Pro (16-inch, 2021), MacBook Pro (14-inch, 2021), MacBook
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`Air (Retina, 13-inch, 2018), MacBook Air (Retina, 13-inch, 2019), MacBook Air (Retina, 13-
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`inch, 2020), MacBook Air (M1, 2020)), iMac Pro, and iMacs (e.g. iMac (Retina 5K, 27-inch,
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`2020), iMac (24-inch, M1, 2021), as well as software providing and/or utilizing acoustic noise
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`suppression functionalities, including but not limited to all versions of the iOS and macOS
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`operating systems, and applications including voice sensing, input, recording, and/or
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`transmission functionality, including but not limited to, Siri, CarPlay, Phone, Camera, Clips,
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`FaceTime, Voice Memos, and Walkie-Talkie...1 For avoidance of doubt, these products include
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`all versions and revisions thereto and associated software.
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`2.
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`Claim Charts
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`Claim charts identifying a location of every element of every asserted claim of the
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`Jawbone Patents within the Accused Products are attached hereto as Appendices A through I.
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`Jawbone believes that the Accused Products cited in the claim charts are representative of the
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`Accused Products, including all generations and versions.
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`1 Jawbone has provided additional information regarding certain aspects of the Accused Products in the attached
`Claim Charts, Appendices A-I.
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`3
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 5 of 10
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`Jawbone reserves the right to amend these claim charts, as well as other information
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`contained in this document and the Appendices attached hereto, to incorporate new information
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`identified after these contentions were served or learned during the course of discovery
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`including, but not limited to, information that is not publicly available or readily discernible
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`without discovery.2
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`C.
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`LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS
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`Jawbone asserts that, under the proper construction of the asserted claims and their claim
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`terms, the limitations of the asserted claims of the Jawbone Patents are literally present in the
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`Accused Products, as set forth in the claim charts attached hereto as Appendices A through I.
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`Jawbone contends that any and all elements found not to be literally infringed are infringed
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`under the doctrine of equivalents because the differences between the claimed inventions and the
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`accused instrumentalities, if any, are insubstantial.
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`Jawbone also contends that Defendant has directly infringed and/or continues to directly
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`infringe the asserted claims by making, using offering for sale, selling, and importing into the
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`United States the accused instrumentalities. Furthermore, Jawbone also contends that Defendant
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`indirectly infringes by contributing to and/or inducing others (e.g., Defendant’s service providers
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`or partners, suppliers, Defendant’s customers, or its customers’ customers) to directly infringe
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`those claims by making or using the Accused Products. In addition, Jawbone contends that
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`Defendant directly infringes to the extent that activities of third parties may be legally
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`attributable to Defendant. Jawbone contends that Defendant induces infringement of the Jawbone
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`Patents by others (e.g., end-users of the Accused Products and Defendant’s customers) by
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`inducing others to make or use the Accused Products with the knowledge that this making or
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`2 Dkt. 23 at 1 n.1.
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`4
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 6 of 10
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`using directly infringes the Jawbone Patents or, in the alternative, with the belief that there was a
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`high probability that others infringe the Jawbone Patents, but while remaining willfully blind to
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`the infringement. Such indirect infringement is further evidenced by Defendant’s technical
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`materials and marketing materials including, but not limited to, marketing materials, product
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`briefs, product specifications, troubleshooting guides, technical support websites, reference
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`manuals, and other business documents and communications conveyed to Defendant’s
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`customers.
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`Jawbone also contends that Defendant has contributorily infringed and/or continues to
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`contributorily infringe with knowledge that the Accused Products, or the use thereof, infringe the
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`Jawbone Patents. Defendants knowingly and intentionally contributed to the direct infringement
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`of the Jawbone Patents by others, by supplying the Accused Products and/or associated software,
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`that embody a material part of the claimed invention of the Jawbone Patents, that are known by
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`the Defendant to be specially made or adapted for use in an infringing manner and are not staple
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`articles with substantial non-infringing uses.
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`Pursuant to the Court’s Standing Order Governing Patent Cases, Jawbone reserves the right
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`to amend its Infringement Contentions as to literal infringement or infringement under the doctrine
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`of equivalents in light of the Court’s claim construction.
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`D.
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`PRIORITY DATES
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`Each of the asserted claims of the ‘091 Patent has an earliest invention date in June 2000.
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`Each of the asserted claims of the ‘091 Patent is further entitled to at least the priority date of its
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`earliest application, U.S. Provisional Patent Application No. 60/219,297, with a filing date of
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`July 19, 2000.
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`5
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 7 of 10
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`Each of the asserted claims of the ‘058 Patent has an earliest invention date in June 2000.
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`Each asserted claim is further entitled to at least the filing date of its earliest application, U.S.
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`Provisional Patent Application No. 60/294,383, filed May 30, 2001.
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`Each of the asserted claims of the ‘072 Patent is entitled to at least the priority date of its
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`earliest application, U.S. Patent Application No. 10/400,282, with a filing date of March 27,
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`2003.
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`Each asserted claim of the ’213 Patent has an earliest invention date in June 2005. Each
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`of the asserted claims of the ‘213 Patent is further entitled to at least the filing date of its earliest
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`application, U.S. Patent Application No. 11/805,987 filed May 25, 2007.
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`Each asserted claim of the ’611 Patent has an earliest invention date of June 2005. Each
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`of the asserted claims of the ‘611 Patent is further entitled to at least the filing date of its earliest
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`application, U.S. Patent Application No. 11/805,987, filed May 25, 2007.
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`Each asserted claim of the ’080 Patent has an earliest invention date of June 2005. Each
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`of the asserted claims of the ‘080 Patent is further entitled to at least the filing date of its earliest
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`application, U.S. Provisional Patent Application No. 60/934,551, filed June 13, 2007.
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`Each asserted claim of the ’357 Patent has an earliest invention date of June 2005.Each of
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`the asserted claims of the ‘357 Patent is further entitled to at least the filing date of its earliest
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`application, U.S. Provisional Patent Application No. 60/934,551, filed June 13, 2007.
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`Each asserted claim of the ’543 Patent has an earliest invention date of June 2000. Each
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`of the asserted claims of the ‘543 Patent is further entitled to at least the filing date of its earliest
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`application, U.S. Provisional Patent Application No. 60/368,209, filed March 27, 2002.
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`6
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 8 of 10
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`Each asserted claim of the ’691 Patent has an earliest invention date of June 2005. Each
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`of the asserted claims of the ’691 Patent is further entitled to at least the filing date of its earliest
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`application, U.S. Provisional Patent Application No. 60/934,551, filed June 13, 2007.
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`Jawbone reserves the right to establish an earlier date of invention based upon actions
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`related to conception and reduction to practice of the claimed inventions.
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`II.
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`PRODUCTION OF DOCUMENTS PURSUANT TO PARAGRAPH 2 OF THE
`STANDING ORDER GOVERNING PATENT CASES
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`Jawbone is producing or making available for inspection documents that are in Jawbone’s
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`possession, custody, or control, as set forth in the Standing Order Governing Proceedings in
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`Patent Cases.
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`Dated: January 13, 2022
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`Respectfully submitted,
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` /s/ Peter Lambrianakos
`Raymond W. Mort, III
`Texas Bar No. 00791308
`Email: raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
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`OF COUNSEL:
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`Alfred R. Fabricant (pro hac vice to be filed)
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice)
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice to be
`filed)
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
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`7
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 9 of 10
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`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`ATTORNEYS FOR PLAINTIFF
`JAWBONE INNOVATIONS, LLC
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`Case 6:21-cv-00984-ADA Document 39-1 Filed 05/02/22 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 13, 2022, a true and correct copy of the above and
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`foregoing document has been served by email on all counsel of record.
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`/s/ Peter Lambrianakos
` Peter Lambrianakos
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