Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 1 of 40 PageID #: 26729
`Case 1:13-cv-00919—LPS Document 307-3 Filed 03/10/21 Page 1 of 40 PageID #: 26729
`
`EXHIBIT 23
`
`EXHIBIT 23
`
`

`

`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 2 of 40 PageID #: 26730
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`LG ELECTRONICS INC.,
`LG ELECTRONICS USA, INC. and
`LG ELECTRONICS MOBILECOMM USA, INC.,
`
`
`Defendants.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`
`
`Defendants.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`NOKIA CORPORATION and NOKIA INC.,
`
`
`Defendants.
`
`
`C.A. No. 12-1595 (LPS)
`
`C.A. No. 12-1597 (LPS)
`
`C.A. No. 12-1599 (LPS)
`
`

`

`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 3 of 40 PageID #: 26731
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`HTC CORP. a/k/a HIGH TECH COMPUTER CORP.,
`and HTC AMERICA INC., EXEDEA, INC.,
`
`
`Defendants.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY INC.,
`
`
`Defendant.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`SONY MOBILE COMMUNICATIONS (USA) INC.
`f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION and
`SONY CORPORATION OF AMERICA,
`
`
`Defendants.
`
`
`
`C.A. No. 12-1600 (LPS)
`
`C.A. No. 12-1601 (LPS)
`
`C.A. No. 12-1602 (LPS)
`
`
`
`
`DEFENDANTS’ JOINT INITIAL INVALIDITY CONTENTIONS
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 4 of 40 PageID #: 26732
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`GOOGLE INC.,
`
`
`Defendant.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`YAHOO! INC.,
`
`
`Defendant.
`
`
`
`
`C.A. No. 13-0919 (LPS)
`
`C.A. No. 13-0920 (LPS)
`
`
`
`
`
`
`JOINT INITIAL INVALIDITY CONTENTIONS OF DEFENDANTS
`LG ELECTRONICS INC., LG ELECTRONICS USA, INC. AND LG ELECTRONICS
`MOBILECOMM U.S.A., INC.; BLACKBERRY LIMITED AND BLACKBERRY
`CORPORATION; NOKIA CORPORATION AND NOKIA INC.; HTC CORP. A/K/A
`HIGH TECH COMPUTER CORP, HTC AMERICA, INC., AND EXEDEA, INC.;
`MOTOROLA MOBILITY LLC, F/K/A MOTOROLA MOBILITY INC.; SONY MOBILE
`COMMUNICATIONS (USA) INC. F/K/A SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC., SONY CORPORATION, AND
`SONY CORPORATION OF AMERICA; GOOGLE INC.; AND YAHOO! INC.
`
`
`
`
`DEFENDANTS’ JOINT INITIAL INVALIDITY CONTENTIONS
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 5 of 40 PageID #: 26733
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`Defendants LG Electronics Inc., LG Electronics USA, Inc. and LG Electronics MobileComm
`
`U.S.A., Inc.; Blackberry Limited and Blackberry Corporation; Nokia Corporation and Nokia Inc.;
`
`HTC Corp. a/k/a High Tech Computer Corp, HTC America, Inc., and Exedea, Inc.; Motorola
`
`Mobility LLC, f/k/a Motorola Mobility Inc.; Sony Mobile Communications (USA) Inc. f/k/a Sony
`
`Ericsson Mobile Communications (USA) Inc., Sony Corporation, and Sony Corporation of America;
`
`Google Inc.; and Yahoo! Inc. (collectively, “Defendants”) serve their Joint Initial Invalidity
`
`Contentions (“Invalidity Contentions”) and accompanying document production on Plaintiff Arendi
`
`S.A.R.L. (“Plaintiff”). Each Defendant contends that each of the claims of U.S. Patent Nos.
`
`7,496,854 (“the ‘854 patent”), 7,917,843 (“the ‘843 patent”), 6,323,853 (“the ‘853 patent”),
`
`7,921,356 (“the ‘356 patent”), and 8,306,993 (“the ‘993 patent”) (collectively, “patents-in-suit”) that
`
`are asserted against that Defendant is invalid under at least 35 U.S.C. §§ 101, 102, 103, and/or 112.1
`
`I.
`
`INTRODUCTION
`
`Plaintiff filed this action alleging that the Defendants infringe some or all of the patents-in-
`
`suit. Each Defendant contends that the claims of the patents-in-suit asserted against that Defendant
`
`are invalid and not infringed. As indicated in its Disclosure of Asserted Claims and Infringement
`
`Contentions (“Infringement Contentions”), Plaintiff asserts some or all of claims 19, 25, 36, 43, 57,
`
`60, 63, 64, 72 and 73 of the ‘854 patent, claims 1, 8, 13, 15, 17-19, 23 and 30 of the ‘843 patent,
`
`claims 1, 5, 8, 9, 13, 16, 17, 18, 21 and 24 of the ‘993 patent, claims 1, 14-16 and 79 of the ‘853
`
`patent, and claims 1, 12, 16 and 20 of the ‘356 patent against numerous products of various
`
`Defendants. The Invalidity Contentions are based at least in part on Defendants’ current
`
`understanding of the asserted claims and Plaintiff’s apparent construction of those claims, as
`
`
`1 Because the patents-in-suit are not subject to the first inventor to file provisions of the America
`Invents Act, the pre-AIA version of 35 U.S.C. §§ 102, 103, and/or 112 apply to this case.
`
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 6 of 40 PageID #: 26734
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`reflected in its Infringement Contentions. Accordingly, the Invalidity Contentions, including the
`
`attached invalidity claim charts, may reflect alternative positions as to claim construction and scope.
`
`By including prior art that would anticipate or render obvious those claims based on Plaintiff’s
`
`apparent claim construction or on any other particular claim construction, Defendants are neither
`
`adopting Plaintiff’s claim construction, nor admitting to the accuracy of any particular claim
`
`construction.
`
`Plaintiff’s Infringement Contentions, which were only recently received, lack proper and
`
`complete disclosure as to each Defendant’s accused products. Accordingly, Defendants reserve the
`
`right to further supplement or modify the Invalidity Contentions, including the prior art disclosed
`
`and the stated grounds of invalidity.
`
`Defendants further reserve the right to modify, amend, or supplement their Invalidity
`
`Contentions, depending upon the Court’s construction of the claims, Plaintiff’s proposed
`
`constructions of the claims during the claim construction process, additional information obtained
`
`during discovery, including discovery of third parties, any findings as to the priority dates of the
`
`asserted claims, and/or positions that Plaintiff or expert witness(es) may take concerning claim
`
`construction, infringement, and/or invalidity issues. The Invalidity Contentions pertain only to the
`
`asserted claims as identified by Plaintiff’s Infringement Contentions. Defendants reserve the right to
`
`modify, amend, or supplement the Invalidity Contentions to show the invalidity of any additional
`
`claims that the Court may allow Plaintiff to later assert. Defendants further reserve the right to
`
`supplement their accompanying document production should they later find additional relevant
`
`documents, software and/or source code.
`
`Defendants further may rely on inventor admissions concerning the scope or state of the prior
`
`art relevant to the asserted claims; the patent prosecution histories for the asserted patents and related
`
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 7 of 40 PageID #: 26735
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`patents and/or patent applications; any deposition or trial testimony of the named inventors on the
`
`asserted patents; and the papers filed and any evidence produced or submitted by Plaintiff in
`
`connection with this or related litigation. In particular, Defendants reserve the right to contend that
`
`the asserted claims are invalid under 35 U.S.C. § 102(f) in the event Defendants obtain evidence that
`
`the named inventor Atle Hedloy did not invent the subject matter in the asserted claims.
`
`Prior art not included in these contentions, whether known or not known to Defendants, may
`
`become relevant. In particular, Defendants are currently unaware of the extent, if any, to which
`
`Plaintiff will contend that limitations of the asserted claims are not disclosed in the prior art
`
`identified in the Invalidity Contentions. Accordingly, Defendants reserve the right to identify other
`
`references that would render obvious the allegedly missing limitation(s) of the disclosed device or
`
`method.
`
`Discovery has recently begun and Defendants anticipate that additional prior art may be
`
`found. Thus, Defendants reserve the right to revise, amend, and/or supplement the information
`
`provided herein, including identifying, charting, and relying on additional references, should such art
`
`be found.
`
`Additionally, because discovery is on-going, Defendants reserve the right to present
`
`additional items of prior art under 35 U.S.C. §§ 102(a), (b), (e), and/or (g), and/or § 103 located
`
`during discovery or further investigation, and to assert contentions of invalidity under 35 U.S.C. §§
`
`102(c), (d), or (f). For example, as Defendants’ investigations continue, Defendants may issue
`
`subpoenas to third parties believed to have knowledge, documentation, and/or corroborating
`
`evidence concerning the validity of the asserted claims.
`
`In addition to the prior art identified below and the accompanying invalidity claim charts,
`
`Defendants also incorporate by reference any prior art disclosed at any time by parties in the present
`
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 8 of 40 PageID #: 26736
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`litigation or by any party to any other litigation or U.S. Patent and Trademark Office proceeding
`
`involving the patents-in-suit or related patents, including without limitation, the following
`
`litigations:
`
`• Arendi U.S.A., Inc. v. Microsoft Corporation, 1:02-cv-00343-T (D.R.I.)
`
`• Arendi Holding Ltd. v. Microsoft Corporation and Dell Inc., 1:09-cv-00119-LPS (D.
`
`Del.)
`
`Defendants reserve the right to supplement or otherwise amend these Invalidity Contentions
`
`in response to any original or rebuttal expert report, or in response to the Court’s claim construction
`
`order. Defendants also reserve the right to supplement or otherwise amend these Invalidity
`
`Contentions in response to any rebuttal evidence by Plaintiff or as otherwise may be necessary or
`
`appropriate under the circumstances.
`
`II.
`
`IDENTIFICATION OF PRIOR ART
`
`Defendants list below prior art that anticipates or renders obvious one or more of the asserted
`
`claims of the patents-in-suit under 35 U.S.C. §§ 102 and/or 103. Invalidity claim charts for these
`
`references with respect to the asserted claims of the ‘853, ‘854, ‘843, ‘356, and ‘993 patents are
`
`attached in Exhibits A-E, respectively.2 A complete listing of these references is also provided in
`
`Exhibit G.
`
`Defendants’ claim charts identify exemplary and/or representative portions and/or features of
`
`the prior art. However, the identified prior art may contain additional descriptions of or alternative
`
`
`2 Plaintiff has asserted certain dependent claims against certain Defendants without asserting the
`claim(s) from which they depend. See Claim 79 of the ‘853 patent; Claims 5, 13 of the ‘993
`patent. In those instances, Defendants have identified exemplary portions and/or features of the
`prior art that disclose the elements of such asserted dependent claims but dispute any contention
`from Plaintiff that those dependent claims have been properly asserted. Defendants reserve the
`right to seek relief on these claims as necessary and appropriate.
`
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 9 of 40 PageID #: 26737
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`support for the claim limitations. Defendants may rely on uncited portions or features of the
`
`identified prior art, other documents, and expert testimony, to provide context or to aid in
`
`understanding the identified prior art and the state of the art. Citations to a particular figure in a
`
`reference include the caption and description of the figure and any text relating to the figure.
`
`Similarly, citations to particular text referring to a figure include the figure and caption as well.
`
`A.
`
`Anticipation
`
`In Tables 1A-1C, Defendants identify prior art that anticipates certain of the asserted claims
`
`of the patents-in-suit under at least 35 U.S.C. §§ 102(a), (b), (e), (f) and/or (g), either expressly or
`
`inherently as understood by a person having ordinary skill in the art at the time of the invention. In
`
`some instances, Defendants have treated certain prior art as anticipatory where certain elements are
`
`inherently present based on Plaintiff’s apparent claim constructions as reflected in its Infringement
`
`Contentions. To the extent that any of the prior art identified below in Tables 1A-1C is found not to
`
`anticipate particular claims of the patents-in-suit, and/or to the extent Plaintiff contends that the prior
`
`art does not disclose one or more features of the asserted claims, Defendants may rely upon that
`
`prior art to render those claims obvious, either alone, in view of the knowledge of a person of skill in
`
`the art or in combination with other prior art disclosed herein, including with those patents,
`
`publications, or systems referenced in Tables 1A-1C and/or 2A-B.
`
`1.
`
`Prior Art Patents
`
`The following patents are anticipatory prior art to at least one asserted claim of the patents-
`
`in-suit under at least one of 35 U.S.C. §§ 102(a), (b), (e), and/or (g):3
`
`
`3 Citations to, statements regarding, or contentions made in these Invalidity Contentions that any
`patent included in the Invalidity Contentions is prior art to the patents-in-suit is not intended to
`be construed as contrary to positions that may be taken by any Defendant in other litigations that
`such patent is invalid and/or unenforceable.
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 10 of 40 PageID #: 26738
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`Inventor/Reference Name
`Luciw ‘777
`
`Luciw ‘447
`
`Borovoy
`
`Capps
`
`Malcolm
`
`Domini
`
`Allen
`
`Giordano
`
`Gupta
`
`Hachamovitch
`
`Dugan
`
`Etelapera
`
`Coad ‘652
`
`Deluca ‘001
`
`Siitonen ‘796
`
`Fukuyama
`
`Goodwin
`
`Haynes et al.
`
`Pandit
`
`Smiga
`
`Allard et al.
`
`Table 1A
`
`Patent Number and Date(s)
`U.S. Patent 5,434,777 (filed on March 18, 1994 and issued on July
`18, 1995)
`U.S. Patent 5,477,447 (filed on July 30, 1993 and issued on
`December 19, 1995)
`U.S. Patent No. 5,873,107 (filed on March 29, 1996 and issued on
`February 16, 1999)
`U. S. Pat. No. 5,666,502 (filed on August 7, 1995 and issued on
`September 9, 1997)
`U. S. Pat. No. 6,256,631 (filed on September 30, 1997 and issued
`on July 3, 2001)
`U.S. Patent No. 6,085,206 (filed on June 20, 1996 and issued on
`July 4, 2000)
`U.S. Pat. No. 6,026,410 (filed on February 10, 1997 and issued on
`February 15, 2000)
`U.S. Pat. No. 6,870,828 (filed on June 3, 1997 and issued on
`March 22, 2005)
`U.S. Pat. No. 6,199,079 (filed on March 20, 1998 and issued on
`March 6, 2001)
`U.S. Patent No. 6,377,965 (filed on November 7, 1997 on issued
`on April 23, 2002)
`U.S. Patent No. 5,375,200 (filed on November 13, 1992 and issued
`on December 20, 1994)
`U.S. 6,262,735 (filed on Nov. 4, 1998 with a priority of Nov. 5,
`1997 and issued on Jul. 17, 2001)
`U.S. Pat. No. 5,966,652 (filed on August 29, 1996 and issued on
`October 12, 1999)
`U.S. Pat. No. 5,784,001 (filed on July 21, 1997 and issued on July
`21, 1998)
`U.S. Pat. No. 6,049,796 (filed on February 24, 1997 and issued on
`April 11, 2000)
`U.S. Pat. No. 5,483,352 (filed on August 26, 1993 and issued on
`January 9, 1996)
`U.S. Pat. No. 5,708,804 (filed on July 26, 1994 and issued on
`January 3, 1998)
`U.S. Pat. No. 6,442,591 (filed on Nov. 2, 1998 and issued on Aug.
`27, 2002)
`U.S. Pat. No. 5,859,636 (filed on December 27, 1995 and issued on
`January 12, 1999)
`U.S. Pat. No. 6,029,171 (filed on February 10, 1997 and issued on
`February 22, 2000)
`U.S. Pat. No. 5,815,142 (filed on Dec. 21, 1995 with a priority of
`Jul. 25, 1994 and issued on Sep. 29, 1998)
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 11 of 40 PageID #: 26739
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`Lange
`
`Luciw ‘735
`
`Miller
`
`Nishiyama
`
`Schabes
`
`Chalas
`
`Mogilevsky
`
`La Chance
`
`Shulman
`
`Alanara
`
`Gourdol
`
`Horodeck
`
`Gehani
`
`Lahtinen
`
`Johnson
`
`JP 09-8942
`JP 10-155038
`
`Tso
`
`
`
`2.
`
`U.S. Pat. No. 4,674,065 (filed on December 10, 1985 and issued on
`June 16, 1987)
`U.S. Patent No. 5,644,735 (filed on April 19, 1995 and issued on
`July 1, 1997)
`U.S. Patent No. 5,946,647 (filed on February 1, 1996 and issued on
`August 31, 1999)
`U.S. Pat. No. 6,421,693 (filed on October 15, 1998 and issued on
`July 16, 2002)
`U.S. Pat. No. 6,424,983 (filed on May 26, 1998 and issued on July
`23, 2002)
`U.S. Pat. No. 5,392,386 (filed on Feb. 3, 1994 and issued on Feb.
`21 1995)
`U.S. Pat. No. 5,649,222 (filed on May 8, 1995 and issued on July
`15, 1997)
`U.S. Pat. No. 5,918,233 (filed on May 30, 1996 and issued on June
`29, 1999)
`U.S. Pat. No. 6,026,233 (filed on May 27, 1997 and issued on
`February 15, 2000)
`U.S. Pat. No. 6,188,909 (filed on February 20, 1997 and issued on
`February 13, 2001)
`U.S. Pat. No. 6,493,006 (filed on May 10, 1996 and issued on
`December 10, 2002)
`U.S. Pat. No. 4,544,276 (filed on October 6, 1983 and issued on
`October 1, 1985)
`U.S. Pat. No. 5,946,687 (filed on Oct. 10, 1997 and issued on Aug.
`31, 1999)
`European Patent Application Number 91304533.2, publication
`number 0458563A2 (published on May 20, 1991)
`U.S. Patent No. 5,748,974 (filed on December 13, 1994 and issued
`on May 5, 1998)
`JP 09-8942 (filed on June 20, 1995 and published on Jan. 10, 1997)
`JP 10-155038 (filed on November 20, 1996 and published on June
`9, 1998)
`U.S. Pat. No. 6,085,201 (filed on June 28, 1996 and issued on July
`4, 2000)
`
`Prior Art Publications
`
`The following publications are anticipatory prior art to at least one asserted claim of the
`
`patents-in-suit under at least one of 35 U.S.C. §§ 102(a), (b) and/or (g):
`
`Table 1B
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 12 of 40 PageID #: 26740
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`Author/Reference Name
`Claris Emailer: Getting
`Started
`Emacs
`AddressMate Plus
`
`AddressMate
`
`NeXT Vol.1
`
`NeXT Vol.2
`LiveDoc/Drop Zones
`
`LiveDoc
`
`Drop Zones
`
`Newton Guide
`
`Nokia Product
`Publications
`
`Palantir
`Pensoft
`Schlimmer 1
`
`Schlimmer 2
`
`
`
`Reference and Date(s)
`Claris Emailer: Getting Started (version 2.0) (published in or before
`January 1998)
`Emacs Unified Directory Client v 1.30b manual (published in 1998)
`User Manual for AddressMate and AddressMate Plus, AddressMate
`Plus for Windows User’s Manual (published on or before 1995)
`AddressMate™ Automatic Envelope Addressing Program, User’s
`Manual (published on or before 1991)
`NeXT General Reference Volume 1 (“NeXT Vol.1”) and NeXT
`General Reference Volume 2 (“NeXT Vol.2”) (offered for sale /
`sold / publicly used in the United States at least by 1992)
`The April 1998 issue of SIGCHI Bulletin was dedicated to Apple’s
`Advanced Technology Group. The Bulletin included an
`introduction section and two articles, by James Miller and Thomas
`Bonura, describing an Apple technology that allowed documents to
`reveal structures for identification and action. The articles are
`entitled “From Documents to Object: An Overview of LiveDoc”
`(“LiveDoc”) and “Drop Zones: An Extension of LiveDoc” (“Drop
`Zones”) and are sequential in the SIGCHI Bulletin from pages 53-63
`(collectively, “LiveDoc/Drop Zones”). LiveDoc/Drop Zones was
`published in April 1998.
`James Miller and Thomas Bonura, “From Documents to Object: An
`Overview of LiveDoc,” SIGCHI Bulletin, Vol. 30, No. 2, April
`1998, pp. 53-58.
`James Miller and Thomas Bonura, “Drop Zones: An Extension of
`LiveDoc, ” SIGCHI Bulletin, Vol. 30, No. 2, April 1998, pp. 59-63.
`The “Newton Programmer’s Guide: For Newton 2.0” (published by
`Apple Press in 1996)
`Nokia Product Publications pre-dating the priority date of the
`patents-in-suit generally include user guides, owner’s manuals and
`other product documents for at least the Nokia 9000/9000i
`Communicator series and Nokia 2010/2020 series.
`Palantir Software, Windows Spell Manual (published in 1986)
`Pensoft Perspective Handbook (published November 1992)
`Software Agents: Completing Patterns and Constructing User
`Interfaces by Leonard Hermens and Jeffrey Schlimmer, J. Artificial
`Intelligence Research 1 (1993) 61-89, was published November
`1993
`A Machine-Learning Apprentice for the Completion of Repetitive
`Forms by Leonard Hermens and Jeffrey Schlimmer (published May
`5, 1993)
`
`
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`3.
`
`Prior Art Knowledge, Uses, Sales, Offers for Sale, and Inventions by Others
`
`The following items of prior art are anticipatory for at least one asserted claim of the patents-
`
`in-suit under at least one of 35 U.S.C. §§ 102(a), (b) and/or (g):
`
`Table 1C
`
`Reference Name
`IAD System
`
`IAD
`
`Geographic Detectors
`
`Data Detectors
`
`System Description and Date(s)
`Apple computer system running IAD and Simple Text and/or Claris
`Emailer, and for some elements Geographic Detectors
`
`Apple Internet Address Detectors (“IAD”) product, also referred to
`as “Data Detectors,” was offered for sale, sold, publicly
`disseminated, and publicly used in the United States at least by
`September 8, 1997
`
`US Geographic Detectors 1.0 (“Geographic Detectors”), which
`utilized Data Detectors, was offered for sale, sold, publicly
`disseminated, and publicly used in the United States around
`December 23, 1997
`
`Evidence of the availability of IAD, Geographic Detectors, and the
`IAD System include the following:
`
`• “Apple Introduces Internet Address Detectors,” September 8,
`1997
`• US Geographic Detectors Read Me file, containing metadata
`of December 23, 1997
`Evidence of the design and operation of IAD, Geographic Detectors,
`and the IAD System include the following:
`
`• “Apple Introduces Internet Address Detectors,” September 8,
`1997
`• US Geographic Detectors Read Me file, containing metadata
`of December 23, 1997
`• Web page for “Apple Data Detectors,” last updated
`December 30, 1996
`• Apple Internet Address Detectors User Manual, August 28,
`1997 (‘User Manual”)
`• “Apple, StarNine updates in mail,” February 23, 1998
`• Nardi, B. A., Miller, J. R. & Wright, D. J. (1998).
`“Collaborative, Programmable Intelligent Agents.”
`Communications of the ACM, Vol. 41 No. 3, March 1998
`(“Nardi”)
`• “Claris Em@iler Getting Started”
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 14 of 40 PageID #: 26742
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`• Source code for IAD, available for inspection at DLA Piper
`• A system running IAD Version 1.0.1 (which is an example
`of an IAD System), available for inspection at DLA Piper
`• A system running IAD Version 1.0.2 and US Geographic
`Detectors 1.0 (which is an example of an IAD System),
`available for inspection at DLA Piper
`• Screenshots from the system running IAD Version 1.0.1
`(which is an example of an IAD System), available for
`inspection at DLA Piper
`• Screenshots from the system running IAD Version 1.0.2 and
`US Geographic Detectors 1.0 (which is an example of an
`IAD System), available for inspection at DLA Piper
`CyberDesk (known and/or publicly used in the United States by at
`least 1997) was known, used, and described in
`(1) Dey, Anind et al., CyberDesk: A Framework for Providing Self-
`Integrating Ubiquitous Software Services, Technical Report, GVU
`Center, Georgia Institute of Technology, GIT-GVU-97-10, June
`1997 (“CyberDesk Technical Report”);
`(2) Dey, Anind et al., CyberDesk: A Framework for Providing Self-
`Integrating Ubiquitous Software Services, UIST 97, ACM 0-89791-
`881-9/97/10 (“CyberDesk Summary”); and
`(3) Wood, Andrew et al., CyberDesk: Automated Integration of
`Desktop and Network Services, CHI 97, Atlanta GA, Mar. 22-27,
`1997, ACM 0-89791-802-9/97/03 (“CyberDesk Technical Note”)
`NeXT Computer System (offered for sale / sold / publicly used in
`the United States at least by 1989)
`
`See NeXT Computer System User’s Reference Manual
`Sony Magic Link (offered for sale / sold / publicly used in the
`United States at least by 1994)
`
`See Magic Link User’s Guide PIC-1000
`LiveDoc version 0.8 and its associated Data Detectors (aka Structure
`Detectors) technology (together, “LiveDoc Version 0.8”) were
`invented in the United States by employees of Apple Computer at
`least by December 5, 1995. The inventions of LiveDoc Version 0.8
`were later described in U.S. Patent 5,946,647 filed on February 1,
`1996, and the articles “From Documents to Object: An Overview of
`LiveDoc” and “Drop Zones: An Extension of LiveDoc” in the April
`1998 issue of SIGCHI Bulletin at pages 53-63 and were publicly
`demonstrated at Mac World on or around August 7, 1996 in the
`United States, and the inventions were not abandoned, suppressed,
`or concealed.
`Apple computer system running LiveDoc Version 0.8 and the
`applications Now Contact, Claris Emailer, and Claris Works
`
`CyberDesk
`
`NeXT
`
`Magic
`
`LiveDoc Version 0.8
`
`LiveDoc Version 0.8
`System
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 15 of 40 PageID #: 26743
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`Mac World Data
`Detectors System
`
`Word 97
`
`Newton
`
`Nokia Products
`
`
`
`Outlook
`
`(“LiveDoc Version 0.8 System”).
`A system running Apple Data Detectors, Now Contact, Claris
`Works, LiveDoc, and other software (together, “Mac World Data
`Detectors System”) was publicly demonstrated at the Mac World
`conference in the United States on August 7, 1996, as evidenced in
`the video produced.
`Microsoft Word 97 (offered for sale / sold / publicly used in the
`United States at least by 12/30/1996)
`The Apple Newton MessagePad 2000 handheld device (offered for
`sale, sold and/or publicly used in the United States by at least March
`1997)
`
`Evidence of the availability of Newton include the following:
`• “Apple Ships $1000 MessagePad 2000,” Washingtonpost
`Newsweek Interactive (March 24, 1997).
`• “Apple Unveils Super Newton New Messagepad More
`Powerful, Multifunctional,” New Orleans Times Picayune
`(October 29, 1996).
`• “Apple says initial MessagePad sales brisk,” Reuters (April
`20, 1997).
`• Joe Hutsko, “Treading Lightly in a Sea of Hand-Held
`Computers,” New York Times on the Web: Technology |
`Cybertimes (Aug. 21, 1997).
`Evidence of the design and operation of Newton include the
`following:
`• “MessagePad 2000 User’s Manual,” Apple Computer, Inc.
`(1997) (“Newton Manual”).
`• “Newton Programmer’s Guide: For Newton 2.0,” Apple
`Computer, Inc. (1996) (“Newton Guide”).
`• “Newton Programmer’s Guide: 2.1 OS Addendum,” Apple
`Computer, Inc. (1997) (“Newton 2.1 Addendum”).
`• “Newton 2.0 User Interface Guidelines,” Apple Computer,
`Inc. ISBN 0-201-48838-8 (first printing May 1996)
`(“Newton Guidelines”).
`• MessagePad 2000 with Newton 2.1 Operating System
`Datasheet, Apple Computer, Inc. (1997) (“Newton
`Datasheet”).
`• Newton MessagePad 2000 handheld device, available for
`inspection at DLA Piper LLP (US).
`• Photographs of MessagePad 2000
`“Nokia Products” include at least the Nokia 9000/9000i
`Communicator series and Nokia 2110/2120 series and were offered
`for sale, sold or publicly used in the United States prior to the
`priority date of the patents-in-suit.
`Microsoft Outlook 97 was offered for sale, sold, or publicly used in
`
`
`
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`Pensoft Perspective
`
`the United States at least by 1997.
`Evidence of the availability of Outlook include the following:
`• Getting Results with Microsoft Office 97 (copyright 1995-
`97)
`• Microsoft Outlook 97 (copyright 1995-1996), available for
`inspection at Covington & Burling LLP.
`Evidence of the design and operation of Outlook include the
`following:
`• Getting Results with Microsoft Office 97
`• Microsoft Outlook 97 and associated help files, available for
`inspection at Covington & Burling LLP.
`Pensoft Perspective running on the EO Personal Communicator 440
`(offered for sale, sold, or publicly used in the United States at least
`by 1993).
`
`Evidence of the availability of Pensoft Perspective includes the
`following:
`• Pensoft Corp., “Pensoft Corp.: Announces Perspective Built
`into Every EO Personal Communicator 440 and 880
`Models,” PR Newswire, Redwood City, CA, Nov. 4, 1992,
`pp. 1.
`• Pensoft Corp., “Pensoft Corp.: Announcement of Shipping,”
`PR Newswire, Redwood City, CA, Jan. 11, 1993, pp. 1.
`• Pensoft Perspective Handbook (“Pensoft”), published
`November 1992
`• Getting Started With Your EO Personal Communicator
`(“Getting Started”), published1993
`• EO Personal Communicator 440 running Pensoft
`Perspective, available for inspection at K&L Gates LLP
`
`
`
`For each of the prior art systems identified above in Table 1C, Defendants have listed in
`
`Exhibits A-E, G, and/or in Table 1C above one or more references as evidence of the relevant
`
`features and functionality. To the extent that multiple references describe aspects of the same
`
`underlying system, that system is a single system under 35 U.S.C. § 102. Some or all of the
`
`indicated references may also qualify as prior art publications under 35 U.S.C. § 102 and may be
`
`used as invalidating references under 35 U.S.C. §§ 102 and 103. In addition, Defendants continue to
`
`
`
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`Case 1:13-cv-00919-LPS Document 307-3 Filed 03/10/21 Page 17 of 40 PageID #: 26745
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`investigate each of these systems and reserve the right to supplement the contentions and
`
`accompanying claim charts after further investigation.
`
`B.
`
`Obviousness
`
`In Tables 2A-2B, Defendants identify additional prior art references that either alone or in
`
`combination with other prior art (including any of the above-identified anticipatory prior art listed in
`
`Tables 1A-1C, Exhibits A-E, and/or Exhibit G and the additional prior art disclosed in Tables 2A-2B
`
`and/or Exhibit F) render certain of the asserted claims of the patents-in-suit invalid as obvious under
`
`35 U.S.C. § 103. Invalidity claim charts for these additional references regarding the claims of the
`
`patents-in-suit are also attached to these Invalidity Contentions in Exhibit F. Defendants further
`
`identify combinations of prior art (including any of the above-identified anticipatory prior art in
`
`Tables 1A-1C and the additional prior art disclosed in Tables 2A-2B in this section) that render the
`
`asserted claim of the patents-in-suit invalid as obvious under 35 U.S.C. § 103 in Section B.3 below.
`
`In certain instances, the suggested obviousness combinations are provided in the alternative to
`
`Defendants’ anticipation contentions and should not be understood to suggest that any reference
`
`included in the combinations is not by itself anticipatory or does not by itself render the asserted
`
`claim obvious.
`
`1.
`
`Obviousness Prior Art Patents
`
`In addition to the prior art listed in Tables 1A-C, the following patents and patent
`
`applications are prior art under 35 U.S.C. § 103 to the asserted claims of the patents-in-suit and may
`
`also be used in combination with other references to render the asserted claims obvious:4
`
`
`4 Citations to, statements regarding, or contentions made in these Invalidity Contentions that any
`patent included in the Invalidity Contentions is prior art to the patents-in-suit is not intended to
`be construed as contrary to positions that may be taken by any Defendant in other litigations that
`such patent is invalid and/or unenforceable.
`
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`Table 2A
`
`Inventor/Reference Name
`Kang
`
`Patent Number
`U.S. Patent No. 6,741,994
`
`Forest
`
`Weiser
`
`Birrell
`
`Treider
`
`DeLuca
`
`Nielsen
`
`Webster
`
`Bates
`
`Ketola
`
`U.S. Patent No. 6,005,549
`
`U.S. Patent No. 5,786,819
`
`U.S. Patent No. 6,189,026
`
`WO 98/24031
`
`U.S. Patent No. 5,784,001
`
`U.S. Patent No. 5,963,964
`
`U.S. Patent No. 5,874,953
`
`U.S. Patent No. 6,247,043
`
`U.S. Patent No. 6,112,099
`
`Johnson ‘302
`
`U.S. Patent No. 5,799,302
`
`
`
`2.
`
`Obviousness Prior Art P