IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`PACT XPP SCHWEIZ AG,
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`Plaintiff,
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`v.
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`INTEL CORPORATION,
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`Defendant.
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`C.A. No. 19-1006-RGA
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`INTEL CORPORATION’S INITIAL INVALIDITY CONTENTIONS
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`PACT - Ex. 2011.0001
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`in accordance with Intel’s assumptions that PACT: (1) contends those claims are definite, (2) finds
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`written description support for those claims, and (3) contends that those claims are enabled.
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`However, Intel’s prior art invalidity contentions do not necessarily represent Intel’s agreement or
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`view as to the meaning, definiteness, written description support for, or enablement of any claim
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`contained therein, or that the patents-in-suit properly disclose structures corresponding to functions
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`in claims governed by 35 U.S.C. § 112 ¶ 6. In fact, Intel notes numerous grounds for invalidity
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`on such bases below.
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`Much of the art identified in the attached exhibits reflects common knowledge and the state
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`of the art before the filing date of the patents-in-suit. In many instances where a particular
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`contention calls for combining references, any one of a number of references can be combined.
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`The inclusion of certain exemplary combinations of prior art references does not exclude other
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`combinations based upon the claim charts attached hereto.
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`Each of the asserted claims of the patents-in-suit is anticipated by and/or obvious in view
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`of one or more of the items of prior art identified herein alone or in combination with other prior
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`art references. None of the contentions contained herein shall be construed as an admission that
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`any asserted claim satisfies the requirements of 35 U.S.C. § 112.
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`I.
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`THE ’763 PATENT
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`Claims 1, 2-10, 12-22, 24-26, 28, 30-31 of the ’763 Patent (the “Asserted ’763 Patent
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`Claims”) have been asserted by Plaintiff in this litigation.1
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`1 With respect to all patents-in-suit, pursuant to the Court’s Scheduling Order (D.I. 20), Intel has
`only provided invalidity contentions for the asserted claims of the patents-in-suit. Should
`Plaintiff later attempt to assert claims that they have not previously identified, Intel reserves the
`right to contend that any newly-asserted claims are invalid.
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`-3-
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`PACT - Ex. 2011.0002
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`A.
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`Identification of Prior Art, Basis for Invalidity Under 35 U.S.C. §§ 102, 103
`and Claim Charts
`1.
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`Anticipation
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`Based on Plaintiff’s October 11, 2019 Disclosure of Asserted Claims and Infringement
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`Contentions, Intel identifies prior art below and in Exhibit A, which contains charts disclosing
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`the identity of each item of prior art that anticipates each claim and/or renders it obvious. As
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`shown in Exhibit A and below, Intel has identified each prior art patent by its number, country of
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`origin, and date of issue. To the extent feasible, Intel has identified each prior art publication by
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`its title, date of publication, author, and publisher. Intel notes that it has applied the prior art in
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`accordance with Plaintiff’s improper assertions of infringement and improper applications of the
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`claims. Intel does not agree with Plaintiff’s application of the claims and denies infringement.
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`As set forth in Exhibit A and below, each of the following references, and any products,
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`devices, or processes used in the prior art that embody the subject matter disclosed in the
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`references, anticipates one or more asserted claims of the ’763 Patent by expressly or inherently
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`disclosing each and every limitation of those claims. To the extent PACT contends that any of the
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`following anticipatory references do not anticipate any asserted claim, Intel reserves the right to
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`contend that each of the anticipatory references renders the claims obvious either in view of the
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`reference alone or in combination with other references. A corresponding claim chart for each
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`reference is attached hereto in Exhibit A as indicated in the “Exh. No.” column.
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`While Intel has identified at least one citation per element or limitation for each reference
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`identified in the charts contained in Exhibit A, each and every disclosure of the same element or
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`limitation in the same reference is not necessarily identified. In an effort to focus the issues, Intel
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`cites exemplary relevant portions of identified references, even where a reference may contain
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`additional disclosure for a particular claim element or limitation, and reserves all rights to rely on
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`-4-
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`PACT - Ex. 2011.0003
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`other portions of the identified references to support its claims and/or defenses. Persons of
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`ordinary skill in the art generally read a prior art reference as a whole and in the context of other
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`publications and literature. Intel may rely on uncited portions of the prior art references and on
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`other publications and expert testimony to provide context and as aids to understanding and
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`interpreting the portions of the prior art references that are cited. Disclosures relating to initial
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`elements of dependent claims are disclosed in connection with the independent claims from which
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`they depend. Intel may also rely on uncited portions of the prior art references, other publications,
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`and the testimony of experts to establish that a person of ordinary skill in the art would have been
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`motivated to modify or combine certain of the cited references so as to render the claims obvious.
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`Where Intel cites to a particular figure in a prior art reference, the citation should be understood to
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`encompass the caption and description of the figure and any text relating to the figure in addition
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`to the figure itself. Conversely, where a cited portion of text refers to a figure, the citation should
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`be understood to include the figure as well.
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`a.
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`Prior Art Patents and Domestic and Foreign Patent
`Applications Under 35 U.S.C. § 102
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`Patent / Publication No. Country
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`Inventor(s)
`
`Date of Issue
`
`Exh.
`No.
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`A1
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`5,761,455
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`A2
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`0071727A1
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`A3
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`6,381,682
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`A4
`
`6,144,327
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`U.S.
`
`EP
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`U.S.
`
`U.S.
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`Edward C. King, Alan G.
`Smith, and James C. Lee
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`June 2, 1998
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`Robert L. Budzinski and
`Satish M. Thatte
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`February 16,
`1983
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`Karen L. Noel, Gregory
`H. Jordan, Paul K. Harter,
`Jr., and Thomas Benson
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`April 30, 2002
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`Robert J. Distinti and
`Harry F. SmithRobert J.
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`November 7,
`2000
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`-5-
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`PACT - Ex. 2011.0004
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`Exh.
`No.
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`Patent / Publication No. Country
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`Inventor(s)
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`Date of Issue
`
`A5
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`5,761,523
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`U.S.
`
`A6
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`A7
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`5,197,140
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`6,457,087
`
`A8
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`5,909,702
`
`
`
`U.S.
`
`U.S.
`
`U.S.
`
`b.
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`Prior Art Product
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`Paul Amba Wilkinson,
`James Warren
`Dieffenderfer, Peter
`Michael Kogge, and
`Nicholas Jerome
`Schoonover
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`Keith Balmer
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`Daniel D. Fu
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`Marc Jalfon, David
`Regenold, Franco Ricci,
`and Ramprasad Satagopan
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`Jun. 2, 1998
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`March 23, 1993
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`September 4,
`2002
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`June 1, 1999
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`Exh. No. Product Name
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`A9
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`A10
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`A11
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`A12
`
`--
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`TMS320C80
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`POWER4
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`Intel IXP2800
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`Date2
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`1996
`
`1999
`
`1999
`
`Sequent NUMA-Q
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`1997
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`Intel Nehalem-EX3
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`2010
`
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`2 See 93613DOC0000003-4. Intel reserves the right to modify and supplement this information
`in the event that additional data is identified.
`3 Nehalem-EX was sold by Intel at least as early as January 15, 2010. PACT is not entitled to a
`priority date earlier than the filing date of the application leading to the ’763 patent. To the
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`-6-
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`PACT - Ex. 2011.0005
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`2.
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`Obviousness
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`Each of the following combinations of prior art references renders the Asserted ’796 Patent
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`Claims invalid under 35 U.S.C. § 103 for obviousness. In KSR Int’l Co. v. Teleflex Inc., 127 S.Ct.
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`1727 (Apr. 30, 2007), the U.S. Supreme Court rejected the Federal Circuit’s rigid “teaching,
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`suggestion, or motivation” requirement in favor of a flexible, functional approach in which an
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`explicit finding of a “motivation” to combine prior art references is not required to establish
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`obviousness. The Supreme Court held that it is sufficient that a combination of elements was
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`“obvious to try” holding that, “[w]hen there is a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions, a person of ordinary skill has
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`good reason to pursue the known option within his or her technical grasp.” Id. at 1742; see also
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`Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining
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`that when the “combination of references results in a product or process that is more desirable, for
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`example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
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`efficient,” there exists a motivation to combine prior art references even when there is no explicit
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`suggestion in the references themselves “[b]ecause the desire to enhance commercial opportunities
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`by improving a product or process is universal—and even commonsensical”); LeapFrog
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`Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007) (applying KSR and holding
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`that “one of ordinary skill in the art of children’s learning toys would have found it obvious to
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`combine the Bevan device with the SSR to update it using modern electronic components in order
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`to gain the commonly understood benefits of such adaption, such as decreased size, increased
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`reliability, simplified operation, and reduced cost”).
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`extent PACT cannot prove an earlier priority date, the Nehalem-EX processor would invalidate
`the ’763 patent for at least the reasons set forth in PACT’s infringement contentions.
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`-7-
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`PACT - Ex. 2011.0006
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`Primary Reference
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`In Combination With
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`POWER4
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`POWER4
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`POWER4
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`POWER4
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`IXP2800
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`IXP2800
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`IXP2800
`
`IXP2800
`
`IXP2800
`
`IXP2800
`
`IXP2800
`
`IXP2800
`
`Wilkinson ’523
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`Fu ’087
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`Jalfon ’702
`
`Balmer ’140
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`King ’455
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`Budzinski ’727
`
`Noel ’682
`
`Distinti ’327
`
`Wilkinson ’523
`
`Fu ’087
`
`Jalfon ’702
`
`Balmer ’140
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`Sequent NUMA-Q
`
`King ’455
`
`Sequent NUMA-Q
`
`Budzinski ’727
`
`Sequent NUMA-Q
`
`Noel ’682
`
`Sequent NUMA-Q
`
`Distinti ’327
`
`Sequent NUMA-Q
`
`Wilkinson ’523
`
`Sequent NUMA-Q
`
`Fu ’087
`
`Sequent NUMA-Q
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`Jalfon ’702
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`-12-
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`PACT - Ex. 2011.0007
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`Primary Reference
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`In Combination With
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`Sequent NUMA-Q
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`Balmer ’140
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`King ’455
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`King ’455
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`Wilkinson ’523
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`Balmer ’140
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`Wilkinson ’523
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`Jalfon ’702
`
`Wilkinson ’523
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`Distinti ’327
`
`Wilkinson ’523
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`Fu ’087
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`Fu ’087
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`Fu ’087
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`Fu ’087
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`Fu ’087
`
`Fu ’087
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`Balmer ’140
`
`Balmer ’140
`
`Balmer ’140
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`Balmer ’140
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`Balmer ’140
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`Noel ’682
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`King ’455
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`Budzinski ’727
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`Balmer ’140
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`Jalfon ’702
`
`Distinti ’327
`
`Noel ’682
`
`Budzinski ’727
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`Noel ’682
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`Distinti ’327
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`Jalfon ’702
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`Noel ’682
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`Above combinations in further combination with the knowledge of a person of ordinary
`skill in the art
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`-13-
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`PACT - Ex. 2011.0008
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