throbber

`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`UNILOC USA, INC., et al.
`
`
`Plaintiffs,
`
`v.
`
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`APPLE INC.,
`BLACKBERRY CORPORATION, ET AL.,
`KAKAO CORPORATION,
`LINE EURO-AMERICAS CORP., ET AL.,
`VIBER MEDIA S.A.R.L.,
`VOXERNET LLC,
`WHATSAPP, INC.,
`AOL INC.
`BEETALK PRIVATE LTD.
`FACEBOOK, INC.
`GREEN TOMATO LIMITED
`SONY INTERACTIVE ENTERTAINMENT
`TANGOME, INC. D/B/A TANGO
`
`Case No. 2:16-cv-642-JRG
`
`LEAD CASE
`
`
`
`Case No. 2:16-cv-0638-JRG
`Case No. 2:16-cv-0639-JRG
`Case No. 2:16-cv-0640-JRG
`Case No. 2:16-cv-0641-JRG
`Case No. 2:16-cv-0643-JRG
`Case No. 2:16-cv-0644-JRG
`Case No. 2:16-cv-0645-JRG
`Case No. 2:16-cv-0722-JRG
`Case No. 2:16-cv-0725-JRG
`Case No. 2:16-cv-0728-JRG
`Case No. 2:16-cv-0731-JRG
`Case No. 2:16-cv-0732-JRG
`Case No. 2:16-cv-0733-JRG
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`
`
`
`Pursuant to Local Patent Rule 3-3 and the Court’s Docket Control Order (“DCO”), the
`
`undersigned Defendants in the above-captioned cases (collectively, “Defendants”) set forth their
`
`Invalidity Contentions concerning U.S. Patent Nos. 7,535,890 (“the ’890 patent”), 8,199,747
`
`(“the ’747 patent”), 8,243,723 (“the ’723 patent”), 8,724,622 (“the ’622 patent”) and 8,995,433
`
`(“the ‘433 patent”) (collectively, the “Asserted Patents”).1
`
`These Invalidity Contentions are served pursuant to the Court’s DCO. Defendants also
`
`1 These Preliminary Invalidity Contentions should not be construed as a waiver to any defense, objection, or motion
`related to personal jurisdiction or venue, and each Defendant maintains any and all objections, defenses, and
`motions relating to jurisdiction and venue that have been previously raised. For example, Kakao Corp. maintains
`that the Court lacks personal jurisdiction over it and has filed a motion to dismiss for lack of personal jurisdiction.
`Sony Interactive Entertainment LLC maintains that the Court lacks personal jurisdiction over it and that venue is
`improper in this case, and instead avers that it has been improperly named in this suit. VoxerNet LL, Apple Inc.,
`Facebook, Inc. and WhatsApp, Inc., also maintain that venue is not proper in the cases against them.
`
`
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 1
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`

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`serve herewith the document production accompanying these disclosures. These contentions set
`
`forth Defendants’ preliminary Invalidity Contentions with respect to the claims currently
`
`asserted by Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, “Plaintiff” or
`
`“Uniloc”).
`
`I.
`
`INTRODUCTORY STATEMENT
`
`The Asserted Claims2 of the Asserted Patents are neither novel nor non-obvious in view
`
`of the state of the prior art and the understanding of those of ordinary skill in the art at the time
`
`of the alleged inventions. The Asserted Claims instead attempt to lay claim over the use of
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`“instant voice messaging systems,” “generating an instant voice message,” systems and methods
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`for “transmitting [] selected recipients and [] instant voice message[s] [] over [various]
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`networks,” an “instant messaging application,” and other features and functionality, which were
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`well-known in the field prior to the alleged inventions of the Asserted Patents.
`
`The Asserted Claims are also invalid because they fail to claim patent-eligible subject
`
`matter under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)
`
`and its progeny, as set forth herein. The Asserted Claims are also invalid for lack of written
`
`description and lack of enablement under 35 U.S.C. § 112, as explained herein.
`
`II.
`
`INVALIDITY CONTENTIONS
`
`The following contentions are based on Defendants’ current understanding of the
`
`Asserted Claims as applied in Plaintiff’s Infringement Contentions, without the benefit of claim
`
`construction and only limited discovery. Accordingly, these Invalidity Contentions may reflect
`
`various potential and alternative positions regarding claim construction and scope. To the extent
`
`these contentions reflect or suggest a particular interpretation or reading of any claim element,
`
`2 As used herein, the term “Asserted Claims” encompasses all claims that Plaintiff asserts against each individual
`Defendant in these consolidated cases.
`
`
`
`2
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 2
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`

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`Defendants do not adopt, advocate, or acquiesce to such an interpretation or reading. Nor do
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`these Invalidity Contentions constitute any admission by Defendants that any accused products
`
`or services, including any current or past versions of those products or services, are covered by
`
`any Asserted Claim. Defendants do not take any position herein regarding the proper scope or
`
`construction of the Asserted Claims.
`
`Any assertion herein that a particular limitation is disclosed by a prior art reference or
`
`references may be based in part on Plaintiff’s apparent interpretation, as identified in Plaintiff’s
`
`Infringement Contentions and/or Complaints in these actions, and is not intended to be, and is
`
`not, an admission by Defendants that any such construction is supportable or correct. To the
`
`extent the following contentions reflect constructions of claim limitations consistent with or
`
`implicit in Plaintiff’s Infringement Contentions, no inference is intended, nor should any be
`
`drawn, that Defendants agree with or concedes those claim constructions. Defendants expressly
`
`do not do so, and reserves its right to contest them.
`
`To the extent that prior art cited for a particular limitation discloses functionality that is
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`the same or similar in some respects to the alleged functionality in the accused products and/or
`
`services as set forth in Plaintiff’s Infringement Contentions, Defendants do not concede that
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`those limitations are in fact met by those accused functionalities.
`
`Defendants further reserve the right to seek to supplement and amend these disclosures
`
`and associated document production based on further investigation, analysis, and discovery,
`
`Defendants’ consultation with experts and others, and contentions or court rulings on relevant
`
`issues such as claim construction and priority dates. For example, since discovery is in the early
`
`stages, deposing the alleged inventors may reveal information that affects the disclosures and
`
`contentions herein. Also, Defendants have not completed discovery from third parties who have
`
`
`
`3
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`Uniloc's Ex. 2002, Page 3
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`

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`information concerning the prior art cited herein and possible additional art. Defendants also
`
`reserve the right to seek leave to amend these Invalidity Contentions and/or to modify their
`
`selection of prior art references in the event that Plaintiff serves supplemental or modified
`
`infringement contentions.
`
`Because Defendants are continuing their search for and analysis of relevant prior art,
`
`Defendants reserve the right to seek to revise, amend, and/or supplement the information
`
`provided herein, including identifying, charting, and/or relying upon additional prior art
`
`references, relevant disclosures, and bases for Invalidity Contentions. Additional prior art,
`
`disclosures, and invalidity defects, whether or not cited in this disclosure and whether known or
`
`not known to Defendants, may become relevant as investigation, analysis, and discovery
`
`continue. 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 by Defendants.
`
`To the extent that such an issue arises, Defendants reserve the right to identify and rely upon
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`other references or portions of references regarding the allegedly missing limitation(s).
`
`Additionally, because discovery has only recently commenced, Defendants reserve the
`
`right to present additional prior art references and/or disclosures under 35 U.S.C. §§ 102(a), (b),
`
`(e), (f), and/or (g), and/or § 103, located during the course of such discovery or further
`
`investigation, and to assert invalidity under 35 U.S.C. §§ 102(c), (d), or (f), to the extent that
`
`such discovery or investigation yields information forming the basis for such invalidity.
`
`A.
`
`Identity of Each Item of Prior Art—P.R. 3-3 (a)
`
`Pursuant to P.R. 3-3 (a), and subject to Defendants’ reservation of rights, Defendants
`
`identify each item of prior art that anticipates or renders obvious one or more of the Asserted
`
`Claims in the attached Prior Art Index submitted herewith. See Appendix A, infra. To the
`
`
`
`4
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`Uniloc's Ex. 2002, Page 4
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`

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`extent that the references listed in Appendix A are not identified as items of prior art that
`
`anticipate or render obvious an Asserted Claim, Defendants intend to rely on these references as
`
`background and as evidence of the state of the art at the time of Plaintiff’s alleged invention.
`
`Additionally, the prior art references cited by Defendants include references that are
`
`related patent applications and issued patents that contain substantially the same subject matter
`
`(e.g., published U.S. patent applications, and issued U.S. patents, foreign applications or issued
`
`patents). Any citation to or quotation from any of these patent applications or patents, therefore,
`
`should be understood as encompassing any parallel citation to the same subject matter in other
`
`related or corresponding applications or patents. For example, where a claim chart cites a
`
`published patent application that ultimately issued as a patent with substantially the same written
`
`description, Defendants may rely upon the published patent application and/or the issued patent
`
`as prior art.
`
`Defendants also reserve the right to later rely upon all references or portions of references
`
`provided in Appendix A to supplement or amend their disclosures contained herein. Also, to the
`
`extent not expressly mentioned herein, Defendants incorporate by reference (1) any and all prior
`
`art contained or identified in documents produced thus far by Plaintiff in this or any other
`
`proceeding, and (2) any and all additional materials regarding or bearing upon invalidity in
`
`Plaintiff’s possession or control that have not been produced to date, to the extent that any exist.
`
`Each disclosed item of prior art describing a product, system, or other implementation
`
`made in the United States is evidence of a prior invention by another under 35 U.S.C. § 102(g),
`
`as evidenced by the named inventors, authors, organizations, and publishers involved with each
`
`such reference. Defendants further intend to rely on admissions of the named inventors
`
`concerning the prior art, including statements found in the Asserted Patents, their prosecution
`
`
`
`5
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`Uniloc's Ex. 2002, Page 5
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`

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`histories, related patents and/or patent applications, any deposition testimony, and the papers
`
`filed and any evidence submitted by Plaintiff in conjunction with this litigation.
`
`Finally, Defendants note that disclosures in the Asserted Patents themselves either
`
`anticipate the claimed inventions or render the claimed inventions obvious, either alone or in
`
`combination with the prior art references disclosed in these contentions. Defendants may rely
`
`upon the statements in the Asserted Patents as admitted prior art. For example, in the
`
`Background of the Invention section of the Asserted Patents, the specification describes “prior
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`art IP telephony system 100,” which is also represented in Figure 1 of the Asserted Patents. See,
`
`e.g., U.S. Patent No. 7,535,890 (“the ’890 patent”)3 at 1:40-2:10, Fig. 1. System 100 has many
`
`similarities with the alleged inventions claimed in the Asserted Patents. In addition, the inventor
`
`states the following in the Background of the Invention section of the specification of the
`
`Asserted Patents:
`
`Voice messaging in both the VoIP and PSTN is known. More specifically, the
`foregoing systems may be provided with a facility to allow users to leave voice
`messages for recipients, which is a feature that is familiar to anyone who uses a
`telephone. Conventionally, leaving a voice message involves dialing the
`recipient's telephone number (often without knowing whether the recipient will
`answer), waiting for the connection to be established, speaking to an operator or
`navigating through a menu of options, listening to a greeting message, and
`recording the message for later pickup by the recipient. In that message, the user
`must typically identify himself or herself in order for the recipient to return the
`call.
`
`Instant text messaging is likewise known. More specifically, a user is provided
`with a client terminal, which is typically a general-purpose PC programmed with
`instant text messaging software and in data communication over an IP network
`with an instant text-messaging server. The instant text-messaging server
`presents the user, via the client terminal, with a list of persons who are currently
`“online” and ready to receive text messages on their own client terminals. The
`user then uses the client terminal to select one or more persons to whom the
`message will be sent and types in a text message. The text message is sent
`
`3 The specification of each Asserted Patent is identical, as all of the Asserted Patents resulted from continuation
`applications in the same patent family. As such, only one patent is cited here for clarity and brevity.
`
`
`
`6
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 6
`
`

`

`immediately via the text-messaging server to the selected one or more persons
`and is displayed on their respective client terminals.
`
`Id. at 2:11-42. Finally, the inventor recognizes that “[t]he VoIP telephones which may be
`
`implemented to provide instant voice messaging functionality according to the present invention
`
`are commercially available from many vendors, including Alcatel™, Lucent™, NEC™ and
`
`Cisco™, to name just a few.” Id. at 7:22-26.
`
`B. Whether Prior Art Anticipates or Renders Obvious—P.R. 3-3 (b)
`
`Pursuant to P.R. 3-3(b), and subject to Defendants’ reservation of rights, Defendants
`
`identify in the attached Exhibits A-1 to A-36, B-1 to B-28, C-1 to C-31, D-1 to D-37, E-1 to E-
`
`36 (Prior Art Invalidity Charts) prior art references that anticipate the Asserted Claims under at
`
`least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently, and/or render
`
`obvious the Asserted Claims under 35 U.S.C. § 103 either alone or in combination with other
`
`references. Each Asserted Claim is anticipated by, and/or obvious in view of, one or more items
`
`of prior art identified in these disclosures, alone or in combination. A table identifying
`
`exemplary ways in which the prior art references cited herein anticipate and/or render obvious
`
`the Asserted Claims is provided below in Part II.B.2 below.
`
`Much of the art identified in the attached exhibits/charts reflects common knowledge and
`
`the state of the art at the time of the earliest filing date of the Asserted Patents. Defendants may
`
`rely on additional citations, references, expert testimony, and other material to provide context or
`
`to aid in understanding the cited portions of the references and/or cited features of the systems.
`
`Defendants may also rely on expert testimony explaining relevant portions of references,
`
`relevant hardware or software products or systems, and other discovery regarding these subject
`
`matters. Additionally, Defendants may rely on other portions of any prior art reference for
`
`purposes of explaining the background and general technical subject area of the reference.
`
`
`
`7
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`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 7
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`

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`Where an individual reference is cited with respect to all elements of an Asserted Claim,
`
`Defendants contend that the reference anticipates the claim under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g) and also renders obvious the claim under 35 U.S.C. § 103, both by itself in view of the
`
`knowledge of a person of ordinary skill in the art and in combination with the other cited
`
`references to the extent the reference is not found to disclose one or more claim elements. A
`
`single prior art reference, for example, can establish obviousness where the differences between
`
`the disclosures within the reference and the claimed invention would have been obvious to one
`
`of ordinary skilled in the art. For example, “[c]ombining two embodiments disclosed adjacent to
`
`each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific
`
`Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). To the extent Plaintiff
`
`contends that an embodiment within a particular item of prior art does not fully disclose all
`
`limitations of a claim, Defendants accordingly reserve their right to rely on other embodiments in
`
`that prior art reference, or other information, to show single reference obviousness under 35
`
`U.S.C. § 103(a).
`
`Where an individual reference is cited with respect to fewer than all elements of an
`
`Asserted Claim, Defendants contend that the reference renders obvious the claim under 35
`
`U.S.C. § 103(a) in view of each other reference and combination of references that discloses the
`
`remaining claim element(s), as indicated in the claim charts submitted herewith. “Under § 103,
`
`the scope and content of the prior art are to be determined; differences between the prior art and
`
`the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art
`
`resolved. Against this background, the obviousness or nonobviousness of the subject matter is
`
`determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007), quoting Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). Exemplary motivations to combine references
`
`
`
`8
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 8
`
`

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`are discussed below and in the accompanying charts. Defendants reserve the right to rely upon
`
`any references or assertions identified herein in connection with Defendants’ contention that
`
`each Asserted Claim is invalid under 35 U.S.C. § 103 and to rely upon expert testimony
`
`addressing such references and assertions. The fact that prior art is identified to anticipate the
`
`Asserted Claims presents no obstacle in also relying on that reference as a basis for invalidity
`
`based on obviousness. It is established that “a rejection for obviousness under § 103 can be
`
`based on a reference which happens to anticipate the claimed subject matter.” In re Meyer, 599
`
`F.2d 1026, 1031 (C.C.P.A. 1979). To the extent any cited prior art item may not fully disclose a
`
`limitation of an Asserted Claim or is alleged by Plaintiff to lack disclosure of the limitation, such
`
`limitation is present and identified in another prior art item as shown in the attached claim charts.
`
`Many of the cited references cite or relate to additional references and/or products,
`
`services, or projects. Many of the cited references also cite software, hardware, or systems.
`
`Defendants may rely upon such cited additional references and copies or exemplars of such
`
`software, hardware, or systems. Defendants will produce or make available for inspection any
`
`such cited references, software, hardware, or systems that it intends to rely upon. Defendants
`
`may also rely upon the disclosures of the references cited and/or discussed during the
`
`prosecution of the Asserted Patents and/or the assertions presented regarding those references.
`
`Defendants reserve the right to further streamline and reduce the number of anticipation
`
`or obviousness references relied upon with respect to a given Asserted Claim and to exchange or
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`otherwise modify the specific references relied upon for anticipation and within each
`
`obviousness combination for each Asserted Claim. Discovery is at an early stage and Plaintiff
`
`has not provided any contentions or documentation with respect to any alleged pre-filing
`
`invention dates or with respect to claim limitations that are allegedly lacking or not obvious in
`
`
`
`9
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`Uniloc's Ex. 2002, Page 9
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`

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`the prior art. Each limitation of the Asserted Claims was well-known to those of ordinary skill in
`
`the art before, at least, December 18, 2003 (the application filing date for the ’890 patent, which
`
`the Asserted Patents identify for their earliest priority claim), as detailed below. Plaintiff’s also
`
`identifies this date as the priority date for each Asserted Claim in its P.R. 3-1 (e) Infringement
`
`Contentions. Plaintiff has provided no evidence showing that the Asserted Patents are entitled to
`
`an invention date earlier than December 18, 2003. As explained in detail throughout these
`
`Contentions, the Asserted Claims of the Asserted Patents are anticipated and/or obvious in view
`
`of the prior art references listed in Appendix A.
`
`1.
`
`Obviousness and Motivations to Combine
`
`Each prior art reference may be combined with one or more other prior art references to
`
`render obvious the Asserted Claims in combination, as explained in more detail below. The
`
`disclosures of these references also may be combined with information known to persons skilled
`
`in the art at the time of the alleged invention, and understood and supplemented in view of the
`
`common sense of persons skilled in the art at the time of the alleged invention, including any
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`statements in the intrinsic record of the Asserted Patents and related applications.
`
`A person of ordinary skill would have been motivated to combine the prior art cited in
`
`Appendix A based on the nature of the problem to be solved, the teachings of the prior art, and
`
`the knowledge of persons of ordinary skill in the art. The identified prior art references,
`
`including portions cited in the Prior Art Invalidity Charts, address the same or similar technical
`
`issues and suggest the same or similar solutions to those issues as the Asserted Claims. On such
`
`bases, on an element-by-element basis, Defendants expressly intend to combine one or more
`
`prior art items identified in Appendix A with each other to address any further contention from
`
`Plaintiff that a particular prior art item supposedly lacks one or more elements of an Asserted
`
`
`
`10
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`Uniloc's Ex. 2002, Page 10
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`Claim. In other words, Defendants contend that each charted prior art item can be combined
`
`with other charted prior art items when a particular prior art item lacks or does not explicitly
`
`disclose an element or feature of an Asserted Claim. The suggested obviousness combinations
`
`described below are not to be construed to suggest that any reference included in the
`
`combinations is not anticipatory. Further, to the extent that Plaintiff contends that any of the
`
`anticipatory prior art fails to disclose one or more limitations of the Asserted Claims, Defendants
`
`reserve the right to identify other prior art references that, when combined with the anticipatory
`
`prior art, would render the claims obvious despite an allegedly missing limitation. Defendants
`
`will further specify the motivations to combine the prior art, including through reliance on expert
`
`testimony, at the appropriate later stage of this lawsuit.
`
`A person of skill in the art would have been motivated to combine the above-identified
`
`prior art items. As the United States Supreme Court held in KSR International Company v.
`
`Teleflex, Inc., 550 U.S. 398, 416 (2007): “The combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable results.” The
`
`Supreme Court further held that, “[w]hen a work is available in one field of endeavor, design
`
`incentives and other market forces can prompt variations of it, either in the same field or a
`
`different one. If a person of ordinary skill can implement a predictable variation, § 103 likely
`
`bars its patentability. For the same reason, if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique is obvious unless its actual application is beyond his or her
`
`skill.” Id. at 417.
`
`The Court has further held that “in many cases a person of ordinary skill will be able to
`
`fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. It is sufficient
`
`
`
`11
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`Uniloc's Ex. 2002, Page 11
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`that a combination of elements was “obvious to try” holding that, “[w]hen there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, a person of ordinary skill has good reason to pursue the known options within his or
`
`her technical grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense.” Id. at 421. “In that instance the fact that a
`
`combination was obvious to try might show that it was obvious under § 103.” Id. Finally, the
`
`Supreme Court recognized that “[g]ranting patent protection to advances that would occur in the
`
`ordinary course without real innovation retards progress and may, in the case of patents
`
`combining previously known elements, deprive prior inventions of their value or utility.” Id. at
`
`419. All of the following rationales recognized in KSR support a finding of obviousness with
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`respect to each of the obviousness combinations disclosed herein:
`
`1) Combining prior art elements according to known methods to yield predictable
`
`results;
`
`2) Simple substitution of one known element for another to obtain predictable results;
`
`3) Use of known technique to improve similar devices (methods, or products) in the
`
`same way;
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`4) Applying a known technique to a known device (method, or product) ready for
`
`improvement to yield predictable results;
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`5) “Obvious to try”—choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success;
`
`6) Known work in one field of endeavor may prompt variations of it for use in either the
`
`same field or a different one based on design incentives or other market forces if the
`
`variations would have been predictable to one of ordinary skill in the art; and
`
`
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`12
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`7) Some teaching, suggestion, or motivation in the prior art that would have led one of
`
`ordinary skill to modify the prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`Certain of these rationales are discussed more specifically below. The fact that others are
`
`not discussed more specifically should not be interpreted as an admission or concession that it
`
`does not apply. To the contrary, the discussion below simply provides more explanation of these
`
`specific rationales.
`
`Defendants further contend that the prior art identified in these Invalidity Contentions is
`
`evidence of simultaneous or near-simultaneous independent invention by others of the alleged
`
`invention as recited in one or more of the Asserted Claims. Defendants reserve their right to rely
`
`on the simultaneous or near-simultaneous independent invention by others as further evidence of
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`the obviousness of the Asserted Claims.
`
`Each limitation of the Asserted Claims was well known to those of ordinary skill in the
`
`art before December 18, 2003 (the filing date of the ’890 patent, which the Asserted Patents
`
`identify for their earliest priority claim), as detailed below. Plaintiff also identifies this date as
`
`the priority date for each Asserted Claim in its P.R. 3-1 Infringement Contentions. Plaintiff has
`
`asserted no evidence suggesting that the Asserted Patents are entitled to an invention date earlier
`
`than December 18, 2003. The elements recited in the Asserted Claims are mere combinations
`
`and modifications of these well-known elements. A person of ordinary skill in the art would be
`
`able, and motivated, to improve the existing technology in the same or similar manner by
`
`combining or modifying the individual elements that were already known in the art to yield
`
`predictable results.
`
`Subject to the foregoing, Defendants identify the following exemplary reasons that
`
`
`
`13
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 13
`
`

`

`skilled artisans would have combined elements of the prior art to render obvious the Asserted
`
`Claims. The fact that others are not discussed more specifically should not be interpreted as an
`
`admission or concession that it does not apply. To the contrary, the discussion below simply
`
`provides more explanation of these specific rationales.
`
`a.
`
`
`Motivations Identified During Prosecution
`
`Defendants hereby expressly incorporate by reference any statements and reasons set
`
`forth by the Examiner during prosecution of the Asserted Patents and related patent applications
`
`as to why it would have been obvious to modify or combine references to achieve the limitations
`
`of the Asserted Claims.
`
`b.
`
`
`
`Combinations of Related References
`
`In some instances, multiple prior art publications and/or physical references discuss or
`
`address the same or substantially similar underlying system, software, or other project, such as
`
`commercial software products and successive versions thereof, or multiple publications
`
`discussing the same subject matter. Where multiple references discuss or relate to the same or
`
`related underlying projects, systems, or other subject matter, it was obvious to combine the
`
`discussions and disclosures of the references as they would be understood to describe features or
`
`potential features of the underlying project, system, or subject matter. Similarly, where one
`
`reference cites or discusses other references or their teachings, or references have one or more
`
`authors in common and a related area of subject matter, it was obvious to consider the teachings
`
`of the references in combination with each other due to the express relationships and
`
`commonalities between the references.
`
`c.
`
`
`
`Groups of References
`
`In addition to combinations of references and motivations to combine identified
`
`
`
`14
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Ex. 2002, Page 14
`
`

`

`elsewhere herein, including within claim charts, Defendants identify combinations and
`
`motivations to combine based on references grouped by subject matter, in the manner approved
`
`by courts applying Patent Local Rules regarding invalidity contentions. See, e.g., Avago Techs.
`
`Gen IP PTE Ltd. v. Elan Micro. Corp., No. C04-05385 JW (HRL), 2007 U.S. Dist. LEXIS
`
`97464, at *10-11 (N.D. Cal. Mar. 28, 2007) (organizing prior art references into “groups” and
`
`identifying combinations as a set of references “and/or” another set of references); Keithley v.
`
`Homestore.com, Inc., 553 F. Supp. 2d 1148, 1150 (N.D. Cal. 2008) (following Avago – “Apple’s
`
`grouping method is permissible under the Local Rules”).
`
`Furthermore, the particular cited disclosures for each reference addressed in the
`
`numbered subsections within this section constitute additional charts identifying where
`
`specifically in each item of prior art each applicable element of each Asserted Claim is found,
`
`pursuant to Local Patent Rule 3-3(c). The cited disclosures identified in this section are provided
`
`in addition to the citations set forth in the claim charts submitted separately herewith.
`
`(1)
`
`“Voice Message” References
`
`Each of the Asserted Claims of the Asserted Patents recites limitations regarding the
`
`transmission of an instant voice message. For purposes of these Contentions, references that
`
`disclose a system or process for transmitting an instant voice message are “Voice Message”
`
`references. While each reference that discloses any of the “Voice Message” limitations as
`
`indicated in the claim charts submitted herewith is a “Voice Message” reference, for convenient
`
`reference the following is a non-exhaustive list of references that are “Voice Message”
`
`references:
`
` Nokia 7650 User’s Guide Issue 4 (2002) (“Nokia 7650”)
`
` U.S. Patent No. 6,829,331 to Cullis (“Cullis ’331”)
`
`
`
`15
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's E

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