IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`SEVEN NETWORKS, LLC
`
`Plaintiff,
`
`v.
`
`APPLE INC.
`
`Defendant.
`
`Civil Action No. 2:19-cv-00115-JRG
`
`JURY TRIAL DEMANDED
`
`APPLE INC.’S P.R. 3-3 AND 3-4 INVALIDITY CONTENTIONS
`
`Pursuant to Patent Rules 3-3 and 3-4, and pursuant to the Docket Control Order entered
`
`by the Court (Dkt. 39), Defendant Apple Inc. (“Apple”) respectfully submits these invalidity
`
`contentions and accompanying document production with respect to the claims identified by
`
`Plaintiff SEVEN Networks, LLC (“SEVEN”) in its Patent Rule 3-1 Disclosure of Asserted
`
`Claims, Accused Instrumentalities, and Infringement Contentions. The Asserted Claims include
`
`claims 1, 3-7, 9-13, 15-17 of U.S. Patent No. 9,369,539 (“the ’539 patent”); claims 1-2, 4, 8-15,
`
`18, 20-21, 25-40 of U.S. Patent No. 9,438,550 (“the ’550 patent”); claims 1-5, 7-9, 11-15, 17-19,
`
`21-25, and 27-39 of U.S. Patent No. 9,473,914 (“the ’914 patent”); claims 24-50 of U.S. Patent
`
`No. 9,516,127 (“the ’127 patent”); claims 1-19 of U.S. Patent No. 9,603,056 (“the ’056 patent”);
`
`claims 1-9, 11-14, 16-29, 31, 33, 35-38 of U.S. Patent No. 9,608,968 (“the ’968 patent”); claims
`
`1-28 of U.S. Patent No. 9,648,557 (“the ’557 patent”); claims 1-44 of U.S. Patent No. 9,712,476
`
`(“the ’476 patent”); claims 1-29 of U.S. Patent No. 9,712,986 (“the ’986 patent”); claims 1-26 of
`
`U.S. Patent No. 9,769,176 (“the ’176 patent”); claims 22-28, 32, 33, 36-42, 46, 50-52 of U.S.
`
`Patent No. 10,027,619 (“the ’619 patent”); claims 1-24 of U.S. Patent No. 10,039,029 (“the ’029
`
`patent”); claims 1-14 of U.S. Patent No. 10,091,734 (“the ’734 patent”); claims 1-20 of U.S.
`
`1
`
`Exhibit 1043
`Apple v. Seven Networks
`IPR2020-00266
`
`

`

`Patent No. 10,110,534 (“the ’534 patent”); claims 1-30 of U.S. Patent No. 10,135,771 (“the ’771
`
`patent”); and claims 1-44 of U.S. Patent No. 10,243,962 (“the ’962 patent”) (collectively, “the
`
`Asserted Claims” of “the Asserted Patents”).
`
`PATENT LOCAL RULE 3-3 DISCLOSURES
`
`1.
`
`This disclosure is directed to preliminary invalidity and unenforceability issues
`
`only and does not address claim construction or noninfringement. Apple reserves all rights with
`
`respect to such issues, including but not limited to its position that claims of the Asserted Patents
`
`are to be construed in a particular manner and are not infringed.
`
`2.
`
`These invalidity contentions are preliminary and are based on Apple’s current
`
`knowledge, understanding, and belief as to the facts and information available as of the date of
`
`these contentions. Apple has not yet completed its investigation, discovery, or analysis of
`
`information related to this action, and additional discovery may require Apple to supplement or
`
`amend its invalidity contentions. Apple reserves the right to amend or supplement its
`
`contentions once it gains access to relevant materials SEVEN has not yet produced. While
`
`Apple has made a good-faith effort to provide a comprehensive list of prior art relevant to this
`
`case, it reserves the right to modify or supplement its prior art list and invalidity contentions at a
`
`later time with or based upon pertinent information that may be subsequently discovered from
`
`SEVEN or third parties. In particular, Apple is currently unaware of the extent, if any, to which
`
`SEVEN will contend that limitations of the Asserted Claims of the Asserted Patents are not
`
`disclosed in the prior art identified in these Invalidity Contentions. Accordingly, Apple reserves
`
`the right to identify other references that would disclose the allegedly missing limitation(s) of the
`
`claimed method, device, or system. Moreover, discovery is ongoing and Apple reserves the right
`
`to pursue all other defenses that may be available to it, including but not limited to defenses that
`
`
`
`2
`
`

`

`the Asserted Patents are unenforceable based on laches, estoppel, waiver, acquiescence,
`
`inequitable conduct, patent misuse, patent exhaustion, unfair competition, unclean hands, express
`
`or implied license, or any other grounds.
`
`3.
`
`Any invalidity analysis depends, ultimately, upon claim construction, which is a
`
`question of law reserved for the Court. The Asserted Claims have not yet been construed by the
`
`Court in this case and, thus, Apple has not yet had the opportunity to compare the Asserted
`
`Claims of the Asserted Patents (as construed by the Court) with the prior art. Apple reserves the
`
`right to amend, supplement, or materially modify its invalidity contentions after the claims have
`
`been construed by the Court. Apple also reserves the right to amend, supplement, or materially
`
`modify its invalidity contentions in response to any claim construction positions that SEVEN
`
`may take in this case. Apple also reserves the right to assert that a claim is indefinite, not
`
`enabled, or fails to meet the written description requirement based on any claim construction
`
`position SEVEN may take in this case or based on any claim construction the Court may adopt in
`
`this case.
`
`4.
`
`Apple’s invalidity contentions are directed to the claims asserted by SEVEN that
`
`are identified in SEVEN’s P.R. 3-1 & 3-2 Disclosures to Apple. Apple reserves the right to
`
`modify, amend, supplement or otherwise alter its invalidity contentions in the event that SEVEN
`
`supplements or amends its infringement contentions or takes a claim construction position that is
`
`different than or in addition to those set forth in its infringement contentions, or for any other
`
`reason constituting good cause to modify, amend, supplement or otherwise alter these invalidity
`
`contentions.
`
`5.
`
`The Court’s Patent Rules and the Court’s Docket Control Order (Dkt. No. 39)
`
`contemplate that these Invalidity Contentions be prepared and served in response to SEVEN’s
`
`
`
`3
`
`

`

`Infringement Contentions. However, SEVEN’s Infringement Contentions are insufficient, e.g.,
`
`because they lack proper and complete disclosure as to how SEVEN contends that Apple
`
`allegedly infringes the Asserted Claims. Apple wrote to SEVEN regarding these deficiencies,
`
`requesting that SEVEN promptly cure them, on July 24, 2019. To date, SEVEN has not cured
`
`the defects in its contentions. Due to SEVEN’s failure to provide proper and complete disclosure
`
`of its Infringement Contentions under P.R. 3-1, Apple reserves the right to seek leave from the
`
`Court to modify, amend, and/or supplement these Invalidity Contentions should SEVEN be
`
`allowed by the Court to correct, clarify, amend, and/or supplement its Infringement Contentions,
`
`or their inherent claim constructions, or following the Court’s claim construction.
`
`6.
`
`Apple further contends that SEVEN appears to be pursuing overly broad
`
`constructions of the Asserted Claims of the Asserted Patents in an effort to piece together an
`
`infringement claim where none exists and to accuse products that do not practice the claims as
`
`properly construed. At the same time, SEVEN’s infringement contentions are in many places
`
`too general and vague to discern exactly how SEVEN contends each accused product practices
`
`each element of the Asserted Claims. Accordingly, these invalidity contentions are not intended
`
`to be, and are not, an admission that the Asserted Claims are infringed by any of Apple’s
`
`products or technology, that any particular feature or aspect of any of the accused products
`
`practices any elements of the Asserted Claims, or that any of SEVEN’s proposed constructions
`
`are supportable or proper. To the extent that any of the prior art references disclose the same
`
`functionality or feature of any of the accused products, Apple reserves the right to argue that said
`
`feature or functionality does not practice any element of any of the Asserted Claims, and to
`
`argue, in the alternative, that if said feature or functionality is found to practice any element of
`
`any of the Asserted Claims of the Asserted Patents, then the prior art reference demonstrates that
`
`
`
`4
`
`

`

`that element is not novel, is obvious, or is not patentable. These documents are not intended to
`
`reflect Apple’s claim construction contentions, which will be disclosed in due course in
`
`accordance with the Patent Rules and the Court’s Docket Control Order. Instead, the citation of
`
`prior art herein and the accompanying exhibits are being disclosed as, and should be construed
`
`as, nothing more than Apple’s Invalidity Contentions.
`
`7.
`
`Attached hereto are representative claim charts that demonstrate how the Asserted
`
`Claims of the Asserted Patents are invalid in view of certain prior art. The references cited in the
`
`attached claim charts may disclose the limitations of the Asserted Claims of the Asserted Patents
`
`expressly and/or inherently, and/or they may be relied upon to show the state of the art in the
`
`relevant time frame. Moreover, the suggested obviousness combinations are in the alternative to
`
`Apple’s contentions regarding anticipation. These obviousness combinations should not be
`
`construed to suggest that any reference included in any combination is not anticipatory in its own
`
`right.
`
`8.
`
`In addition to the references listed below and in the accompanying exhibits, Apple
`
`may rely upon any reference cited in the prosecution histories of the Asserted Patents as well as
`
`any additional references cited by SEVEN. Identification of elements or limitations in the
`
`contentions and the accompanying exhibits is exemplary, not exhaustive or limiting. In its
`
`contentions below and in the accompanying claim charts, Apple has endeavored to cite to the
`
`most relevant portions of the identified prior art. However, other portions of the identified prior
`
`art may additionally disclose, either expressly or inherently, and/or render obvious one or more
`
`elements of the Asserted Claims. Apple reserves the right to rely on uncited portions of the
`
`identified prior art to establish the invalidity of the Asserted Claims. Moreover, Apple reserves
`
`the right to rely on uncited portions of the identified prior art, other prior art, or expert testimony
`
`
`
`5
`
`

`

`to provide context to or aid in understanding the cited portions of the identified prior art. Where
`
`Apple cites to a particular drawing or figure, the citation encompasses the description of the
`
`drawing or figure, as well as any text associated with the drawing or figure. Similarly, where
`
`Apple cites to particular text concerning a drawing or figure, the citation encompasses that
`
`drawing or figure as well. Additional evidence regarding the features and elements of the prior
`
`art reference may be provided by witness testimony, or by additional documents that describe the
`
`prior art reference that are discovered through the course of ongoing discovery.
`
`9.
`
`In this action, SEVEN asserts that Apple infringes certain claims of the Asserted
`
`Patents. Although SEVEN asserts that these claims are either literally infringed or infringed
`
`under the doctrine of equivalents, SEVEN has failed to provide sufficient analysis or explanation
`
`regarding alleged infringement of the Asserted Claims of the Asserted Patents under the Doctrine
`
`of Equivalents. Apple reserves the right to modify, amend, supplement or otherwise alter its
`
`preliminary invalidity contentions in the event SEVEN is permitted to modify, amend,
`
`supplement, or clarify its infringement contentions with respect to direct infringement (literal and
`
`under the doctrine of equivalents).
`
`10.
`
`Apple is providing invalidity contentions only for the claims asserted by SEVEN,
`
`but hereby reserves the right to seek invalidation of all claims in each of the Asserted Patents.
`
`11.
`
`Apple reserves the right to modify, amend, or supplement these disclosures as
`
`additional information becomes available, and as its discovery and investigation proceed.
`
`I.
`
`THE ’539 PATENT
`
`A.
`
`Patent Rule 3-3(a): Identification of Prior Art
`
`At this time, Apple contends that at least each of the prior art references described and
`
`charted in Exhibits 539-A and 539-B anticipates or renders obvious, either alone or in
`
`combination, one or more of the Asserted Claims of the ’539 patent.
`
`
`
`6
`
`

`

`Additional prior art that has not been charted, but is still relevant to the invalidity of the
`
`’539 patent is listed in Exhibit C, including without limitation as evidence of the state of the art
`
`at the alleged time of invention. Apple reserves the right to amend these invalidity contentions
`
`to assert these references depending on the claim construction and infringement positions
`
`SEVEN may take as the case proceeds. Moreover, Apple reserves the right to use these
`
`references in combination with other references to render the claims of the ’539 patent obvious
`
`in the event SEVEN takes the position that certain claim limitations are missing from the
`
`references charted in Exhibits 539-A and 539-B.
`
`B.
`
`Patent Rule 3-3(b): Whether Each Item Anticipates or Renders Obvious the
`Asserted Claims
`
`SEVEN asserts claims 1, 3-7, 9-13, and 15-17 of the ’539 patent against Apple in this
`
`lawsuit. These claims are invalid because the ’539 patent fails to meet one or more of the
`
`requirements for patentability. The individual bases for invalidity are provided below and in the
`
`claim charts attached as Exhibits 539-A and 539-B. Each of the foregoing listed prior art
`
`documents, the underlying work, and/or the underlying apparatus or method qualifies as prior art
`
`under one or more sections of 35 U.S.C. §§ 102 and/or 103.
`
`Although Apple has identified at least one citation per limitation for each reference, each
`
`and every disclosure of the same limitation in the same reference is not necessarily identified.
`
`Rather, in an effort to focus the issues, Apple has cited representative portions of identified
`
`references, even where a reference may contain additional support for a particular claim element.
`
`In addition, persons of ordinary skill in the art generally read a prior art reference as a whole and
`
`in the context of other publications and literature. Thus, to understand and interpret any specific
`
`statement or disclosure within a prior art reference, such persons would rely on other information
`
`within the reference, along with other publications and their general scientific knowledge. Apple
`
`
`
`7
`
`

`

`may rely upon uncited portions of the prior art references and on other publications and expert
`
`testimony to provide context, and as aids to understanding and interpreting the portions that are
`
`cited. Apple may also rely on uncited portions of the prior art references, other disclosed
`
`publications, and the testimony of experts to establish that a person of ordinary skill in the art
`
`would have been motivated to modify or combine certain of the cited references so as to render
`
`the claims obvious.
`
`1.
`
`Priority
`
`SEVEN’s Patent Rule 3-1(e) disclosures provide that the Asserted Claims of the ’539
`
`patent are entitled to a priority date of July 26, 2010, which is the filing date of U.S. Provisional
`
`Application No. 61/367,870 (the ’870 Provisional) and 61/367,871 (the ’871 Provisional).
`
`Apple reserves the right to challenge SEVEN’s assertion that the ’539 patent is entitled to
`
`claim the benefit of these provisional applications’ filing date to the extent that these provisional
`
`applications do not support the full scope of the Asserted Claims, for example, depending on
`
`scope of the Asserted Claims as properly construed. To the extent these provisional application
`
`do not support the full scope of the Asserted Claims, the priority date of the ’539 patent should
`
`be the filing date of the first non-provisional patent application to which the ’539 patent claims
`
`priority, which is August 25, 2014.
`
`SEVEN has provided no evidence to support its contention that the Asserted Claims of
`
`the ’539 patent are entitled to claim priority back to this or any earlier filed application, and
`
`Apple therefore reserves the right to assert a later priority date based on any findings as to the
`
`priority date of the Asserted Claims by the Court, information learned through discovery, or
`
`otherwise.
`
`
`
`8
`
`

`

`a)
`
`The Asserted Claims of the ’539 Patent Cannot Claim Priority
`to Provisional Applications
`
`None of the Asserted Claims are entitled to the filing date of the cited provisional
`
`applications because claims 1, 7, and 13 do not have written description support in the
`
`provisional applications. See Falko-Gunter Falkner v. Inglis, 448 F.3d 1357 (Fed. Cir. 2006).
`
`Claims 1, 7, and 13 are not entitled to the provisional applications’ filing date because
`
`they do not actually or inherently disclose each and every claim element. PowerOasis, Inc. v. T-
`
`Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008). All three independent claims recite
`
`power-save features, including entering and exiting a “power save mode” for synchronized
`
`devices that share a user account—features found nowhere in the provisional applications.
`
`Nothing in the provisional applications shows the inventor possessed and enabled functionalities
`
`relating to entering or exiting a “power save mode,” based on user input, as recited in claims 1, 7,
`
`and 13 (e.g., claim 1 and 7—“querying a user of a first mobile . . . to select whether to enter a
`
`power save mode,” claim 13—“sending the requested content . . . after the second mobile device
`
`exits the power save mode”). Thus, the provisional applications never mention entry/exit of any
`
`power save mode recited in the ’539 patent claims. The provisional applications do not
`
`adequately provide written description support for user selection to enter/exit power save mode.
`
`Further, as to claims 1, 7, and 13, the provisional applications fail to disclose content
`
`download to and from mobile devices with a shared user account that is dependent on whether
`
`either or both devices are in a power save mode. The provisional applications make no mention
`
`of content download, particularly among devices with a shared user account. For example, the
`
`’870 Provisional only describes using a server proxy to reduce “the amount of generated network
`
`traffic and shorten[] the total time and the number of times the radio module is powered up on
`
`the device, thus saving battery.” Id. at 5. Similarly, the ’871 Provisional makes reference to
`
`
`
`9
`
`

`

`sustaining “from sending any data to the Device Client. The sending may be resumed, for
`
`example, after a specified time, or by Device Client notifying user being active again,” but does
`
`not describe content download among devices with a shared user account. See ’871 Provisional
`
`at pg. 4. Consequently, the provisional applications do not actually or inherently disclose each
`
`and every element of the ’539 Patent claims.
`
`The introduction of these features into the claims resulted in the ’539 patent claims not
`
`being entitled to the filing date of the provisional application, and are, at most, entitled to the
`
`filing date of August 25, 2014—the filing date of U.S. Patent Application 14/467,881.
`
`2.
`
`Anticipation
`
`Some or all of the Asserted Claims of the ’539 patent are invalid as anticipated under 35
`
`U.S.C. § 102 in view of each of the prior art references identified above and in the claim charts
`
`included in Exhibit 539-A, which identify specific examples of where each limitation of the
`
`Asserted Claims is found in the prior art references. As explained above, the cited portions of
`
`prior art references identified in the attached claim charts are exemplary only and representative
`
`of the content and teaching of the prior art references, and should be understood in the context of
`
`the reference as a whole and as they would be understood by a person of ordinary skill in the art.
`
`Apple identifies the following references as anticipating one or more of the Asserted
`
`Claims of the ’539 patent under 35 U.S.C. § 102. The below table of anticipating references is
`
`exemplary, and it does not constitute an admission that any reference anticipates only the listed
`
`claims. Further, Apple contends that any prior art reference in the attached charts that is charted
`
`for each limitation of any given claim, anticipates that claim, regardless of whether that prior art
`
`reference is listed in the following table.
`
`
`
`
`
`
`
`10
`
`

`

`539-A2
`
`Anticipating Prior Art
`Ex. #
`539-A1 U.S. Patent Application 2011/0080422 Al to Kang Lee et
`al. (“Lee”)
`U.S. Patent Publication No. US 2008/0243370 Al to
`Noam Lando et al. (“Lando”)
`U.S. Patent Application No. 9,386,075 B2 to Aldo
`Adriazola (“Adriazola”)
`U.S. Patent Application 2010/0042856 Al to Chieh-Chih
`Tsai et al. (“Tsai”)
`Nokia E72 System
`U.S. Patent 8,904,206 B2 to Gregory Black et al.
`(“Black”)
`U.S. Patent 7,525,289 B2 to Craig Janik et al. (“Janik”)
`
`Claims
`1, 3-6, 9-12, 15-17
`
`1, 3-7, 9-12, 15-17
`
`1, 3-7, 9-12, 15-17
`
`1, 3-7, 9-12, 15-17
`
`1, 3-7, 9-12, 15-17
`1, 3-7, 9-12, 15-17
`
`539-A3
`
`539-A4
`
`539-A5
`539-A6
`
`539-A7
`
`To the extent any item of prior art cited above is deemed not to disclose, explicitly or
`
`1, 3-7, 9-12, 15-17
`
`inherently, any limitation of an Asserted Claim of the ’539 patent, Apple reserves the right to
`
`argue that any difference between that prior art and the corresponding patent claim would have
`
`been either inherent to the art, or obvious to a person of ordinary skill in the art, even if Apple
`
`has not specifically denoted that the art is to be combined with the knowledge of a person of
`
`ordinary skill in the art.
`
`3.
`
`Obviousness
`
`To the extent any limitation is deemed not to be exactly met by an item of prior art listed
`
`above and in Exhibit 539-A, then any purported differences are such that the claimed subject
`
`matter as a whole would have been obvious to one skilled in the art at the time of the alleged
`
`invention, in view of the state of the art and knowledge of those skilled in the art. The item of
`
`prior art would, therefore, render the relevant claims invalid for obviousness under 35 U.S.C.
`
`§ 103.
`
`In addition, the references identified above render one or more Asserted Claims of the
`
`’539 patent obvious when the references are read in combination with each other, and/or when
`
`read in view of the state of the art and knowledge of those skilled in the art. Each and every
`
`
`
`11
`
`

`

`reference identified is also relevant to the state of the art at the time of the alleged invention.
`
`Any of the references disclosed above may be combined with one another to render obvious (and
`
`therefore invalid) each of SEVEN’s Asserted Claims. Apple may rely upon a subset of the
`
`above identified references or all of the references identified above, including all references in
`
`Exhibits 539-A and 539-B, and C, for purposes of obviousness depending on the Court’s claim
`
`construction, positions taken by SEVEN during this litigation, and further investigation and
`
`discovery.
`
`To the extent the foregoing references are found not to anticipate the Asserted Claims,
`
`the foregoing references render the Asserted Claims obvious either alone or in combination with
`
`one or more of the other references identified above pursuant to Patent Rule 3-3(a). It would
`
`have been obvious to a person of skill in the art at the time of the alleged invention of the
`
`Asserted Claims of the ’539 patent to combine the various references cited herein so as to
`
`disclose the Asserted Claims of the ’539 patent.
`
`In accordance with Patent Rule 3-3(b), prior art references rendering the Asserted Claims
`
`obvious, alone or in combination with other references, are outlined below and included in
`
`Exhibits 539-A and 539-B, which include exemplary claim charts for the Asserted Claims of the
`
`’539 patent showing specifically where in each reference or combinations of references each
`
`Asserted Claim is found, and an explanation of why the prior art renders the Asserted Claim
`
`obvious. Where applicable, Exhibits 539-A and 539-B include the motivation to combine
`
`references.
`
`Moreover, in addition to the information contained elsewhere in these contentions and in
`
`particular Exhibit 539-B, Apple has identified additional motivations and reasons to combine the
`
`various references cited herein. In particular, multiple teachings, suggestions, and/or reasons to
`
`
`
`12
`
`

`

`modify any of the references and/or to combine any two or more of the references in Exhibits
`
`539-A and 539-B come from many sources, including the prior art (specific and as a whole),
`
`common knowledge, common sense, predictability, expectations, industry trends, design
`
`incentives or need, market demand or pressure, market forces, obvious to try, the nature of the
`
`problem faced, and/or knowledge possessed by one of ordinary skill. In addition, it would have
`
`been obvious to try combining the prior art references identified above because there were only a
`
`finite number of predictable solutions and/or because known work in one field or endeavor
`
`prompted variations based on predictable design incentives and/or market forces either in the
`
`same field or a different one. The combination of prior art references identified in these
`
`contentions would have been obvious because the claimed combinations represent the known
`
`potential options with a reasonable expectation of success. Additionally, one of ordinary skill in
`
`the art would have been motivated to create combinations identified in these contentions using:
`
`known methods to yield predictable results; known techniques in the same way; a simple
`
`substitution of one known, equivalent element for another to obtain predictable results; and/or
`
`teaching, suggestion, or motivation in the prior art generally. Also, market forces in the industry,
`
`and the desire to improve features and performance, would motivate the addition of features to
`
`systems as they become available, become less expensive, become more commonly used,
`
`provide better performance, reduce costs, size or weight, or predictably achieve other clearly
`
`desirable results.
`
`While Apple reserves the right to rely on any combination of the references reflected in
`
`their charts or incorporated herein by reference, Apple provides the following exemplary and
`
`non-exhaustive references and/or combinations evidencing invalidity of the claims of the
`
`Asserted Patents. The combinations of prior art listed below render obvious the Asserted Claims
`
`
`
`13
`
`

`

`under the proper construction of the claims and/or under Plaintiff’s apparent interpretation of the
`
`claims as set forth by Plaintiff in their Complaint and Infringement Contentions. Each
`
`combination renders the identified claims obvious through the express and/or inherent disclosure
`
`in the combination of references themselves, as well as in view of the knowledge of a person of
`
`ordinary skill in the art.
`
`Obviousness Combinations
`
`Claims
`
`U.S. Patent Publication US 2008/024370 A1 to Noam Lando
`et al. (“Lando”), in view of one or more of US 2010/0042856
`Al to Chieh-Chih Tsai et al. (“Tsai”), and/or US 7,525,289 B2
`to Craig Janik et al. (“Janik”)
`Lando in view of one or more of U.S. Patent No. 9,386,075 B2
`to Aldo Adriazola (“Adriazola”) and/or U.S. Patent
`Application 2009/0217065 A1 to Nelson S. Araujo Jr.
`(“Araujo”)
`Lee in view of one or more of Adriazola and/or Araujo
`Tsai in view of one or more of Lee and/or Adriazola
`Tsai in view of one or more of Lando and/or Adriazola
`Tsai in view of one or more of Lee, Adriazola, and/or Araujo
`Tsai in view of one or more of Lando, Adriazola, and/or
`Araujo
`Tsai in view one or more of Lando and/or Lee
`Janik in view of one or more of Adriazola, Tsai, Lando, and/or
`Lee
`Nokia E72 System (“Nokia E72”) in view of Adriazola
`U.S. Patent 8,904,206 B2 to Gregory Black et al. (“Black”) in
`view of one or more of Janik, Tsai, Lee, Lando, Nokia E72
`and/or Adriazola
`Lee in view of one or more of Adriazola, Araujo, Lando, Tsai,
`Janik, Black, Nokia 72, COMBINE: Leveraging the Power of
`Wireless Peers through Collaborative Downloading, Ganesh
`Ananthanarayanan et al., MobiSys’07, June 11–14, 2007, San
`Juan, Puerto Rico, USA (“Combine”), and/or U.S. Patent
`5,991,287 A to Diepstraten et al. (“Diepstraten”)
`Adriazola in view of one or more of Lando, Lee, Tsai, Janik,
`Nokia E72, Black, US2008/0144559A1 to Victor Griswold
`(“Griswold”), U.S. Patent 7,724,697 B2 to Lars Dalsgaard
`(“Dalsgard”), 2008/0146292 A1 to Edward Gilmore
`(“Gilmore”), U.S. 2007/0266106 A1 to Ayako Kato (“Kato”),
`and/or U.S. 2010/0174501 to Srikanth Myadam (“Myadam”)
`
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`1, 3-7, 9-13, and 15-17
`1, 3-7, 9-13, and 15-17
`1, 3-7, 9-13, and 15-17
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`
`
`14
`
`

`

`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`Adriazola in view of one or more of Tsai, Lando, and/or U.S.
`9400893 B2 to Erick Tseng, et al. (“Tseng”)
`Adriazola in view of Lee, Tsai, Lando, Araujo, Combine,
`Griswold, Gilmore, Dalsgaard, Kato, Black, Diepstraten,
`and/or Nokia E72
`Adriazola in view one or more of of Lee Lando, Griswold,
`Dalsgaard, Tsai, and/or Araujo
`Lee in view of one or more of Adriazola, Myadam, Kato,
`Janik, Nokia E72, Adriazola, Lando, and/or Black
`Adriazola in view of one or more of Lee, Tsai, Lando, Janik,
`Combine, Griswold, and/or Nokia E72
`Lee in view of one or more of Diepstraten, Black, Janik, Tsai,
`Araujo, and/or Lando
`
`In addition to the specific combinations of prior art and the specific combinations of
`
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`1, 3-7, 9-13, and 15-17
`
`groups of prior art disclosed above, Apple reserves the right to rely on any other combination of
`
`any prior art references disclosed herein. Apple further reserves the right to rely upon
`
`combinations disclosed within the prosecution history of the references cited herein. These
`
`obviousness combinations reflect Apple’s present understanding of the potential scope of the
`
`claims that SEVEN appears to be advocating and should not be seen as Apple’s acquiescence to
`
`SEVEN’s interpretation of the patent claims.
`
`Apple also reserves the right to amend or supplement these contentions regarding
`
`anticipation or obviousness of the Asserted Claims, in view of further information from SEVEN,
`
`information discovered during discovery, or a claim construction ruling by the Court. SEVEN
`
`has not identified what elements or combinations it alleges were not known to one of ordinary
`
`skill in the art at the time. Therefore, for any claim limitation that SEVEN alleges is not
`
`disclosed in a particular prior art reference, Apple reserves the right to assert that any such
`
`limitation is either inherent in the disclosed reference or obvious to one of ordinary skill in the
`
`art at the time in light of the same, or that the limitation is disclosed in another of the references
`
`disclosed above and in combination would have rendered the Asserted Claim obvious.
`
`
`
`15
`
`

`

`C.
`
`Patent Rule 3-3(c): Charts Identifying Where Specifically in Each Alleged
`Item of Prior Art Each Asserted Claim Is Found
`
`Pursuant to Patent Rule 3-3(c), charts identifying where specifically in each alleged item
`
`of prior art each limitation of each Asserted Claim is found, including for each limitation that
`
`Apple contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or
`
`material(s) in each item of prior art that performs the claimed function, are attached in Exhibits
`
`539-A and 539-B.
`
`D.
`
`Patent Rule 3-3(d): Other Grounds for Invalidity
`
`Apple identifies the following grounds for invalidity of the Asserted Claims of the ’539
`
`patent based on 35 U.S.C. §§ 101 and/or 112. Apple reserves the right to supplement these
`
`disclosures based on further investigation and discovery.
`
`1.
`
`Invalidity Pursuant to 35 U.S.C. § 112
`
`Apple further asserts that the Asserted Claims of the ’539 patent are invalid under 35
`
`U.S.C. § 112. The following are the grounds upon which Apple contends the Asserted Claims
`
`are invalid for failure to meet the requirements of 35 U.S.C. § 112, ¶ 1, ¶ 2, ¶ 4 and/or ¶ 6, based
`
`on Apple’s investigation to date and currently-available information.
`
`For each claim identified as invalid, any dependent claims of those invalid claims are also
`
`invalid under 35 U.S.C. § 11