UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`
`
`
`
`Civil Action No. 2:18-cv-00546-JRG
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`
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`Jury Trial Demanded
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`CANON, INC.,
`
`
`Plaintiff,
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`vs.
`
`TCL ELECTRONICS HOLDINGS LTD.,
`TCL CORPORATION,
`SHENZHEN NEW TECHNOLOGIES CO. LTD.,
`TCL KING ELECTRICAL APPLIANCE (HUIZHOU)
`CO. LTD.,
`TCL KING ELECTRONICS (CHENGDU) CO., LTD.,
`TCL KING ELECTRICAL APPLIANCES
`(NANCHANG) CO., LTD.,
`TCL TONGLI ELECTRONICS (HUIZHOU) CO.,
`LTD., and
`TONLY ELECTRONICS HOLDINGS LTD.,
`
`
`Defendants.
`
`
`
`DEFENDANTS’ SUPPLEMENTAL INVALIDITY CONTENTIONS AND ELIGIBILITY
`CONTENTIONS PURSUANT TO PATENT RULES 3-3 AND 3-4 AND JUDGE
`GILSTRAP’S JULY 25, 2019 STANDING ORDER REGARDING SUBJECT MATTER
`ELIGIBILITY CONTENTIONS1
`
`
`1 Seven of the named defendants—TCL Electronics Holdings Ltd. (“TCL Holdings”), TCL
`Corporation (“TCL Corp.”), Shenzhen TCL New Technologies Co. Ltd. (“Shenzhen TCL”), TCL King
`Electronics (Chengdu) Co., Ltd. (“TCL King Chengdu”), TCL King Electrical Appliances (Nanchang)
`Co., Ltd. (“TCL King Nanchang”), TCL Tongli Electronics (Huizhou) Co., Ltd. (“Tongli”), and Tonly
`Electronics Holdings Ltd. (“Tonly”)—dispute personal jurisdiction in this forum and have moved to
`dismiss for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2). Dkt. Nos. 19, 48. In response,
`Canon does not dispute that personal jurisdiction is lacking over four of these defendants—TCL King
`Chengdu, TCL King Nanchang, Tongli, and Tonly—and has stated it would agree to dismiss them
`without prejudice. Dkt. No. 54 at 1 n.1. Defendants do not waive their defenses of lack of personal
`jurisdiction and/or failure to state a claim by providing these contentions.
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`Page 1 of 47
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`CANON EXHIBIT 2010
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00343
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`

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`Pursuant to the Court’s August 20, 2019 Order (Dkt. No. 51) (the “Scheduling Order”), the
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`Rules of Practice for Patent Cases for the Eastern District of Texas (“Patent Rules” or “P.R.”), and
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`the Standing Order Regarding Subject Matter Eligibility Contentions Applicable to All Patent
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`Infringement Cases Assigned to Chief District Judge Rodney Gilstrap (“Standing Order”),
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`Defendants TCL Electronics Holdings Ltd., TCL Corporation, Shenzhen New Technologies Co.
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`Ltd., TCL King Electrical Appliance (Huizhou) Co. Ltd., TCL King Electronics (Chengdu) Co.,
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`Ltd., TCL King Electrical Appliances (Nanchang) Co., Ltd., TCL Tongli Electronics (Huizhou)
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`Co., Ltd., and Tonly Electronics Holdings Ltd. (collectively, “Defendants”) hereby disclose their
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`Supplemental Invalidity Contentions and Eligibility Contentions (“Supplemental Invalidity
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`Contentions” and “Eligibility Contentions” respectively, and collectively, “Contentions”).
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`Defendants contend that each of the claims asserted by Plaintiff Canon, Inc. (“Canon”) is invalid
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`under at least 35 U.S.C. §§ 101, 102, 103, and/or 112.
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`I.
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`GENERAL STATEMENT AND RESERVATION OF RIGHTS
`A.
`General Reservation of Rights
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`These Contentions, along with the information and documents that Defendants produce
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`herewith, are based on information currently available to Defendants and subject to further
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`revision. Consistent with the Patent Rules, Defendants reserve the right to amend these
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`Contentions should Canon: (1) provide any information that it failed to provide in its P.R. 3-1 and
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`3-2 disclosures or otherwise properly produce; (2) amend its P.R. 3-1 and 3-2 disclosures in any
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`way; or (3) attempt to rely upon any information during claim construction proceedings, at trial,
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`in a hearing, or during a deposition that it failed to provide in its P.R. 3-1 and 3-2 disclosures or
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`otherwise properly produce. Moreover, Defendants further reserve the right to amend these
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`contentions based on further discovery or Court rulings (or any other related reason). Defendants
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 1
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`provide these Contentions, as well as the accompanying production of documents, for the sole
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`purpose of complying with P.R. 3-3 and 3-4 and the Standing Order.
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`B.
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`Asserted Claims
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`In its Infringement Contentions, dated September 6, 2019, Canon asserts that Defendants
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`infringe the following claims (“Asserted Claims”) of U.S. Patent Nos. 7,746,413 (“’413 patent”),
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`7,810,130 (“’130 Patent”); 8,078,767 (“’767 Patent”), 8,346,986 (“’986 Patent”), and 8,713,206 (“’206
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`Patent”) (collectively, “the Patents-In-Suit”):
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`
`
`
`
`
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`
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`
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`’413 Patent: Claims 1-2, 4-8, 10-11;
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`’767 Patent: Claims 1-14;
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`’986 Patent: Claims 1-11;
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`’206 Patent: Claims 1-5, 7-11, 13-14;
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`’130 Patent: Claims 1-8.
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`Defendants’ Contentions address only those claims asserted in Canon’s Infringement
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`Contentions. To the extent that the Court or the Patent Rules permit Canon to assert additional
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`claims against Defendants, Defendants reserve the right to disclose new or supplemental
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`contentions regarding such claims.
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`C.
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`Canon’s P.R. 3-1 and 3-2 Disclosures
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`Defendants provide these Contentions consistent with the schedule set forth in the Court’s
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`August 20, 2019 Order (Dkt. No. 51), but do so without waiving any right to receive from Canon
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`full, complete and detailed infringement disclosures as required under P.R. 3-1 and 3-2.
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`Defendants’ compliance with the schedule currently in place should not be viewed as a waiver of
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`its right to seek relief regarding the deficiencies in Canon’s disclosures.
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`Canon’s Infringement Contentions are deficient in numerous respects. Canon’s
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`Infringement Contentions lack the specificity required under P.R. 3-1 as would be necessary to
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 2
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`fairly provide Defendants notice of Canon’s theories, including without limitation: (1) Canon fails
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`to specifically identify each Accused Product; (2) Canon fails to provide claim charts for each
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`Accused Product or support with specificity and supporting documentary or declaratory evidence
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`its assertions that there are no material differences between the Accused Products that affect its
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`infringement theories for the uncharted products; (3) Canon fails to identify where each element
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`of each asserted claim is found within each Accused Instrumentality; (4) Canon alleges broadly
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`that “[t]o the extent any claim limitation is found to not be literally present, Canon asserts that such
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`limitation is present under the doctrine of equivalents in each of the Accused Instrumentalities” in
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`contravention of P.R. 3-1(d), which requires doctrine-of-equivalents to be alleged on an element-
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`by-element basis; and (5) for any claim element in which doctrine of equivalents has been raised,
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`Canon fails to specify which component(s) or step(s) of the accused product are equivalent, much
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`less the basis for its position.
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`Accordingly, Defendants understand that Canon will not rely on the doctrine of equivalents
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`to show infringement of any limitation of any asserted claim. Defendants further specifically
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`reserve the right to modify, amend, or supplement their Contentions should Canon be permitted to
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`further modify, amend, or supplement its P.R. 3-1 and 3-2 disclosures or produce documents
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`responsive to Defendants’ discovery requests.
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`D.
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`Priority Applications / Priority Date of Asserted Claims
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`Defendants’ Contentions, including but not limited to identification of prior art, rely in part
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`on Canon’s contention that the Patents-in-Suit are entitled to claim priority to the following
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`applications:
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`’413 Patent: JP2003-150212, filed May 28, 2003; JP2004-154154, filed May 25, 2004;
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`’767 Patent: JP2008-141678, filed May 29, 2008;
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`’986 Patent: JP2008-141678, filed May 29, 2008;
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 3
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`’206 Patent: JP2008-141678, filed May 29, 2008;
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`’130 Patent: JP2002-295062, filed Oct. 8, 2002.
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`Defendants’ reserve the right to amend these Contentions to the extent that Canon is permitted to
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`claim priority to an earlier application, assert an earlier conception or reduction to practice date
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`than the priority application filing date, changes its alleged priority dates, or if the Court determines
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`that any of the Patents-in-Suit are not entitled to claim priority to the earlier applications as asserted
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`by Canon.
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`E.
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`Claim Construction
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`Claim construction proceedings for this action have not yet occurred. Accordingly,
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`Defendants reserve the right to modify, amend, and/or supplement their Contentions in accordance
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`with P.R. 3-6 following claim construction rulings from this Court, or to the extent permitted by
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`this Court. Defendants also reserve the right to modify, amend, and/or supplement their
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`Contentions upon Canon’s alteration/clarification of its asserted claim constructions, including as
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`adopted by Canon in its Infringement Contentions or any amendment thereto.
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`Defendants’ Contentions are based in part on their present understanding of Canon’s
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`Infringement Contentions. In some instances, Canon’s Infringement Contentions contradict the
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`teachings of the Patents-In-Suit, contradict the meaning of the claim terms as would have been
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`understood by a person of ordinary skill in the art, are internally inconsistent, and/or are vague and
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`conclusory concerning how the claim limitations supposedly read on the accused products or
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`activities. In addition, Canon fails (i) to specify where each limitation of the Asserted Claims is
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`found in each accused instrumentality2 and (ii) to identify whether any claim terms are governed
`
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`2 For example and without limitation, with respect to claim 7 of the ’413 patent, Canon fails to
`identify what components of any accused products it considers to be the “acquiring unit,”
`“determining unit,” and “controlling unit,” let alone within each accused product. In addition,
`Canon charts only a single representative product, 55R617, for each Patent-in-Suit, but fails to
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 4
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`by 35 U.S.C. § 112(6) and, if so, the identity of the structure(s), act(s), or material(s) in the accused
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`products that performs the claimed function. As a result, Defendants are currently unable to fully
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`discern Canon’s position regarding the construction of the patent claim limitations or terms. To
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`the extent that Canon supplements or amends its Infringement Contentions, Defendants reserve
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`the right to modify, amend, and/or supplement these Contentions.
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`Defendants’ Contentions do not represent their agreement or view as to the meaning of any
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`claim term contained therein. To the extent that Defendants assert that prior art is anticipatory or
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`renders obvious claims based on the construction apparently applied by Canon to the Asserted
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`Claims, Defendants’ Contentions are not—and should not be interpreted as—adoptions or
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`admissions as to the accuracy of that scope or construction.
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`Nothing in Defendants’ Contentions should be deemed an admission regarding the scope
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`of any claims or the proper construction of those claims or any terms contained therein. Nor should
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`anything contained herein be understood or deemed to be an express or implied admission or
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`contention with respect to the proper construction of any terms in any asserted claim, or with
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`respect to the alleged infringement of that claim.
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`Unless otherwise stated herein, Defendants take no position on any matter of claim
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`construction in these Contentions. Defendants reserve the right to propose any claim construction
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`they consider appropriate and to contest any claim construction they consider inappropriate.
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`Defendants also reserve the right to argue that certain claim terms, phrases, and elements are
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`indefinite, lack written description, are not enabled and/or are otherwise invalid under 35 U.S.C.
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`§ 112.
`
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`provide an explanation of the technical and functional identity of the products represented.
`UltimatePointer, LLC v. Nintendo Co., No. 6:11-CV-496, 2013 WL 12140173, at *3 (E.D. Tex.
`May 28, 2013).
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 5
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`Because of the uncertainty of claim construction, Defendants reserve the right to further
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`supplement or modify the positions and information in these Contentions, including, without
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`limitation, the prior art and grounds of invalidity set forth herein, after the Asserted Claims have
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`been construed, in accordance with the Patent Rules and the Court’s Orders.
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`F.
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`Ongoing Discovery and Disclosures
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`Discovery in this case and Defendants’ investigation, including Defendants’ search for
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`prior art, are ongoing. Some of the relevant prior art and other information is in the possession of
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`third parties, and Defendants are continuing to seek discovery related to such prior art. Defendants
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`expressly reserve the right to amend or modify these Contentions based on additional information
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`obtained through continued formal discovery or other means pursuant to Fed. R. Civ. P. 26(e).
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`Defendants further reserve the right to revise, amend, or supplement these Contentions,
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`including by identifying, charting, and relying on additional information, references, systems, and
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`devices, should Defendants’ further search and analysis yield additional information, references,
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`systems, or devices, consistent with the Local Patent Rules and the Federal Rules of Civil
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`Procedure. In addition, Defendants reserve the right to supplement, amend, and/or alter the
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`positions taken and information disclosed in these Contentions including, without limitation, the
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`prior art and grounds of invalidity set forth herein under 35 U.S.C. §§ 101, 102, 103 or 112, to take
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`into account information or defenses that may come to light as a result of Defendants’ discovery
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`efforts; additional information obtained as to the priority date(s) of the asserted claim; testimony
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`or documents produced by a party or non-party; and positions that Canon may take concerning
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`infringement or invalidity issues. For example, Defendants may seek further discovery from third
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`parties believed to have knowledge, documentation, or corroborating evidence concerning items
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`of prior art, including prior art listed in the Exhibits hereto. Such third parties may include, without
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`limitation, the authors, inventors, assignees, owners, or developers of the references and
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 6
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`technologies listed in these disclosures. In particular, Defendants reserve the right to assert
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`invalidity under 35 U.S.C § 102(c), (d), (f), or (g) to the extent that discovery or further
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`investigation yields information forming the basis for such grounds for invalidity. Defendants
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`further reserve the right to supplement, amend, and/or alter the positions taken and information
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`disclosed in these Contentions after review of any Additional Disclosures provided in response to
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`the Discovery Order expected to be entered in this case.
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`Defendants further reserve the right to rely upon prior art cited in the file histories of the
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`Patents-In-Suit and related U.S. and foreign patent applications, including post-issuance
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`proceedings, as invalidating references or to show the state of the art. Defendants further reserve
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`the right to rely upon additional prior art to show the state of the art. Defendants further intend to
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`rely on inventor admissions, and admissions by Canon and others providing testimony on behalf
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`of Canon (e.g., experts), concerning the scope of the prior art relevant to the Patents-In-Suit found
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`in, inter alia: the patent prosecution history for the Patents-In-Suit and any related patents or patent
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`applications, including post-issuance proceedings; any deposition testimony of the named
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`inventors on the Patents-In-Suit; and the papers filed and any evidence submitted by Canon in
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`connection with this litigation, prior litigations, and other proceedings involving the Patents-in-
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`Suit. Defendants incorporate by reference the relevant testimony of any fact witnesses who are
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`deposed, provide declarations, or otherwise testify in this lawsuit. Defendants also incorporate by
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`reference the reports and testimony of any expert witnesses regarding invalidity of the Patents-In-
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`Suit.
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`II.
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`SUPPLEMENTAL INVALIDITY CONTENTIONS
`A.
`Supplemental Invalidity Contentions Pursuant to P.R. 3-3(a)
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`Subject to Defendants’ reservation of rights, and with respect to each asserted claim of
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`Canon’s Infringement Contentions, Defendants identify each item of prior art that either
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 7
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`anticipates or renders obvious each asserted claim. See Appendix 1. To the extent that the prior
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`art is not identified as prior art that anticipates and/or renders obvious an Asserted Claim,
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`Defendants intend to rely on the reference as background and as evidence of the state of the art at
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`the time of Canon’s alleged invention.
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`Also, to the extent not expressly mentioned herein, Defendants incorporate by reference
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`(1) any and all prior art contained or identified in documents produced thus far by Plaintiffs to
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`Defendant in this case, including prior art or statements regarding the prior art cited or referenced
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`in the Patents-in-Suit or file histories; (2) any and all additional materials regarding invalidity that
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`should have been produced to Defendant but have not been produced to date, to the extent that any
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`exist; and (3) any prior art of which the named inventor of a Patent-in-Suit is aware and/or on
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`which he contends the alleged invention of the Patent-in-Suit builds upon or improve.
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`Each disclosed item of prior art is evidence of a prior invention and making of the invention
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`in the United States by another under 35 U.S.C. § 102(g), as evidenced by the named inventors,
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`authors, organizations, and publishers involved with each such reference, with the circumstances
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`described and reflected in each reference including publications and system implementation
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`references. Defendants further intend to rely on admissions of the named inventors concerning the
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`prior art, including statements found in the Patents-in-Suit, their prosecution history, related
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`patents and/or patent applications, any deposition testimony, and the papers filed and any evidence
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`submitted by Canon in conjunction with this litigation and other litigations and proceedings.
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`B.
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`Supplemental Invalidity Contentions Pursuant To P.R. 3-3(b)-(c)
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`Subject to Defendants’ reservation of rights, and with respect to each asserted claim of
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`Canon’s Infringement Contentions, Defendants provide the following information required by
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`P.R. 3-3(b) and (c).
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 8
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`Claim Charts
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`1.
`As set forth in Exhibits A1-A9, B1-B20, C1-C14, D1-D14, E1-E14 and below, each of the
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`charted references, and any products, devices, or processes used in the prior art that embody the
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`subject matter disclosed in the references, anticipates one or more Asserted Claims of the Patents-
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`in-Suit by expressly or inherently disclosing each and every limitation of those claims. To the
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`extent any Exhibit concerns or refers to the operation, function, structure, or use of a product,
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`system, or method, Defendants’ contentions are based on information and belief. To the extent
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`that Canon contends that any of the anticipatory references do not anticipate any Asserted Claim,
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`Defendants further contend that each of the anticipatory references renders the claims obvious
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`either in view of the reference alone or in combination with other references and/or the knowledge
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`of a person of ordinary skill in the art.
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`While Defendants have identified at least one citation per element or limitation for each
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`reference identified in Exhibits A1-A9, B1-B20, C1-C14, D1-D14, E1-E14, each and every
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`disclosure of the same element or limitation in the same reference is not necessarily identified. In
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`an effort to focus the issues, Defendants cite exemplary relevant portions of identified references,
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`even where a reference may contain additional disclosure for a particular claim element or
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`limitation, and reserves all rights to rely on other portions of the identified references to support
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`its claims and/or defenses. Any reference to a figure in cited text incorporates by reference the
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`figure itself, and any citation to a figure incorporates by reference any description of that figure in
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`a reference. Similarly, any reference to a cited part or portion of a document encompasses all
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`figures and text within the cited page or portion. Additionally, many of the prior art references are
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`related to, or counterparts of, patent applications and issued patents that contain substantially the
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`same subject matter (e.g., published U.S. patent applications, issued U.S. patents, and foreign
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`applications or issued patents). Any citation to or quotation from any of these patent applications
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 9
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`or patents, therefore, should be understood as encompassing any parallel citation to the same
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`subject matter in other related or corresponding applications or patents. Supporting citations in
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`the Invalidity Charts are representative and do not necessarily represent every location where a
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`particular claim element may be found in the prior art reference. Defendants reserve the right to
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`rely on additional, or different, portions of the prior art other than those specifically cited, and to
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`supplement and/or amend these Invalidity Charts.
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`As noted above, these Invalidity Charts are based on Defendants’ understanding of the
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`claim constructions applied by Canon, even though Defendants do not necessarily agree with those
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`constructions and reserve the right to dispute them. To the extent any limitation is deemed not to
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`be met exactly by an item of prior art, Defendants contend that the difference would have been
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`obvious to a person of ordinary skill in the art and within the knowledge of one skilled in the art
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`at the time of the alleged invention, so that the claimed invention would have been obvious both
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`in light of the single reference alone and/or in light of combined references. Defendants do not
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`admit or concede that the element is not expressly or inherently disclosed by the reference at issue.
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`Much of the art identified in the attached Invalidity Charts reflects common knowledge
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`and the state of the art at the time of the earliest filing date of the Asserted Patent. Defendants
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`may rely on additional citations, references, expert testimony, fact testimony and other
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`corroborating evidence, and other material to provide context and background illustrating the
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`knowledge of a person of ordinary skill in the art at the time of the claimed inventions and/or to
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`aid in understanding the cited portions of the references and/or cited features of the systems.
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`Defendants may also rely on expert testimony explaining relevant portions of references, relevant
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`hardware or software products or systems, and other discovery regarding these subject matters.
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`Additionally, Defendants may rely on other portions of any prior art reference, whether or not
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 10
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`identified in the Invalidity Charts, particularly those produced in Defendants’ accompanying
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`production, for purposes of explaining the background, general technical subject area, and the
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`knowledge of a person of ordinary skill in the art. In addition, Defendants rely on all portions of
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`the prior art references that are identified in charts included in invalidity contentions served in
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`prior litigation involving the Patents-in-Suit and/or related patents and identified in petitions for
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`inter partes review for the Patents-in-Suit and/or related patents, as well as any obviousness
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`combinations identified in those documents.
`2.
`As set forth in Exhibits A1-A9, B1-B20, C1-C14, D1-D14, E1-E14 and O1-O5 and below,
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`Obviousness
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`each of the charted references, and any products, devices, or processes used in the prior art that
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`embody the subject matter disclosed in the references, anticipates and/or renders obvious one or
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`more Asserted Claims of the Patents-in-Suit. Each of the combinations of prior art references
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`described or identified in Claim Charts and below renders the Asserted Claims of the Patents-in-
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`Suit invalid under 35 U.S.C. § 103 for obviousness. Each prior art reference may be combined
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`with one or more other prior art references to render obvious the Asserted Claims, as explained in
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`more detail below. The disclosures of these references also may be combined with information
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`known to persons skilled in the art at the time of the alleged invention, and understood and
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`supplemented in view of the common sense of persons skilled in the art at the time of the alleged
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`invention, including any statements in the intrinsic record of the Asserted Patents and related
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`applications.
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`Defendants expressly intend to combine one or more prior art items identified in the
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`attached Exhibits with each other to address any further contentions from Canon that a particular
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`prior art item supposedly lacks one or more elements of an Asserted Claim. In other words,
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`Defendants contend that each charted prior art item can be combined with each other charted prior
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`art item (individually or in combination) to the extent the prior art item lacks or does not explicitly
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`disclose an element or feature of an Asserted Claim. The obviousness combinations described
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`below are not to be construed to suggest that any reference included in the combinations is not
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`anticipatory. Further, to the extent that Canon contends that any of the anticipatory prior art fails
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`to disclose one or more limitations of the Asserted Claims, Defendants reserve the right to identify
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`other prior art references that, when combined with the anticipatory prior art, would render the
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`claims obvious despite an allegedly missing limitation.
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`To the extent not explicitly disclosed by the prior art, the Asserted Claims of the Patents-
`
`in-Suit are nothing more than a combination of standard, conventional elements already existing
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`and well-known at the time of the purported invention, combined according to known methods to
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`achieve predictable results. The Asserted Claims are part of an unnecessary multiplicity of claims
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`fashioned by mixing-and-matching words and passages from the specification in an improper
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`attempt to stretch the breadth of the claims.
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`All of the following rationales support a finding of obviousness here:
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`1. Combining prior art elements according to known methods to yield predictable results;
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`2. Simple substitution of one known element for another to obtain predictable results;
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`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;
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`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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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 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.
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`Defendants further contend that the prior art identified in these Contentions is evidence of
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`simultaneous or near-simultaneous independent invention by others of the alleged invention as
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`recited in one or more of the Asserted Claims. Defendants reserve their right to rely on the
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`simultaneous or near-simultaneous independent invention by others as further evidence of the
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`obviousness of the Asserted Claims.
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`Each limitation of the Asserted Claims was well known to those of ordinary skill in the art
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`before the filing dates of the application to which the Asserted Patents claim priority, as detailed
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`below and in the attached charts.
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`The elements recited in the Asserted Claims are mere combinations and modifications of
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`these well-known elements. A person of ordinary skill in the art would be able, and motivated, to
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`improve the existing technology in the same or similar manner by combining or modifying the
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`individual elements that were already known in the art to yield predictable results.
`
`(a)
`
`The ’413 Patent
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`The following is a list of prior art references that, either alone, or in combination with the
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`knowledge of a person of ordinary skill in the art, Applicant’s Admitted Prior Art, and/or the
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`additional prior art references discussed below, in Exhibits A1–A9, in Exhibit O1, and/or in
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`Appendix I, would have rendered obvious one or more asserted claims of the ’413 patent, including
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`as indicated in the associated claim charts. A person of ordinary skill in the art would have been
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`motivated and had a reasonable expectation of success to make these combinations because, for
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`example, each would have been merely: (a) a combination of prior art elements according to known
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`methods to yield predictable results; (b) a simple substitution of one known element for another to
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`obtain predictable results; (c) a use of a known technique to improve similar devices in the same
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`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 13
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`way; (d) application of a known technique to a known device ready for improvement to yield
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`predictable results; (e) obvious to try; and/or (f) known work in one field of endeavor prompting
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`variations of it for use in either the same field or a different one based on design incentives or other
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`market forces since the variations are predictable to one of ordinary skill in the art.
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`Defendants contend that all claims that are anticipated by a particular reference are also
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`rendered obvious by that same reference alone, or in combination with other references, including
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`the references identified below.
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`Exh. No. Primary Reference
`A1
`Ben-Ze’ev
`
`Chu
`
`Herz
`
`Nichols
`
`Novak
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`Schindler
`
`Sevat
`
`Lethal Enforcers
`
`Pebbles PUC
`
`A2
`
`A3
`
`A4
`
`A5
`
`A6
`
`A7
`
`A8
`
`A9
`
`
`
`In Combination With:
`Chu; Herz; Nichols; Novak; Schindler; Sevat; Lethal
`Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Herz; Nichols; Novak; Schindler; Sevat;
`Lethal Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Nichols, Novak; Schindler; Sevat;
`Lethal Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Herz; Novak; Schindler; Sevat; Lethal
`Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Herz; Nichols; Schindler; Sevat;
`Lethal Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Herz; Nichols; Novak; Sevat; Lethal
`Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Herz; Nichols; Novak; Schindler;
`Lethal Enforcers; Pebbles PUC; Evans; Remillard; Yen;
`Huang; ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Herz; Nichols; Novak; Schindler;
`Sevat; Pebbles PUC; Evans; Remillard; Yen; Huang;
`ICrafter; Hayes; Handycam; AAPA
`Ben-Ze’ev; Chu; Herz; Nichols; Novak; Schindler;
`Sevat; Lethal Enforcers; Evans; Remillard; Yen; Huang;
`ICrafter; Hayes; Handycam; AAPA
`
`DEFENDANTS’ SUPPLEMENTAL INVALIDITY AND ELIGIBILITY CONTENTIONS – Page 14
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`One of ordinary skill in the art, at th