UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`OPTICAL LICENSING, LLC
`
`Plaintiff
`
`v.
`
`FUTURE ELECTRONICS, CORP.
`
`Defendant
`
`Case No. 6:21-cv-00188-ADA
`
`Jury Trial Demanded
`
`DEFENDANT FUTURE ELECTRONICS CORP.’S
`PRELIMINARY INVALIDITY CONTENTIONS
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`

`

`Pursuant to the Court’s August 16, 2021 Scheduling Order, Defendant Future Electronics
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`Corp. (“Future”) provides the following Preliminary Invalidity Contentions regarding the
`
`asserted claim of the U.S. Patent No. 6,791,898 (“the Asserted Patent”).
`
`Plaintiff, Optical Licensing, LLC (“Optical”) alleges in its Preliminary Infringement
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`Contentions dated June 30, 2021, that Defendant infringes claim 7 (“the Asserted Claim”) of the
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`Asserted Patent. As discussed below, Defendant contends that claim 7 is invalid under at least 35
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`U.S.C. §§ 102, 103, and/or 112.1
`
`Defendant reserves the right to supplement and/or amend these Preliminary Invalidity
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`Contentions should Plaintiff supplement and/or amend its Preliminary Infringement Contentions
`
`or otherwise alter its theory of the case. Nothing in these Preliminary Invalidity Contentions
`
`constitutes an admission of validity as to any other non-asserted claims of the Asserted Patents.
`
`A.
`
`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
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`Defendant’s Preliminary Invalidity Contentions reflect its present understanding of the
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`Asserted Claim and Plaintiff’s Infringement Contentions regarding the Asserted Claim.
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`Defendant’s Preliminary Invalidity Contentions are based on Defendant’s current knowledge,
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`understanding, and belief as to the facts and information available as of the date of these
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`Preliminary Invalidity Contentions. Defendant has not yet completed its investigation, discovery,
`
`or analysis of matters relating to the invalidity of the Asserted Claim, including without
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`limitation invalidity due to on-sale or public use statutory bars. In addition, Defendant’s search
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`for prior art is ongoing. Accordingly, Defendant reserves the right to amend, modify, and
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`supplement, without prejudice, these Preliminary Invalidity Contentions as additional
`
`1 Given that the application date for the Asserted Patent pre-dates the AIA, Defendant contends pre-AIA
`statutes are controlling. All references to sections of 35 U.S.C. are therefore to pre-AIA versions unless
`otherwise specified therein.
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`information is discovered or otherwise identified or appreciated, including testimony about the
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`scope and content of the claimed inventions or state of the prior art.
`
`Defendant submits these Preliminary Invalidity Contentions without waiving any
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`contention that Optical’s Infringement Contentions are insufficient and fail to adequately set
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`forth where in each accused product each element of the Asserted Claim is found. Nothing stated
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`herein is or shall be treated as an admission or suggestion that Defendant agrees with Optical
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`regarding either the scope of the Asserted Claim or the claim constructions advanced directly or
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`implicitly by Optical’s Preliminary Infringement Contentions or in any other pleading, discovery
`
`request or response, or written or verbal communications with Defendant. Additionally, nothing
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`in these Preliminary Invalidity Contentions shall be treated as an admission that any accused
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`product meets each and every limitation of the Asserted Claim. The disclosures herein are not
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`and should not be construed as a statement that no other persons have discoverable information,
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`that no other documents, data compilations, or tangible things exist that Defendant may use to
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`support its claims or defenses, or that no other legal theories or factual bases will be pursued.
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`In the absence of a claim construction order from the Court, Defendant has based these
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`Preliminary Invalidity Contentions upon their knowledge and understanding of the potential
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`scope of the Asserted Claim at this time, and, in part, upon the apparent constructions of the
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`Asserted Claim advanced by Optical in its Preliminary Infringement Contentions. Furthermore,
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`Optical’s Preliminary Infringement Contentions contradict how a person of ordinary skill in the
`
`art would understand the Asserted Patent and the claim terms, and are vague and conclusory
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`concerning how certain claim limitations supposedly read on the accused products. Thus,
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`Defendant is unable to discern Optical’s position regarding the construction of numerous claim
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`limitations and has provided these Preliminary Invalidity Contentions, in part, based in part on its
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`present understanding of Optical’s apparent constructions. Finally, Defendant’s Preliminary
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`Invalidity Contentions do not represent Defendant’s agreement or view as to the meaning of any
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`claim term contained therein, and Defendant may disagree with Optical’s interpretation of the
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`meaning of terms and phrases in the Asserted Claim. In addition, Defendant’s Preliminary
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`Invalidity Contentions do not represent Defendant’s agreement or view as to whether any claim
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`preamble is limiting.
`
`Defendant reserves the right to supplement, without prejudice, these Preliminary
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`Invalidity Contentions as appropriate depending upon the Court’s construction of the Asserted
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`Claim, any findings as to the priority date of the Asserted Patent, and positions that Optical or its
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`expert witness(es) may take concerning claim interpretation, infringement, or invalidity issues.
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`Defendant provides certain claim charts as described herein. The claim charts reflect the
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`theories of invalidity described in each chart, including anticipation and obviousness. The
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`suggested obviousness combinations are in the alternative to Defendant’s anticipation
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`contentions. The disclosed obviousness combinations are not meant to be exhaustive and should
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`not be construed to suggest that any reference does not anticipate the Asserted Claim. As
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`reflected in the attached exhibits, the discussion herein, and in the references themselves, all
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`elements of the Asserted Claim were disclosed in the art and in the general knowledge of a
`
`person of ordinary skill before the Asserted Patents’ earliest possible priority date. Furthermore,
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`one of ordinary skill in the art would have readily combined their teachings. Each of the
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`references cited herein, including the identified prior art systems, or in the attached exhibits may
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`be combined and modified in several obvious ways to achieve the claimed memory device,
`
`including those disclosed in the attached exhibits or the discussion therein.
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`Defendant’s contentions of invalidity under § 112 are based in whole or in part on its
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`present understanding of the Asserted Claim and Optical’s apparent construction of that claim in
`
`its Preliminary Infringement Contentions. Accordingly, Defendant’s Preliminary Invalidity
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`Contentions may reflect alternative positions as to claim construction and scope of the Asserted
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`Claim. Further, by asserting grounds for invalidity based on Optical’s apparent claim
`
`construction or any other particular claim construction, Defendant is not adopting Optical’s
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`claim construction, nor admitting to the accuracy of any particular claim construction.
`
`B.
`
`PRIORITY DATE OF THE ASSERTED CLAIM
`
`In its Preliminary Infringement Contentions, Optical contends that the Asserted Claim of
`
`the ’898 Patent is entitled to a priority date of at least October 11, 2002, the filing date of the
`
`application of the ’898 Patent. For purposes of these contentions, Defendant identifies prior art to
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`October 11, 2002.
`
`C.
`
`INVALIDITY DUE TO ANTICIPATION (35 U.S.C. § 102) AND OBVIOUSNESS
`(35 U.S.C. § 103)
`
`Defendant contends that the Asserted Claim is invalid at least under 35 U.S.C. § 102 and
`
`under 35 U.S.C. § 103. Pursuant to the Scheduling Order and Order Governing Proceedings,
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`Defendant has attached charts setting forth where in the prior art references each element of the
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`Asserted Claim is found in the prior art references. Defendant reserves the right to rely on other
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`references disclosed or incorporated by reference in these Preliminary Invalidity Contentions, in
`
`the Asserted Patent, any patents or applications related to the Asserted Patent, in the file history
`
`of the Asserted Patent or any related patents or applications, and the references disclosed in the
`
`attached exhibits.
`
`Defendant’s detailed contentions as to how each identified prior art reference anticipates
`
`or renders obvious, or combination of references render obvious, the Asserted Claim are set forth
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`in claim chart form and attached as Exhibits A1-A10 and B1-B3 (collectively, “Exhibits”).
`
`Defendant’s claim charts may disclose multiple theories of invalidity in a single chart. For
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`example, each chart directed to an anticipatory reference may additionally describe in the
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`alternative that the reference renders the Asserted Claim obvious, whether alone in light of the
`
`knowledge of a person of ordinary skill in the art at the relevant time period or in combination
`
`with one or more other prior art references described therein.
`
`Where Defendant cites to a particular figure in a prior art reference, the citation should be
`
`understood to encompass the caption and description of the figure as well as any text relating to
`
`the figure in addition to the figure itself. Conversely, where a cited portion of text refers to a
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`figure, the citation should be understood to include the figure as well. Furthermore, while
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`Defendant has generally identified at least one citation per limitation present in a reference or
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`combination, each and every disclosure of the same or similar limitation in the same reference or
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`combination is not necessarily identified. Further, Defendant identifies only exemplary
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`disclosures from the prior art references and may rely on uncited portions of the prior art
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`references for additional support for a particular element. Defendant may rely upon other prior
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`art identified in future supplements, corroborating references, documentation, source code,
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`products, and testimony, including materials obtained through further investigation and third-
`
`party discovery of the prior art identified herein, that demonstrates the invalidating functionality
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`identified in these Preliminary Invalidity Contentions or that show the state of the art in the
`
`relevant time period (irrespective of whether such references themselves qualify as prior art to
`
`the Asserted Patent), and expert testimony to provide context to or aid in understanding the cited
`
`portions of the identified prior art. Similarly, where there are multiple references relating to a
`
`single prior art product or system, Defendant may cite only to a single reference for a particular
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`limitation, even though other references may also contain similar teachings. Further, Defendant
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`may use one or more technical experts to establish the interpretation of an element from a person
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`of ordinary skill in the art at the relevant time, including citing to further references in support of
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`any such expert positions.
`
`Additionally, persons of ordinary skill in the art at the time of the alleged inventions
`
`generally read a prior art reference as a whole and in the context of other publications and
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`literature. Numerous prior art references, including those identified herein and in the Exhibits,
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`reflect common knowledge of a person of ordinary skill in the art at the relevant time and the
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`state, scope, and content of the prior art before the priority date of the Asserted Claim of the
`
`Asserted Patent. Defendant may rely on uncited portions of the prior art references, on other
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`publications, and expert testimony to provide context, corroboration, and as aids to
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`understanding and interpreting the portions that are cited, if such citations may be relevant.
`
`In general, a claimed invention is invalid due to obviousness “if the differences between
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`the claimed invention and the prior art are such that the claimed invention as a whole would have
`
`been obvious before the effective filing date of the claimed invention to a person having ordinary
`
`skill in the art.” 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). The
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`ultimate determination of whether an invention is or is not obvious is a legal conclusion based on
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`underlying factual inquiries including: “(1) the scope and content of the prior art; (2) the
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`differences between the prior art and the claims; (3) the level of ordinary skill in the art at the
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`time of invention; and (4) objective evidence of nonobviousness.” Miles Labs., Inc. v. Shandon,
`
`Inc., 997 F.2d 870, 877 (Fed. Cir. 1993); see Graham, 383 U.S. at 17-18. The U.S. Supreme
`
`Court decision in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) reaffirmed
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`Graham, but further held that a claimed invention can be obvious even if there is no explicit
`
`teaching, suggestion, or motivation for combining the prior art to produce that invention.
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`To the extent that any claim limitation is not anticipated pursuant to 35 U.S.C. § 102,
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`Defendant contends that any purported differences are such that the claimed subject matter as a
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`whole would have been known and/or obvious to one skilled in the art at the time of the alleged
`
`inventions, in view of the state of the art and knowledge of those skilled in the art under
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`35 U.S.C. § 103. As shown in the Exhibits, the Asserted Claim would have been obvious in view
`
`of each reference cited in the Exhibits either alone or combined with the knowledge that was
`
`possessed by one of ordinary skill in the art. Additionally, the Asserted Claim would have been
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`obvious to one of ordinary skill in the art in view of the combination of any one of the prior art
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`references identified in the Exhibits with one or more of the other references identified or
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`discussed in the same Exhibits.
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`In particular, those of ordinary skill in the art at the time of the alleged inventions of the
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`Asserted Patent would have been motivated to modify or combine the prior art references
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`because, for example: (a) the references in general deal with the same or related subject matter;
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`(b) one of ordinary skill in the art would have been motivated by the problem that the inventor
`
`was attempting to solve, or with other problems that would have been faced in reaching a
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`solution, and would have looked to references that concerned similar issues or taught how to
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`overcome the problems faced; (c) the combinations were obvious to try and would have operated
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`in their known and expected way; (d) the combinations were within the technical skill and
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`understanding of a person of ordinary skill in the art; (e) the combinations would have been
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`motivated by the developments in technology; and (f) the combinations reflect various design
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`choices that would have been known to one of ordinary skill in the art and within that person’s
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`technical capability to implement (i.e., technically feasible).
`
`The various motivations described above provide a basis for combining or modifying
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`references, as detailed below, to render the Asserted Claim obvious. In addition, the Court can
`
`consider the inferences and creative steps a person of ordinary skill in the art would employ in
`
`making such combinations. See KSR, 127 S. Ct. at 1741 (“a court can take account of the
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`inferences and creative steps that a person of ordinary skill in the art would employ”).
`
`Further, Defendant may use one or more technical experts to establish the state of
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`knowledge and/or understanding of a particular element from a person of ordinary skill in the art
`
`at the relevant time, including citing to further references in support of any such expert positions.
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`Additionally, Defendant contends that certain non-parties and current or former
`
`employees thereof may have possession of relevant information and/or documents constituting
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`prior art to the Asserted Patent. Defendant’s investigation into these and other companies and
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`their products is ongoing. Defendant reserves the right to supplement these Preliminary
`
`Invalidity Contentions to identify additional references, combinations, motivations to modify, or
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`explanations for particular references based on any information and/or documents provided by
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`the former employees and/or successors-in-interests of companies or individuals who may
`
`possess relevant information and/or documents constituting prior art to the Asserted Patent.
`
`Because discovery has not opened, Defendant expects to gather additional information about the
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`identified prior art, and other prior art, through third party discovery or other discovery, and will
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`thus amend and supplement these invalidity contentions once they obtain that discovery and have
`
`meaningful and reasonable time to analyze it. As described in more detail below, claims of the
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`asserted patents are also invalid under 35 U.S.C. § 112; however, even the concepts that fail
`
`under these sections have been identified in the prior art to the extent they are cognizable.
`
`Moreover, Defendant reserves the right to rely on inventor admissions concerning the
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`scope of the prior art relevant to the Asserted Patent found in, inter alia, the prosecution histories
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`of the Asserted Patent or related patents and/or patent applications, any testimony or declarations
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`of the named inventors concerning the Asserted Patent or related patents, and any papers or
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`evidence submitted by Plaintiff in connection with this litigation, any other pending or future
`
`litigation brought by Plaintiff involving the Asserted Patent or related patents, or inter partes
`
`review proceedings involving the Asserted Patent or related patents. Defendant may also
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`establish what was known to a person having ordinary skill in the art through treatises, published
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`industry standards other publications, products, and/or testimony.
`
`a. The ’898 Patent
`
`1. Identification of Prior Art Patents and Patent Publications to
`the Asserted Claims of the ’898 Patent.
`
`The tables below list prior art that anticipates and/or renders obvious one or more of the
`
`asserted claims. The attached claim charts in Exhibits A1-A10 demonstrate where each
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`limitation of the Asserted Claim is found in certain of the references or prior art products listed
`
`below, either expressly or inherently in the larger context of the passage, as understood by a
`
`person having ordinary skill in the art. The following patents and publications identified in
`
`Table 1 are prior art under at least 35 U.S.C. §§ 102(a), (b), or (e).
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`Table 1.
`
`Ex.
`
`Reference / Prior Art
`Product
`
`Filing/Priority
`Date
`
`Issue/Publication/On-
`Sale Date
`
`Short Cite
`
`A1
`
`A2
`
`A3
`
`A4
`
`A5
`
`A6
`
`A7
`
`A8
`
`A9
`
`U.S. Pat. No. 5,124,589
`
`April 25, 1991
`
`June 23, 1992
`
`U.S. Pat. No. 5,384,737
`
`March 8, 1994
`
`Jan. 24, 1995
`
`Shiomi
`
`Childs
`
`U.S. Pat. No. 5,953,285
`
`Sep. 17, 1997
`
`Sep. 14, 1999
`
`Churchill
`
`U.S. Pat. No. 6,026,465
`
`June 3, 1994
`
`Feb. 15, 2000
`
`U.S. Pat. No. 6,209,071
`
`May 7, 1996
`
`March 27, 2001
`
`STi5512 (prior art product)
`
`Oct. 29, 1999
`
`U.S. Pat. No. 5,903,496
`
`June 25, 1997
`
`May 11, 1999
`
`U.S. Pat. No. 5,572,676
`
`Aug. 26, 1994
`
`Nov. 5, 1996
`
`U.S. Pat. No. 6,172,936
`
`Feb. 24, 1999
`
`Jan. 9, 2001
`
`Mills
`
`Barth
`
`STi5512
`
`Kendall
`
`Ohnishi
`
`Kitazaki
`
`A10 U.S. Pat. No. 6,587,913
`
`Jan. 31, 2001
`
`July 1, 2003
`
`Campanale
`
`2. Obviousness Combinations
`
`To the extent that any one of the anticipation references is found not to disclose a
`
`limitation recited in the Asserted Claim from the ’898 patent, it would have been obvious to one
`
`of ordinary skill in the art at the time of the alleged invention of the ’898 patent either (i) to
`
`modify the reference to include this limitation and any remaining limitations of this claim and/or
`
`(ii) to combine said reference with any other of the references in Exhibits A1 to A10, and/or with
`
`a person having ordinary skill in the art’s (“POSITA’s”) general knowledge. Generally,
`
`motivation to combine any of these references with others exists within the references
`
`themselves, as well as within the knowledge of those of ordinary skill in the art at the relevant
`
`time. For example, all of the identified references and prior art products allow for both
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`synchronous and asynchronous data transfer operations. A person having ordinary skill in the art
`
`would have been motivated to combine any of the references described in attached Exhibits A1
`
`to A10, at least because the mechanisms to switch between synchronous and asynchronous
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`transfer were easily substituted. A person having ordinary skill in the art at the time of filing of
`
`the asserted ’898 patent would have understood the references listed above, alone or in
`
`combination, to contain explicit and/or implicit teaching, suggestion, and/or rationales to
`
`combine them for at least the following exemplary reasons.
`
`Defendant contends that it would have been obvious to modify the above-listed prior art
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`to include any allegedly missing element, in view of the knowledge of one of ordinary skill in the
`
`art, the admitted prior art of the ’898 patent, and/or in combination with any of the other prior art
`
`references identified for the ’898 patent. Defendant reserves the right to rely upon any
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`combination of prior art references whether listed herein or otherwise.
`
`A person of ordinary skill in the art having knowledge of the above-listed patents,
`
`articles, and systems, among other things, would be motivated, taught, and suggested to combine
`
`the prior art discussed in Exhibits A1 to A10 with one another, at least because combining the
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`prior art elements would have been done utilizing known methods and yielded predictable
`
`results; were a matter of simple substitution of one known element for another to obtain
`
`predictable results; were a matter of selecting from a finite number of identified, predictable
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`solutions and would have had a reasonable expectation of success; in addition to the specific
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`teachings and motivations to combine provided in the references themselves.
`
`Further, the Asserted Claim of the ’898 patent simply arranges old elements known in the
`
`field, with each element performing the same function it had been known to perform, and yield
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`no more than what one would expect from such an arrangement. Such combinations of the prior
`
`art are obvious, as further detailed below.
`
`In addition to the combination of references identified above, the following references
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`and combination of references render the Asserted Claim obvious.
`
`Ex.
`
`B1
`
`B2
`
`B3
`
`References
`
`Churchill combined with Shiomi
`
`U.S. Pat. No. 5,548,560 combined with Shiomi
`
`U.S. Pat. No. 5,655,113
`
`The combinations of references provided above are exemplary and are not intended to be
`
`exhaustive. Additional obviousness combinations of the references identified here are possible,
`
`and Defendant may rely on such combination(s) in this litigation. In particular, Defendant is
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`currently unaware of Optical’s allegations with respect to the level of ordinary skill in the art and
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`the qualifications of the typical person of ordinary skill in the art. Defendant is also unaware of
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`the extent, if any, to which Optical may contend that limitations of the claims at issue are not
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`disclosed in the prior art identified by Defendant as anticipatory, and the extent to which
`
`Defendant will contend that elements not disclosed in the asserted patent specifications would
`
`have been known to persons of ordinary skill in the art. And Defendant does not yet know how
`
`the Court will construe terms in the asserted claims. Defendant is also continuing its
`
`investigation of the large universe of prior art to identify potential prior art systems, publications
`
`related to those systems, and third parties that may have information about those systems.
`
`Optical may also be in possession of prior art that Defendant may receive after discovery opens
`
`in this case. Defendant reserves the right to amend and supplement these contentions to identify
`
`other prior art and combinations rendering the asserted claims obvious.
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`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`D.
`
`INVALIDITY DUE TO INDEFINITENESS, LACK OF WRITTEN DESCRIPTION,
`AND ENABLEMENT (35 U.S.C. § 112)
`
`The specification of the Asserted Patent does not provide adequate written description to
`
`support the scope of the claims asserted by Optical in furtherance of its infringement theories or
`
`any reasonably understood scope of the claims. 35 U.S.C. § 112 ¶ 12 requires the specification to
`
`contain “a written description of the invention.” To fulfill the written description requirement,
`
`the specification “must clearly allow persons of ordinary skill in the art to recognize that the
`
`inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`
`(Fed. Cir. 2010) (citation omitted). To satisfy the written description requirement, “the applicant
`
`must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought,
`
`he or she was in possession of the invention,’ and demonstrate that by disclosure in the
`
`specification of the patent.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115,
`
`1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
`
`1991)).
`
`Additionally, the Asserted Patent does not enable the claim scope contended in Optical’s
`
`Infringement Contentions. Title 35 U.S.C. § 112 ¶ 1 requires the specification to describe “the
`
`manner and process of making and using [the invention], in such full, clear, concise, and exact
`
`terms as to enable any person skilled in the art to which it pertains … to make and use the
`
`[invention].” The enablement requirement is separate from and in addition to the written
`
`description requirement. Ariad, 598 F.3d at 1344. This “requirement is satisfied when one skilled
`
`2 Because Optical contends that the Asserted Claim is entitled to a priority date before October 11, 2002,
`Defendant applies pre-AIA 35 U.S.C. § 112 here. However, to the extent that any other form of the patent
`statute (e.g., post-AIA) regarding invalidity for indefiniteness, non-enablement, or lack of written
`description applies, Defendant’s contentions and analysis likely apply equally.
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
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`in the art, after reading the specification, could practice the claimed invention without undue
`
`experimentation.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003)
`
`(citation omitted); Wyeth & Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380 (Fed. Cir.
`
`2013).
`
`The Asserted Claim of the Asserted Patent is invalid for failing to comply with the
`
`definiteness requirement of 35 U.S.C. § 112. Defendant notes that its charting of prior art
`
`references for a claim or limitation that Defendant contends is invalid for lack of definiteness in
`
`no way represents an admission or concession that the scope of the claim or limitation is definite
`
`or ascertainable. Title 35 U.S.C. § 112 ¶ 2 requires that a patent claim “particularly point[] out
`
`and distinctly claim[] the subject matter which the applicant regards as his invention.” Claim
`
`terms that fail to inform those skilled in the art “with reasonable certainty . . . about the scope of
`
`the invention” fail the definiteness requirement of § 112 ¶ 2. Nautilus, Inc. v. Biosig Instruments,
`
`Inc., 134 S. Ct. 2120, 2124 (2014).
`
`Claim Elements of the ’898 Patent
`Lacking Enablement, Definiteness, and/or Sufficient Written Description
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`“asynchronous/synchronous logic”
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`“latched”
`
`E.
`
`DOCUMENT PRODUCTION
`
`In accordance with the Scheduling Order and concurrent with service of these Preliminary
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`Invalidity Contentions, Defendant is also producing documents labelled PriorArt_0000001
`
`through PriorArt_0000486. Defendant, to its current knowledge, is not in possession of any
`
`documentation sufficient to show the operation of the accused functionality of the accused product.
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`
`-14-
`
`

`

`Dated: September 14, 2021
`
`/s/ Vishal Patel
`Vishal Patel
`Texas Bar No. 24065885
`vpatel@coleschotz.com
`
`COLE SCHOTZ, P.C.
`901 Main Street, Suite 4120
`Dallas, Texas 75202
`Tel: (469) 557-9390
`Fax: (469) 533-1587
`
`Molly G. Rothschild
`New York Bar No. 5691589
`mrothschild@coleschotz.com
`
`COLE SCHOTZ, P.C.
`1325 Avenue of the Americas
`Suite 1900
`New York, NY 10019
`Tel: (212) 752-8000
`
`ATTORNEYS FOR DEFENDANT
`FUTURE ELECTRONICS CORP.
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`
`-15-
`
`

`

`CERTIFICATE OF SERVICE
`
`The foregoing document was served on counsel of record for Plaintiffs via electronic mail
`
`on September 14, 2021.
`
`/s/Vishal Patel
`Vishal Patel
`
`DEFENDANT’S PRELIMINARY INVALIDITY CONTENTIONS
`
`-16-
`
`