Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 1 of 17
`
`EXHIBIT A
`
`Sony Exhibit 1028 Page 1
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 2 of 17
`
`
`
`Jordan A. Sigale (Ill. ARDC 6210047)
`Admitted pro hac vice
`jsigale@dunlapcodding.com
`Julie Langdon (Ill. ARDC 6291722)
`Admitted pro hac vice
`jlangdon@dunlapcodding.com
`DUNLAP CODDING PC
`225 West Washington St., Ste. 2200
`Chicago, IL 60606
`Tel: 312.651.6744
`
`-and-
`
`Douglas J. Sorocco (OK. Bar 17347, Ill.
`ARDC 2381747); Admitted pro hac vice
`dsorocco@dunlapcodding.com
`Evan Talley (OK Bar 22923) Adm.Pro hac
`Vice; etalley@dunlapcodding.com
`DUNLAP CODDING PC
`
`609 West Sheridan Avenue
`Oklahoma City, OK 73102
`Tel:
`405. 607.8600
`
`Attorneys for Plaintiff
`Barbaro Technologies, LLC
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
` Plaintiff,
`
`
`
`Defendant.
`
`Case No. 3:18-cv-02955-RS
`
`BARBARO TECHNOLOGIES, LLC’S
`AMENDED DISCLOSURE OF ASSERTED
`CLAIMS AND INFRINGEMENT
`CONTENTIONS
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`BARBARO TECHNOLOGIES, LLC,
`
`
`
`
`
`NIANTIC, INC.,
`
`
`
`
`
`BARBARO TECHNOLOGIES, LLC’S AMENDED DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`Plaintiff Barbaro Technologies, LLC (“Barbaro”) provides the following Amended
`
`Disclosure of Asserted Claims and Infringement Contentions pursuant to Patent L.R. 3-1, and in
`
`
`
`
`
`AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`Sony Exhibit 1028 Page 2
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 3 of 17
`
`
`
`compliance with Patent L.R. 3-6, based on the information presently available to it at this time.
`
`Barbaro reserves the right to further supplement or amend these disclosures and infringement
`
`contentions, including the list of accused instrumentalities, pursuant to Patent L.R. 3-6, upon
`
`continuing its investigation and based upon further discovery. While Barbaro has not amended
`
`the Infringement Contention charts A1-A6 in substance, it has amended the titles and the dates of
`
`the charts A1-A6 to correspond to this document; and as such, serves those charts with this
`
`document.
`
`A. Asserted Claims
`
`
`Barbaro asserts that Niantic, Inc. (“Niantic”) directly infringed and continues to infringe
`
`(1) claims 1-3, 5-8, 10-12, 15-17, 19, 24-25 of U.S. Patent No. 7,373,377 (the ‘377 patent)
`
`through the use and manufacture of its Pokémon Go application (Generations 1-3) and specially
`
`configured servers (i.e., client-server computer system), (2) claims 1-3, 5-8, 10-12, 15-17, 19, 24-
`
`25 of the ‘377 patent through the use and manufacture of its Ingress application and specially
`
`configured servers (i.e., client-server computer system), (3) claims 1, 3, and 5-6 of U.S. Patent
`
`No. 8,228,325 (the ‘325 patent) through the use and manufacture of its Pokémon Go application
`
`(Generations 1-3) and specially configured servers (i.e., client-server computer system), and (4)
`
`claims 1-3 and 5-6 of the ‘325 patent through the use and manufacture of its Ingress application
`
`and specially configured servers (i.e., client-server computer system) under 35 U.S.C. 271(a).
`
`Based on the information available to it today, Barbaro also asserts that Niantic infringed
`
`and continues to infringe (1) claims 1-3, 5-8, 10-12, 15-17, 19, 24-25 of U.S. Patent No.
`
`7,373,377 (the ‘377 patent) through the supply of its Pokémon Go application (Generations 1-3)
`
`from the United States to foreign countries that is then subsequently combined with client devices
`
`and specially configured servers (i.e., client-server computer system) in those foreign countries,
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`- 2 -
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 3
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 4 of 17
`
`
`
`(2) claims 1-3, 5-8, 10-12, 15-17, 19, and 24-25 of the ‘377 patent through the supply of its
`
`Ingress application from the United States to foreign countries that is then subsequently combined
`
`with client devices and specially configured servers (i.e., client-server computer system) in those
`
`foreign countries, (3) claims 1, 3, and 5-6 of U.S. Patent No. 8,228,325 (the ‘325 patent) through
`
`the supply of its Pokémon Go application (Generations 1-3) from the United States to foreign
`
`countries that is then subsequently combined with client devices and specially configured servers
`
`(i.e., client-server computer system) in those foreign countries, and (4) claims 1, 3 and 5-6 of the
`
`‘325 patent through the supply of its Ingress application from the United States to foreign
`
`countries which is then subsequently combined with client devices and specially configured
`
`servers (i.e., client-server computer system) in those foreign countries under 35 U.S.C. 271(f)(2).
`
`Specifically, end users of Niantic’s Pokémon Go and Ingress applications use the applications
`
`throughout the world on client devices. Niantic’s foreign users have downloaded and continue to
`
`download copies of the software application (i.e., a component under 271(f)(2)) made in the U.S.
`
`Because the software application is downloaded from the internet it is likely that the software
`
`application as downloaded in foreign countries is from a copy made in the U.S., which constitutes
`
`an act of infringement under 35 U.S.C. 271(f)(2). Thus, Barbaro believes that additional
`
`discovery will support that Niantic has supplied and continues to supply a component (i.e., the
`
`Pokémon Go application (Generations 1-3) and/or the Ingress application) from the United States
`
`to foreign countries that is then subsequently combined with client devices and specially
`
`configured servers (i.e., client-server computer system) and used in the foreign countries in a
`
`manner that infringes the patents and claims set forth at the beginning of this paragraph.
`
`Based on the information it currently has available, Barbaro currently contends that
`
`Niantic directly meets each and every limitation of the above-identified claims. However, if it is
`
`
`
`
`
`- 3 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 4
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 5 of 17
`
`
`
`later determined that Niantic has not directly infringed any of the above-identified claims of
`
`either the ‘377 patent or the ‘325 patent because a user of the Pokémon Go and/or Ingress
`
`applications perform and/or provides some or all of the limitations of any of the above-identified
`
`claims, then Niantic would still be found to infringe the asserted claims of the ‘377 patent and the
`
`‘325 patent because Niantic had manufactured or used and continues to manufacture or use the
`
`Ingress and Pokémon Go applications and has instructed and continues to instruct end users of the
`
`Ingress and Pokémon Go applications such that Niantic directs or controls end users of its
`
`Pokémon Go and/or Ingress applications in their practice of one or more of the limitations of the
`
`asserted claims by activating certain features of the Pokémon Go and/or Ingress applications such
`
`that the end user is able to perform activities within the applications during gameplay.
`
`Specifically Niantic directs, and has directed in the past, end users to request first and/or second
`
`real-time information from Niantic’s specially configured servers by a user activation such as
`
`launching the application or launching certain features within either the Pokémon Go or Ingress
`
`applications as a condition to fully enable the applications, and to receive a benefit from the
`
`features within the applications by allowing the end user to perform the steps of one or more of
`
`the asserted methods, systems and in turn to successfully play Niantic’s games. See e.g., Akamai
`
`Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022-23 (2015) (joint infringement
`
`between software manufacturer and end user). Niantic also directs, or has directed in the past, end
`
`users to use their client devices to access the Pokémon Go and Ingress applications.
`
`Barbaro expressly reserves the right to supplement or amend these disclosures and
`
`infringement contentions to add any assertions of infringement under 35 U.S.C. 271(b) based
`
`upon additional discovery.
`
`
`
`
`
`- 4 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 5
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 6 of 17
`
`
`
`B. Accused Infringing Instrumentalities
`
`
`Barbaro is aware of at least two client-server computer systems (i.e., instrumentalities)
`
`that infringe claims of the ‘377 patent and the ‘325 patent identified in A. Specifically, (1)
`
`Niantic’s Pokémon Go application (Generations 1-3), including all versions and updates of the
`
`application, in combination with Niantic’s specially configured servers (i.e., client-server
`
`computer systems), and (2) Niantic’s Ingress application, including all versions and updates of the
`
`application from October 11, 2016 to the present, in combination with Niantic’s specially
`
`configured servers (i.e., client-server computer systems) each infringe the claims of the ‘377 and
`
`‘325 patents (as set forth above). For purposes of this analysis, and based on the lack of publicly-
`
`available information, Barbaro treats Pokémon Go Generation 2 as nearly identical to Generation
`
`1 and analyzes those products together in the same chart. In fact, according to publicly-available
`
`information on the date of the Generation 2 release a “software update” did not occur, and so,
`
`Generation 1 and Generation 2 can be properly analyzed together. Additionally, Barbaro believes
`
`that once it obtains the pre-October 11, 2016 discovery on other versions and updates to the
`
`Ingress application it will be evident that the prior versions of Ingress also infringe the claims of
`
`the ‘377 and ‘325 patents. As such, upon receiving discovery relating to Pokémon Go application,
`
`Generation 2, and the pre-October 11, 2016 versions of the Ingress application, Barbaro will
`
`move the Court to update its contentions to address those instrumentalities.
`
`Thus, the Pokémon Go application, Generations 1 and 2, including all versions and
`
`updates of the application, in combination with Niantic’s specially configured servers (i.e., client-
`
`server computer systems) infringe at least claims 1-3, 5-8, 10-12, 15-17, 19, 24-25 of the ‘377
`
`patent and at least claims 1, 3 and 5-6 of the ‘325 patent; the Pokémon Go application, Generation
`
`3, including all versions and updates of the software, in combination with Niantic’s specially
`
`
`
`
`
`- 5 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 6
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 7 of 17
`
`
`
`configured servers (i.e., client-server computer systems) infringes at least claims 1-3, 5-8, 10-12,
`
`15-17, 19, 24-25 of the ‘377 patent and at least claims 1, 3, and 5-6 of the ‘325 patent; and the
`
`Ingress application, including all versions and updates of the software, in combination with
`
`Niantic’s specially configured servers (i.e., client-server computer systems), infringes at least
`
`claims 1-3, 5-8, 10-12, 15-17, 19, 24-25 of the ‘377 patent and at least claims 1, 3 and 5-6 of the
`
`‘325 patent.
`
`The software updates (versions) of Niantic’s Pokémon Go application (Generations 1-3)
`
`which have been identified (as of the date of this filing) as infringing when combined with
`
`Niantic’s specially configured servers (i.e., client-server computer systems) are:
`
`iOS Update
`
`Android Update
`
`Date of Release
`July 6, 2016 (Generation 1)
`July 12, 2016
`July 13, 2016
`July 20, 2016
`July 30, 2016
`August 1, 2016
`August 8, 2016
`August 10, 2016
`August 22, 2016
`September 10, 2016
`September 16, 2016
`September 24, 2016
`October 12, 2016
`October 14, 2016
`October 23, 2016
`October 26, 2016
`
`- 6 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`0.29
`
`0.29.2
`0.29.3
`0.31.0
`
`0.33.0
`
`0.35.0
`0.37.0
`
`0.39.0
`0.41.2
`0.41.4
`0.43.3
`0.43.4
`
`1.0.0
`1.0.1
`1.0.2
`1.0.3
`1.1.0
`1.1.1
`1.3.0
`1.3.1
`1.5.0
`1.7.0
`1.7.1
`1.9.0
`1.11.2
`1.11.4
`1.13.3
`1.13.4
`
`
`
`
`
`Sony Exhibit 1028 Page 7
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 8 of 17
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`1.15.0
`1.17.0
`1.19.1
`1.21.0
`1.23.1
`1.25.0
`1.27.2
`1.27.3
`1.29.1
`1.31.0
`1.33.1
`1.33.4
`1.37.1
`1.37.2
`1.39.0
`1.39.1
`1.43.1
`1.45.0
`1.47.1
`1.49.2
`1.49.4
`1.53.2
`1.55.1
`1.57.5
`1.59.1
`1.61.1
`1.61.2
`1.63.2
`1.65.3
`
`
`
`
`
`
`0.45.0
`0.47.1
`0.49.1
`0.51.0
`0.53.1
`0.55.0
`0.57.2
`0.57.3
`0.59.1
`0.61.0
`0.63.1
`0.63.4
`0.67.1
`0.67.2
`0.69.0
`0.69.1
`0.73.1
`0.75.0
`0.77.1
`0.79.2
`0.79.4
`0.83.1
`0.85.2
`0.87.5
`0.89.1
`0.91.1
`0.91.2
`0.93.2
`0.95.3
`
`- 7 -
`
`November 6, 2016
`November 18, 2016
`December 6, 2016
`December 19, 2016
`January 17, 2017
`January 28, 2017
`February 16, 2017
`February 27, 2017
`March 21, 2017
`April 6, 2017
`May 9, 2017
`June 5, 2017
`June 20, 2017
`June 29, 2017
`July 18, 2017
`July 28, 2017
`August 31, 2017
`September 12, 2017
`October 7, 2017
`October 14, 2017
`November 8, 2017
`November 21, 2017
`December 8, 2017
`December 21, 2017
`January 17, 2018
`February 5, 2018
`February 13, 2018
`March 6, 2018
`March 16, 2018
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`Sony Exhibit 1028 Page 8
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 9 of 17
`
`
`
`1.67.2
`1.69.2
`1.71.1
`1.73.3
`1.73.5
`1.75.0
`1.75.1
`1.77.1
`1.79.1
`1.79.2
`1.81.2
`1.81.3
`1.81.4
`1.85.2
`1.85.4
`
`
`0.97.2
`0.99.2
`0.101.1
`0.103.3
`0.103.5
`0.105.0
`0.105.1
`0.107.1
`0.109.1
`0.109.2
`0.111.2
`0.111.3
`0.111.4
`0.115.2
`0.115.3
`
`March 27, 2018
`April 14, 2018
`April 25, 2018
`May 16, 2018
`May 23, 2018
`May 25, 2018
`June 7, 2018
`June 19, 2018
`July 4, 2018
`July 11, 2018
`July 21, 2018
`July 22, 2018
`August 8, 2018
`August 16, 2018
`August 24, 2018
`
`The software updates (versions) of Niantic’s Ingress application which have been
`
`identified (as of the date of this filing) as infringing when combined with Niantic’s specially
`
`configured servers (i.e. client-server computer systems) are:
`
`iOS Update
`
`1.107.0
`1.108.1
`1.109.0
`1.110.0
`1.111.0
`1.112.0
`1.113.0
`
`
`
`
`
`Android Update
`1.107.0
`1.108.1
`1.109.0
`1.110.0
`1.111.0
`1.112.0
`1.113.0
`
`Date of Release
`October 11, 2016
`November 2, 2016
`November 15, 2016
`November 29, 2016
`January 10, 2017
`January 24, 2017
`February 7, 2017
`
`- 8 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 9
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 10 of 17
`
`
`
`1.114.0
`1.115.1
`1.116.0
`1.117.0
`1.118.0
`1.119.0
`1.120.2
`1.121.0
`1.122.0
`1.123.0
`1.124.0
`1.125.0
`1.126.0
`1.127.0
`1.128.0
`1.129.2
`1.130.1
`1.131.0
`
`
`
`1.114.0
`1.115.0
`1.116.0
`1.117.0
`1.118.0
`1.119.0
`1.120.2
`1.121.0
`1.122.0
`1.123.0
`1.124.0
`1.125.0
`1.126.0
`1.127.0
`1.128.0
`1.129.2
`1.130.0
`1.131.0
`1.131.2
`
`February 23, 2017
`March 22, 2017
`April 4, 2017
`April 19, 2017
`May 2, 2017
`May 18, 2017
`July 6, 2017
`July 28, 2017
`August 22, 2017
`September 19, 2017
`October 3, 2017
`October 17, 2017
`November 8, 2017
`November 21, 2017
`November 28, 2017
`December 15, 2017
`January 17, 2018
`March 23, 2018
`June 25, 2018
`
`C. Infringement Chart
`
`
`Barbaro directs Niantic to Exhibits A1-A6 which are charts identifying specifically where
`
`and how each limitation of each asserted claim is found in Pokémon Go (Generation 1 and
`
`Generations 2 and 3) and Ingress. Barbaro does not contend that any of the claims identified in
`
`the claims charts are governed by 35 U.S.C. § 112(6).
`
`The first column of each chart recites the limitations of the asserted claim. The second
`
`column identifies where a corresponding element is found with representative proof for each of
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`- 9 -
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 10
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 11 of 17
`
`
`
`the Accused Instrumentalities. These identifications are based on Barbaro’s understanding of the
`
`current publicly available information, which does not yet include any discovery from Niantic.
`
`D. Inducement and/or Joint Infringement
`
`
`Based on the information it currently has available, Barbaro contends that Niantic
`
`manufactured and continues to manufacture its Pokémon Go and Ingress applications (in
`
`combination with its specially configured servers) to directly meet all of the limitations of the
`
`asserted claims (set forth above). In the alternative, if Niantic is found not to have manufactured
`
`or used one or more limitations of any of the asserted claims with respect to either or both of the
`
`Pokémon Go and/or Ingress applications, Barbaro asserts that Niantic had manufactured or used
`
`and continues to manufacture or use the Ingress and Pokémon Go applications and has instructed
`
`and continues to instruct end users of the Ingress and Pokémon Go applications such that Niantic
`
`directs or controls end users of its Pokémon Go and/or Ingress applications to practice one or
`
`more of the limitations of the asserted claims by activating certain features of the Pokémon Go
`
`and/or Ingress applications such that the end user is able to perform activities (use elements)
`
`within the applications during gameplay. Specifically Niantic directs, and has directed in the past,
`
`end users to request real-time information from Niantic’s specially configured servers by a user
`
`activation such as launching the application or launching certain features within either the
`
`Pokémon Go or Ingress applications as a condition to fully enable the applications, and to receive
`
`a benefit from the features within the applications by allowing the end user to perform the steps of
`
`one or more of the asserted methods, and to in turn successfully play Niantic’s games. See e.g.,
`
`Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022-23 (2015) (joint
`
`infringement between software manufacturer and end user). Niantic also directs, or has directed in
`
`the past, end users to use their client devices to access the Pokémon Go and Ingress applications.
`
`
`
`
`
`- 10 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 11
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 12 of 17
`
`
`
`As such, Barbaro has identified in the contention charts each and every feature that may require
`
`end user activation or acts of infringement by the end user which are attributable to Niantic.
`
`Barbaro expressly reserves the right to supplement or amend these disclosures and
`
`infringement contentions, in the case of inducement or contributory infringement, to specifically
`
`identify the direct infringement and Niantic’s acts which induced or contributed to the direct
`
`infringement, and in the case of joint infringement, to more specifically identify the role of each
`
`party in the joint direct infringement.
`
`E. Identification of Whether Each Limitation in Each Claim is Literally Present or
`Present under the Doctrine of Equivalents in the Accused Instrumentalities
`Barbaro presently contends that each Accused Instrumentality literally infringes each
`
`limitation of each of the asserted claims of the ’377 and ‘325 patents. Specifically, Barbaro
`
`directs Niantic to Exhibits A1-A6, which identifies for each limitation how the limitation is
`
`literally present in the accused instrumentalities.
`
`Barbaro has not yet received any discovery from Niantic. Consequently, Barbaro reserves the
`
`right to re-evaluate the application of each and every element of each and every asserted claim
`
`against each of the Accused Instrumentalities. Based on the information presently in Barbaro’s
`
`possession, if it turns out that any claim limitation is not literally embodied within one or more of
`
`the Accused Instrumentalities, given the publicly observable operation of the Pokémon Go and
`
`Ingress applications, Barbaro asserts that the Accused Instrumentality is more likely than not to
`
`embody any such literally absent claim limitation(s) under the doctrine of equivalents because
`
`any difference between a claim limitation and the Accused Instrumentalities would have to be
`
`insubstantial because the Pokémon Go and Ingress applications each provide the same function in
`
`the same way to provide the same result as the inventions set forth in the asserted claims.
`
`
`
`
`
`- 11 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 12
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 13 of 17
`
`
`
`F. Claims of Priority
`Barbaro contends that the asserted claims of the ‘377 patent are entitled to the priority date
`
`of its underlying U.S. non-provisional Application No. 10/805,415, filed on March 22, 2004.
`
`Barbaro expressly reserves its right to prove an earlier date of invention for the asserted claims of
`
`the ‘377 patent, which the documents produced under Patent L.R. 3.2 (b) already reflect is prior
`
`to December 6, 2003, and may be as early as June 3, 2003.
`
`Barbaro contends that the asserted claims of the ‘325 patent are also entitled to the priority
`
`dates of U.S. non-provisional Application No. 10/805,415, filed on March 22, 2004. Barbaro
`
`expressly reserves its right to prove an earlier date of invention for the asserted claims of the ‘377
`
`patent, which the documents produced under Patent L.R. 3.2 (b) already reflect is prior to
`
`December 6, 2003, and may be as early as June 3, 2003.
`
`G. No Preservation of Rights to Rely on the Assertion that any Barbaro Instrumentality
`Practices Claimed Invention
`
`Barbaro does not preserve its right to rely for any purpose, on the assertion that a Barbaro
`
`
`
`apparatus, product, device, process, method, act, or other instrumentality practices the claimed
`
`invention.
`
`H. Identification of Timing of First Infringement, First Claimed Damages, and End of
`Claimed Damages
`
`
`Niantic’s first act of infringement of both the ‘377 and ‘325 patents and first claimed
`
`damages relating to the Ingress application and specially configured servers (i.e., client-server
`
`computer system) was on or before November 15, 2012. The damages associated with the
`
`infringement relating to the Ingress application and specially configured servers (i.e., client-server
`
`computer system) is ongoing.
`
`Niantic’s first act of infringement of both the ‘377 and ‘325 patents and first claimed
`
`damages relating to the Pokémon Go, Generation 1 application and specially configured servers
`
`
`
`
`
`- 12 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 13
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 14 of 17
`
`
`
`(i.e., client-server computer system) was on or before July 6, 2016. The damages associated with
`
`the infringement relating to the Pokémon Go, Generation 1 application and specially configured
`
`servers (i.e., client-server computer system) ended on or around February 16, 2017.
`
`Niantic’s first act of infringement of both the ‘377 and ‘325 patents and first claimed
`
`damages relating to the Pokémon Go, Generation 2 application and specially configured servers
`
`(i.e., client-server computer system) was on or before February 16, 2017. The damages associated
`
`with the infringement relating to the Pokémon Go, Generation 2 application and specially
`
`configured servers (i.e., client-server computer system) ended on or around October 20, 2017.
`
`Niantic’s first act of infringement of both the ‘377 and ‘325 patents and first claimed
`
`damages relating to the Pokémon Go, Generation 3 application and specially configured servers
`
`(i.e., client-server computer system) was on or before October 20, 2017. The damages associated
`
`with the infringement relating to the Pokémon Go, Generation 3 application and specially
`
`configured servers (i.e., client-server computer system) are still ongoing.
`
`I. Willful Infringement
`
`
`
`Barbaro’s predecessor, Terrazones International, Inc., sent notice and a copy of the patent
`
`publication of the ‘377 patent (U.S. Publication No. 2004/0193441) that led to the issuance of the
`
`‘377 patent to Google, Inc.’s Deputy General Counsel, Ms. Miriam Rivera, on October 26, 2006.
`
`Google’s Patent Counsel, Mr. Benjamin Lee, responded to that notice on November 29, 2006,
`
`with an acknowledgement of Plaintiff’s letter but a refusal to discuss the matter before the patent
`
`issued. The disclosure of the ‘325 patent was contained in U.S. Publication No. 2004/0193441.
`
`Thus, Google was aware of the ‘377 and ‘325 patents from at least their dates of grant after being
`
`put on notice of the patent publication that led to the issuance of the patents.
`
`
`
`
`
`- 13 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 14
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 15 of 17
`
`
`
`In 2010 Niantic was formed as part of Google, Inc. under the name Niantic Labs. In
`
`October 2015, Niantic was spun out of Google as a stand-alone company. Niantic’s formation
`
`within Google, Inc. came shortly after the foregoing notices were sent, and as such, Niantic very
`
`likely had constructive as well as actual knowledge that its acts would constitute infringement of
`
`the Barbaro ‘377 and ‘325 patents, and yet, chose to manufacture and use its Pokémon Go and
`
`Ingress applications and specially configured servers (i.e., client-server computer system) in
`
`direct violation of Barbaro’s patent rights. Such actions constitute willful infringement. See e.g.,
`
`Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. __, 136 S.Ct. 1923, 1933 (2016).
`
`J. Patent L.R. 3-2 Document Production Accompanying Disclosure
`
`Barbaro has produced documents responsive to
`
`
`invoices, advertisements, marketing
`(a) Documents (e.g., contracts, purchase orders,
`materials, offer letters, beta site testing agreements, and third party or joint development
`agreements) sufficient to evidence each discussion with, disclosure to, or other manner of
`providing to a third party, or sale of or offer to sell, or any public use of, the claimed
`invention prior to the date of application for the patent in suit.
`
`
`
`
` Bates-numbered: BT00003436 - BT00006113; BT00010140 - BT00012189
`
` Barbaro’s production of these documents as required under this rule shall not constitute an
`admission that such document evidences or is prior art under 35 U.S.C. § 102.
`
`
`(b) All documents evidencing the conception, reduction to practice, design, and development
`of each claimed invention, which were created on or before the date of application for the
`patent in suit or the priority date identified pursuant to Patent L.R. 3-1(f), whichever is
`earlier.
`
`
` Bates-numbered: BT00006113 - BT00007464; BT00012190 - BT00017472
`
`(c) A copy of the file history for each patent in suit.
`
`
`Bates-numbered: BT00000001 - BT00003371; BT00010132 – BT00010139
`
`
`(d) All documents evidencing ownership of the patent rights by the party asserting patent
`infringement.
`
`
`
`Bates-numbered: BT00003372 - BT00003435
`
`
`(f) All agreements, including licenses, transferring an interest in any patent-in-suit.
`
`
`Bates-numbered: BT00007465 - BT00007468
`
`
`
`
`
`- 14 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 15
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Document 92-2 Filed 03/07/19 Page 16 of 17
`
`
`
`
`
`Barbaro has no documents in its possession, custody or control responsive to (g) [a]ll
`
`agreements that the party asserting infringement contends are comparable to a license that would
`
`result from a hypothetical reasonable royalty negotiation, and (h) [a]ll agreements that otherwise
`
`may be used to support the party asserting infringement’s damages case. Barbaro reserves the
`
`right to supplement its production if it uncovers documents responsive to these categories.
`
`Barbaro also has no documents responsive to (e) and (i) because it has not identified
`
`instrumentalities pursuant to Patent L.R. 3-1(g). Barbaro has no documents responsive to (j) [a]ll
`
`documents comprising or reflecting a F/RAND commitment or agreement with respect to the
`
`asserted patent(s).
`
`In addition to the documents required under Patent L.R. 3-2, Barbaro has also produced
`
`documents that it has previously identified and which may be relevant in this litigation. Those
`
`documents have been Bates-numbered BT00007465 - BT00007468 and BT00017473 -
`
`BT00017837. Barbaro reserves its right to produce any additional document in uncovers during
`
`its investigation that has been yet to be uncovered and reviewed and is responsive to any of the
`
`document categories set forth in Local P.R. 3-2.
`
`DATED: September 6, 2018
`
`DUNLAP CODDING, PC
`
`
`
`
`
`
`
`/s/ Jordan A. Sigale
`
`By:
`Jordan A. Sigale, Ill. ARDC 6210047)
`Admitted pro hac vice
`jsigale@dunlapcodding.com
`Julie Langdon (Ill. ARDC 6291722)
`Admitted pro hac vice
`jlangdon@dunlapcodding.com
`225 West Washington St., Ste. 2200
`Chicago, IL 60606; Tel: 312.651.6744
`
`-and-
`
`
`- 15 -
`
`AMENDED DISCLOSURE OF
`ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`CASE NO.: 3:18-cv-02955-RS
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Sony Exhibit 1028 Page 16
`Sony v. Quantum IPR2023-00954
`
`

`

`Case 3:18-cv-02955-RS Documen