IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`C.A. No. 6:24-cv-188-ADA
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`JURY TRIAL DEMANDED
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`INTELLECTUAL VENTURES II LLC,
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`Plaintiff,
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`v.
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`TESLA, INC.,
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`Defendant.
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`PLAINTIFF’S DISCLOSURE OF
`PRELIMINARY INFRINGEMENT CONTENTIONS
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`Pursuant to the Joint Notice Regarding Preliminary Contentions (Dkt. 19) and P.R. 3-1 and
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`3-2, Plaintiff Intellectual Ventures II LLC ( “Plaintiff” or “IV”), hereby provides its Initial
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`Infringement Contentions to Defendant Tesla, Inc. (hereinafter, “Defendant” or “Tesla”) for U.S.
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`Patent Nos. 7,336,805 (“the ’805 Patent”), 9,706,500 (“the ’500 Patent”), 10,292,138 (“the ’138
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`Patent”), 10,952,153 (“the ’153 Patent”), 8,898,395 (“the ’395 Patent”), 10,136,416 (“the ’416
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`Patent”), 7,916,180 (“the ’180 Patent”), 9,232,158 (“the ’158 Patent”), and 7,181,743 (“the ’743
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`Patent”), 6,894,639 (“the ’639 Patent”), 11,206,670 (“the ’670 Patent”), 11,664,889 (“the ’889
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`Patent”) (collectively, the “Asserted Patents” or “Patents-in-Suit”).
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`IV makes this disclosure based on the information presently available to it. Discovery in this
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`case has not started, and IV reserves its right to amend or supplement these disclosures as permitted
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`by the Federal Rules of Civil Procedure, by the local rules of the Western District of Texas, and by
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`order of the Court, including the Scheduling Conference Order.
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`For each Asserted Patent, Plaintiff identifies the following Accused Instrumentalities of
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`which it is currently aware. The identification of Accused Instrumentalities is based on Plaintiff’s
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`research and analysis to date, without the benefit of discovery from the Defendant. Plaintiff
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`reserves the right to add, delete, substitute or otherwise amend this list of Accused
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`Instrumentalities based on discovery or other circumstances, in a manner consistent with the
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`Federal Rules of Civil Procedures, local rules, and standing order.
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`The Accused Instrumentalities include, without limitation, the following:
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` The ’805 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Autopilot technology, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`1.
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` The ’500 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Connectivity features, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current, and future Tesla products that have the same
`or substantially similar features as the specifically identified products and components. Exhibit
`2.
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` The ’138 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Connectivity features and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`3.
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` The ’153 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Connectivity features, and all past, current, and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`4.
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` The ’395 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with a computer system that includes memory management features,
`and all past, current and future Tesla products that operate in the same or substantially similar
`manner as the specifically identified products and components, and all past, current and future
`Tesla products that have the same or substantially similar features as the specifically identified
`products and components. Exhibit 5.
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` The ’416 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Connectivity features, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`6.
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`2
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` The ’180 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Autopilot technology, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current, and future Tesla products that have the same
`or substantially similar features as the specifically identified products and components. Exhibit
`7.
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` The ’158 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Autopilot technology, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`8.
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` The ’743 Patent. The Accused Instrumentalities include, without limitation, Tesla
`infrastructure for supporting Tesla automotive vehicles, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`9.
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` The ’639 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Autopilot technology, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current, and future Tesla products that have the same
`or substantially similar features as the specifically identified products and components. Exhibit
`10.
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` The ’670 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Connectivity features, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current, and future Tesla products that have the same
`or substantially similar features as the specifically identified products and components. Exhibit
`11.
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` The ’889 Patent. The Accused Instrumentalities include, without limitation, Tesla automotive
`vehicles that are equipped with Connectivity features, and all past, current and future Tesla
`products that operate in the same or substantially similar manner as the specifically identified
`products and components, and all past, current and future Tesla products that have the same or
`substantially similar features as the specifically identified products and components. Exhibit
`12.
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` All past, current and future Tesla products and services that operate in the same or substantially
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`similar manner as the specifically identified products and services above and described in
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`3
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`Exhibits 1-12 (claim charts identifying specifically where each element of each asserted claim
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`is found within each Accused Instrumentality).
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` All past, current and future Tesla products and services that have the same or substantially
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`similar features as the specifically identified products and services above and described in
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`Exhibits 1-12, (claim charts identifying specifically where each element of each asserted claim
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`is found within each Accused Instrumentality).
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`Plaintiff’s infringement contentions apply to the Accused Instrumentalities as well as all
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`other past, current and future hardware and software products and services developed, made, used,
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`offered for sale, sold, imported, and provided by Tesla that contain or make use of the Patented
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`Technology.1 This identification of Accused Instrumentalities is based upon Plaintiff’s diligent
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`investigation to date, and without the benefit of any discovery from the Defendant and without the
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`benefit of the Court’s claim construction. Plaintiff expressly reserves the right to add, delete,
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`substitute or otherwise amend this list of Accused Instrumentalities based on discovery, the Court’s
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`claim construction, or other circumstances, in a manner consistent with the Federal Rules of Civil
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`Procedure and the Court’s rule, including the local Patent Rules.
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`These preliminary infringement contentions are based upon publicly-available information
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`and Plaintiff’s diligent investigation to date, and without the benefit of any substantial discovery
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`from the Defendant and without the benefit of the Court’s claim construction. Plaintiff anticipates
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`that discovery may provide additional evidence of Defendant’s infringement, may lead to the
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`discovery of additional instances of infringement, and may also enable identification of additional
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`claims that are infringed by Defendant.
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`1 “Patented Technology” means all technologies described in the claims of the Patents-in-Suit.
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`Based upon currently available information, IV asserts that Tesla has infringed and/or
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`continues to infringe the patents and claims identified in the attached claim charts (the “Asserted
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`Claims” of the Patents-in-Suit). Infringement claim charts evidencing the correspondence between
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`(i) the elements of the Asserted Claims, and (ii) the corresponding items of the accused products
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`are attached hereto. Further, Exhibits 1-12, which are attached hereto and incorporated by reference,
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`are exemplary infringement claim charts identifying specifically where each limitation of each
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`Asserted Claim is found within each Accused Instrumentality or practiced by each Accused
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`Instrumentality.
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`Plaintiff asserts that Defendant has directly infringed and continues to directly infringe the
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`Asserted Claims literally through the Accused Instrumentalities by making, using, offering for sale,
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`selling, and/or importing into the United States the Accused Instrumentalities. To the extent that
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`Defendant alleges that one or more limitations of the Asserted Claims are not literally found in the
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`Accused Instrumentalities, Plaintiff alleges that such limitations are found in or practiced by the
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`Accused Instrumentalities under the doctrine of equivalents. Any differences alleged to exist
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`between any of the Asserted Claims and any of the Accused Instrumentalities are insubstantial and
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`that each Accused Instrumentality also meets each limitation under the doctrine of equivalents as
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`the identified features of the Accused Instrumentality performs substantially the same function in
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`substantially the same way to achieve substantially the same result as the corresponding claim
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`limitation. IV reserves the right to assert infringement solely under the doctrine of equivalents with
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`respect to any particular claim element(s), if warranted by discovery, further analysis, and/or claim
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`constructions in this case.
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`These assertions are based upon Plaintiff’s diligent investigation to date, and without the
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`benefit of any substantial discovery from the Defendant and without the benefit of the Court’s
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`claim construction. Plaintiff reserves the right to add, delete, substitute or otherwise amend these
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`infringement allegations based on discovery, the Court’s claim construction, or other
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`circumstances, in a manner consistent with the Federal Rules of Civil Procedure and the Court’s
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`rules, including the local Patent Rules.
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`Plaintiff further asserts that Defendant has indirectly infringed and continues to indirectly
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`infringe by actively inducing infringement of one or more of the claims of the Asserted Patents
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`through the Accused Instrumentalities. Plaintiff further asserts that Defendant has indirectly
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`infringed and continues to indirectly infringe by contributory infringement by (at least) providing
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`replacement parts to Tesla vehicles and repair facilities by least making components that suitable
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`for direct infringement that do not have any substantial non-infringing use.
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`Plaintiff also asserts that these third-parties directly infringe at least one or more of the
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`claims of the Asserted Patents through the manufacture, use, sale, offer to sell, or importation of
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`the Accused Instrumentalities.
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`For example, Defendant has actively induced infringement by encouraging the use of the
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`Accused Instrumentalities in ways that infringe each Asserted Claim. Defendant knew or should
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`have known that such encouragement would induce infringement. Defendant has taken active steps
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`with the specific intent to encourage and cause others to use each Accused Instrumentality in ways
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`that infringes each Asserted Claim. Such active steps by Defendant with specific intent to induce
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`infringement have included, among other things, advertising, promoting, marketing, making
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`available for use, offering to sell, and/or selling the Accused Instrumentalities to others;
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`encouraging and influencing others to import, offer to sell, and/or sell the Accused
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`Instrumentalities; directing and instructing others to use the Accused Instrumentalities in
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`infringing ways, including providing and promoting the described hardware and/or software
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`components and features that when used in their normal and customary ways as intended and
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`design infringe; and by providing the Accused Instrumentalities to others. Tesla has performed the
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`aforementioned active steps with the knowledge of the Asserted Patents through receipt of a letter
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`dated April 11, 2024 and received by Defendant on the same date, and also as of the date when the
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`complaint in this case was filed. Tesla has known or should have known that the acts it has induced
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`constitute infringement because, for instance, it has been aware that end users and resellers will
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`purchase the Accused Instrumentalities and use them, resulting in direct infringement.
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`IV further reserves the right to supplement or revise its infringement contentions and/or
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`charts. Such supplement may be based upon, for example, further discovery. Further, IV reserves
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`the right to supplement or revise its infringement contentions and/or chart, including identification
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`of additional asserted claims, based on, for example, new versions or variations of one or more of
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`the accused products that are later discovered.
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`Each of the Asserted Claims of the ’805 Patent is entitled to a priority date of no later than
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`June 16, 2004. Each of the Asserted Claims of the ’500 Patent is entitled to a priority date of no
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`later than August 12, 2004. Each of the Asserted Claims of the ’138 Patent is entitled to a priority
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`date of no later than May 8, 2006. Each of the Asserted Claims of the ’153 Patent is entitled to a
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`priority date of no later than Aug. 12, 2004. Each of the Asserted Claims of the ’395 Patent is
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`entitled to a priority date of no later than Apr. 7, 2005. Each of the Asserted Claims of the ’416
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`Patent is entitled to a priority date of no later than September 27, 2007. Each of the Asserted Claims
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`of the ’180 Patent is entitled to a priority date of no later than August 25, 2005. Each of the Asserted
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`Claims of the ’158 Patent is entitled to a priority date of no later than August 25, 2005. Each of
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`the Asserted Claims of the ’743 Patent is entitled to a priority date of no later than May 24, 2001.
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`Each of the Asserted Claims of the ’639 Patent is entitled to a priority date of no later than
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`December 18, 1991. Each of the Asserted Claims of the ’670 Patent is entitled to a priority date of
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`no later than January 20, 2012. Each of the Asserted Claims of the ’889 Patent is entitled to a
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`priority date of no later than December 27, 2006. The subject matter described by the Asserted
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`Claims, however, may have been conceived and reduced to practice prior to these dates. Plaintiff’s
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`research and analysis is ongoing and Plaintiff reserves the right to assert that the claims are entitled
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`to a priority date that is earlier than the above dates.
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`Dated: August 1, 2024
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`Respectfully submitted,
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`By: /s/ Jonathan K. Waldrop
`Jonathan K. Waldrop (CA Bar No. 297903)
`(Admitted in this District)
`jwaldrop@kasowitz.com
`Darcy L. Jones (CA Bar No. 309474)
`(Admitted in this District)
`djones@kasowitz.com
`Marcus A. Barber (CA Bar No. 307361)
`(Admitted in this District)
`mbarber@kasowitz.com
`John W. Downing (CA Bar No. 252850)
`(Admitted in this District)
`jdowning@kasowitz.com
`Heather S. Kim (CA Bar No. 277686)
`(Admitted in this District)
`hkim@kasowitz.com
`ThucMinh Nguyen (CA Bar No. 304382)
`(Admitted in this District)
`tnguyen@kasowitz.com
`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, California 94065
`Telephone: (650) 453-5170
`Facsimile: (650) 453-5171
`
`Mark D. Siegmund (TX Bar No. 24117055)
`msiegmund@cjsjlaw.com
`CHERRY JOHNSON SIEGMUND
`JAMES PLLC
`The Roosevelt Tower
`400 Austin Avenue, 9th Floor
`Waco, Texas 76701
`Telephone: (254) 732-2242
`
`Attorneys for Plaintiff
`INTELLECTUAL VENTURES II LLC
`
`8
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing instrument was served or
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`delivered electronically, via email, to all counsel of record, on this 1st day of August 2024.
`
`/s/ Jonathan K. Waldrop
`Jonathan K. Waldrop
`
`
`
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