Case 6:21-cv-00642-ADA Document 39-3 Filed 02/22/22 Page 1 of 125
`Case 6:21-cv-00642-ADA Document 39-3 Filed 02/22/22 Page 1 of 125
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`EXHIBIT 2
`EXHIBIT 2
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`Case 6:21-cv-00642-ADA Document 39-3 Filed 02/22/22 Page 2 of 125
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`FLYPSI, INC. (D/B/A FLYP),
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`Plaintiff,
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`v.
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`DIALPAD, INC.,
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`Civil Action No. 6:21-cv-642-ADA
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` JURY TRIAL DEMANDED
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`Defendant.
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`DEFENDANT DIALPAD, INC.’S PRELIMINARY INVALIDITY CONTENTIONS
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`Pursuant to the Court’s Scheduling Order (D.I. 19-1) on August 31, 2021 (“Scheduling
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`Order”), Defendant Dialpad, Inc. (“Defendant” or “Dialpad”) hereby serve its Preliminary
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`Invalidity Contentions concerning U.S. Patent Nos. 9,667,770 (the “’770 Patent”), 10,051,105 (the
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`“’105 Patent”), 10,334,094 (the “’094 Patent”), and 11,012,554 (the “’554 Patent”) (collectively,
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`the “Asserted Patents”). These contentions set forth Defendant’s Preliminary Invalidity
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`Contentions with respect to the claims that were identified by Plaintiff Flypsi, Inc. (“Plaintiff” or
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`“Flyp”) in its Preliminary Infringement Contentions, served September 3, 2021.
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`Defendant also serves an accompanying document production with these disclosures
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`pursuant to the Court’s Scheduling Order.
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`I.
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`INTRODUCTORY STATEMENT
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`At the time of service of these Preliminary Invalidity Contentions, Plaintiff has asserted
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`the following claims against Defendant in the above-captioned case: 1-6 of the ’770 Patent, 1-11
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`of the ’105 Patent, 1-4 of the ’094 Patent, and 1-4 of the ’554 Patent. These claims are collectively
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`referred to as “the Asserted Claims.” The Asserted Claims are neither novel nor non-obvious in
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`view of the state of the prior art and the understanding of a person of ordinary skill in the art at the
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`time of the alleged invention. The Asserted Claims are also invalid because they fail to claim
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`1
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`patent-eligible subject matter under 35 U.S.C. § 101, Alice Corp. v. CLS Bank Int’l, 134 S. Ct.
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`2347, 2354 (2014), and its progeny. The Asserted Claims are further invalid for lack of written
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`description, lack of enablement, and/or indefiniteness under 35 U.S.C. § 112, as explained herein.
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`In accordance with Court’s Scheduling Order, Defendant hereby: (a) provides charts
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`setting forth where in the prior art references each element of the Asserted Claims are found, (b)
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`identifies limitations the Defendant contends are indefinite or lack written description under 35
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`U.S.C. § 112, and (c) identifies the claims the Defendant contends are directed to ineligible subject
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`matter under section 101.
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`The invalidity contentions provided herein by Defendant are subject to revision as provided
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`in the Local Rules, the Federal Rules of Civil Procedure, and/or any Order of this Court. For
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`example, these Preliminary Invalidity Contentions are based on Defendant’s current knowledge,
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`understanding, and belief as to the facts and information available at this time. Defendant has not
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`yet completed its investigation, collection of information, discovery, or analysis relating to this
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`action, and additional facts and information may require Defendant to supplement or modify these
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`contentions.
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`In addition, Plaintiff’s Preliminary Infringement Contentions are deficient in multiple
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`respects and do not provide Defendant with sufficient information to understand the bases for
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`Plaintiff’s infringement allegations or the alleged scope of the claims as Flyp is applying them in
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`making such allegations. Defendant’s Preliminary Invalidity Contentions are therefore based on
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`Defendant’s best understanding of Plaintiff’s apparent construction of the Asserted Claims and
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`Plaintiff’s theories of infringement.
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`Discovery is ongoing. Defendant is diligently seeking and will continue to diligently seek
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`documents from Plaintiff and third parties in discovery to demonstrate the invalidity of Asserted
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`Claims, including evidence of earlier dates of invention under 35 U.S.C. § 102(d) and/or prior art
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`offers for sale and public uses of products embodying the claimed invention under 35 U.S.C. §
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`102(a). Defendant therefore reserves the right to supplement these Preliminary Invalidity
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`Contentions with further information and documentation, if and when it becomes available.
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`Defendant also reserves its right to supplement and/or amend these Preliminary Invalidity
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`Contentions after the Court issues its claim construction order or in the event it supplements or
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`amends any such claim construction. Defendant’s contentions concerning the validity of the
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`Asserted Claims may change based upon the Court’s construction of the claims or positions that
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`Plaintiff takes concerning infringement or validity issues after such construction. Moreover, given
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`the inadequacies in Plaintiff’s Preliminary Infringement Contentions, Defendant has used its best
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`efforts to understand how Plaintiff is construing the Asserted Claims for purposes of identifying
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`invalidating prior art. Nothing contained in these Preliminary Invalidity Contentions or any
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`accompanying Exhibits, however, should be understood or deemed to be an express or implied
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`admission or contention with respect to the proper construction or scope of any terms in the
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`Asserted Claims, nor should they be understood to adopt Plaintiff’s stated claim construction or
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`its proposed scope of the Asserted Claims. Defendant’s Preliminary Invalidity Contentions merely
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`consider Plaintiff’s apparent application of the Asserted Claims to the accused products under the
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`principle that the scope of the claim must be the same for invalidity as it is for infringement.
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`Defendant provides the information below and in the attached charts and document
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`production in order to comply with the Court’s Scheduling Order. Defendant reserves the right to
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`prove the invalidity or unenforceability of the asserted claims on bases other than those required
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`to be disclosed in these Preliminary Invalidity Contentions pursuant to the Court’s Scheduling
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`Order. The production of documents that have been identified in these Preliminary Invalidity
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`Contentions shall not be deemed an admission that such documents are admissible or that
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`Defendant has waived any objections regarding the admissibility of such documents.
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`Defendant identifies specific portions of prior art references that disclose the elements of
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`the asserted claims. Although Defendant has identified exemplary disclosures for each reference,
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`each and every disclosure in the reference is not necessarily identified. The lack of a citation for
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`an element should not be deemed an admission that the element is not disclosed, is not inherent in,
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`or is not obvious in light of, the reference. In an effort to focus the issues, Defendant identifies
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`only exemplary portions of cited references. It should be recognized that persons of ordinary skill
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`in the art generally read a prior art reference as a whole and in the context of other publications
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`and literature and in light of the knowledge of one of ordinary skill in the art. To understand and
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`interpret any specific statement or disclosure within a prior art reference, such persons would rely
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`on other information within the reference, along with other publications and their scientific or
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`engineering knowledge. Defendant consequently reserves the right to rely upon other unidentified
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`portions of the prior art references and on other publications and expert testimony as to the
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`knowledge of a person of ordinary skill to provide context, and as aids to understanding and
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`interpreting the portions of that art identified. Defendant also reserves the right to rely on other
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`portions of the prior art references, other publications, and the testimony of experts to establish
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`that a person of ordinary skill in the art would have been motivated to modify or combine certain
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`of the cited references so as to render the claims obvious. Further, where Defendant identifies a
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`particular figure in a prior art reference, the identification should be understood to encompass the
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`caption and description of the figure and any text relating to the figure in addition to the figure
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`itself. Similarly, where an identified portion of text refers to a figure, the identification should be
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`understood to include the figure as well. Defendant further reserves the right to rely upon any
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`applicable industry standards and prior art cited to the patent office as invalidating references or
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`to show the state of the art.
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`Prior art not included in these Preliminary Invalidity Contentions, whether known or
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`unknown to Defendant, may become relevant based on subsequent events. Defendant is currently
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`unaware of the extent, if any, to which Plaintiff will contend that limitations of the Asserted Claims
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`are not disclosed in the prior art identified by Defendant. To the extent that such an issue arises,
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`Defendant reserves the right to identify other known references that would disclose or render
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`obvious the allegedly missing limitation(s) of the Asserted Claims.
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`Defendant further intend to rely on inventor and Plaintiff’s admissions concerning the prior
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`art relevant to the Asserted Patents found in, inter alia: the Asserted Patents, the patent prosecution
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`history for the Asserted Patents and related patents and/or patent applications; any deposition
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`testimony of the named inventors on the Asserted Patents; and the papers filed and any evidence
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`submitted by Plaintiff in connection with this litigation or other of its past, current, or future
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`litigations or administrative proceedings concerning or relating to the Asserted Patents.
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`Because Defendant is continuing its search for and analysis of relevant prior art, Defendant
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`reserves the right to amend or supplement the information provided herein, including identifying,
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`charting, or relying upon additional prior art references, relevant disclosures, and bases for
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`Preliminary Invalidity Contentions. Additional prior art and disclosures, whether or not cited in
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`this disclosure and whether known or not known to Defendant, may become relevant as
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`investigation, analysis, and fact discovery continues. Defendant incorporates by reference, and
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`intends to rely on, each reference, disclosure, or argument served in any prior or concurrent matter
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`involving the same patents but not yet produced to Defendant by Plaintiff.
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`Additionally, because fact discovery has not yet concluded, Defendant reserves the right
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`to present additional prior art references or disclosures under 35 U.S.C. §§ 102(a), or (d), or § 103,
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`located during the course of discovery or further investigation, and to assert invalidity under 35
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`U.S.C. §§ 102(a), or (d), or § 103, if future discovery or investigation yields information that
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`supports additional bases of invalidity.
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`Likewise, Defendant reserves the right to assert additional grounds of invalidity under
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`35 U.S.C. §§ 101 and 112 if future discovery or investigation yields information that supports such
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`additional bases of invalidity. Defendant is currently unaware of the extent, if any, to which
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`Plaintiff will contend that any of the Asserted Claims is not invalid under § 101 or 112 as detailed
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`by Defendant. To the extent that such an issue arises, Defendant reserves the right to amend or
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`supplement its contentions that the Asserted Claims are invalid under §§ 101 and/or 112.
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`II.
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`DOCUMENT PRODUCTION
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`Dialpad is separately producing documents, including prior art references relevant to the
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`invalidity of the Asserted Claims, and documents sufficient to show the operation of the accused
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`products. The underlying software accused of infringement is publicly available for download and
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`used on Apple and Android mobile phones as well as on-line. Plaintiff has accessed these publicly
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`available materials and uses them on the basis for its Preliminary Infringement Contentions.
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`Defendant reserves the right to rely on materials produced by Plaintiff, publicly available
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`documents and documents that will be produced by both parties during fact and expert discovery.
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`Defendant also will make available source code corresponding to functionality in the asserted
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`claims, subject to the entry of a protective order mutually agreed by the parties governing source
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`code and Plaintiff’s retention of an expert for source code review that is not objectionable to
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`Defendant.
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`III.
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`INVALIDITY CONTENTIONS
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`A.
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`Identification of Prior Art References
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`Subject to Defendant’s reservation of rights as articulated above, Defendant identifies each
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`item of prior art that anticipates or renders obvious one or more of the Asserted Claims in the
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`attached Prior Art Index submitted herewith. See Appendix A below. For references listed in
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`Appendix A that are not identified as items of prior art that anticipate or render obvious an Asserted
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`Claim, Defendant intends to rely on these references as background and as evidence of the state of
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`the art at the time of Plaintiff’s alleged inventions and the level of skill and knowledge of a person
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`of ordinary skill in the art at that time.
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`Additionally, the prior art references cited by Defendant include references that are related
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`patent applications and issued patents that contain substantially the same subject matter (e.g.,
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`published U.S. patent applications, and issued U.S. patents, foreign applications or issued patents).
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`Any citation to or quotation from any of these patent applications or patents, therefore,
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`encompasses any parallel citation to the same subject matter in other related or corresponding
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`applications or patents. For example, where a claim chart cites a published patent application that
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`ultimately issued as a patent with substantially the same written description, Defendant may rely
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`upon the published patent application or the issued patent as prior art.
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`Defendant also reserves the right to later rely upon all references or portions of references
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`provided in Appendix A to supplement or amend these disclosures. Defendant incorporates by
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`reference (1) any and all prior art contained or identified in documents produced thus far by
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`Plaintiff in this or any other proceeding, (2) any and all additional materials regarding or bearing
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`upon invalidity in Plaintiff’s possession or control that have not been produced to date, if any exist,
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`and any and all prior art cited by or invalidity contentions served by Defendant in any prior case
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`or concurrent case. Each disclosed item of prior art describing a product, system, or other
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`implementation made in the United States is evidence of a prior invention by another under
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`35 U.S.C. § 102, as evidenced by the named inventors, authors, organizations, and publishers
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`involved with each of these references. Defendant further intends to rely on admissions of the
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`named inventor concerning the prior art, including statements found in the Asserted Patents, its
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`prosecution history, related patents or patent applications, any deposition testimony, and the papers
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`filed and any evidence submitted by Plaintiff in conjunction with this litigation.
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`In addition to the prior art in Appendix A, Defendant reserves the right to rely on prior art
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`cited during the prosecution of the asserted Flyp patents, including statements made by the
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`Examiner at the U.S. Patent and Trademark Office discussing the prior art and statements made
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`by Flyp distinguishing such prior art.
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`B.
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`Prior Art Charts and Elements of the Asserted Claims
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`Subject to Defendant’s reservations of rights, Defendant identifies in the attached Exhibits
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`A-1 through A-9, B-1 through B-9, C-1 through C-9, and D-1 through D-9, prior art references
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`that anticipate the Asserted Claims under at least one or more of 35 U.S.C. §§ 102(a), and/or (d),
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`either expressly or inherently, and/or render obvious the Asserted Claims under 35 U.S.C. § 103
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`either alone or in combination with (i) applicant admitted prior art, (ii) the knowledge of a person
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`of ordinary skill in the art, and (iii) other references identified herein. Each Asserted Claim is
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`anticipated by, or obvious in view of, one or more items of prior art identified in these disclosures,
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`alone or in combination.
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`Much of the art identified in the attached Exhibits/charts reflects common knowledge to
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`persons of ordinary skill in the art and the state of the relevant art at the time of the earliest filing
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`date of each Asserted Patents. Defendant may rely on additional citations, references, expert
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`testimony, and other material to provide context or to aid in understanding the cited portions of
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`the references or cited features of the systems. Defendant may also rely on expert testimony
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`explaining relevant portions of references, relevant hardware or software products or systems, and
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`other discovery regarding these subject matters. Additionally, Defendant may rely on other
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`portions of any prior art reference for purposes of explaining the background and general technical
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`subject area of the reference.
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`Where an individual reference is cited with respect to all limitations of an Asserted Claim,
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`Defendant contends that the reference anticipates the claim under one or more of 35 U.S.C.
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`§§ 102(a), and/or (d) and also renders obvious the claim under 35 U.S.C. § 103, both by itself in
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`view of the knowledge of a person of ordinary skill in the relevant art and in combination with the
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`other cited references to the extent the reference is not found to disclose one or more claim
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`limitations. A single prior art reference, for example, can establish obviousness where the
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`differences between the disclosures within the reference and the claimed invention would have
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`been obvious to one of ordinary skilled in the art. For example, “[c]ombining two embodiments
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`disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”
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`Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). If Plaintiff
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`contends that an embodiment within a particular item of prior art does not fully disclose all
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`limitations of a claim, Defendant reserves the right to rely on other embodiments in that prior art
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`reference, or other information, to show single reference obviousness under 35 U.S.C. § 103.
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`Where an individual reference is cited with respect to fewer than all limitations of an
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`Asserted Claim, Defendant contends that the reference renders obvious the claim under 35 U.S.C.
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`§ 103 by itself in view of the knowledge of a person of ordinary skill in the relevant art or in view
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`of admitted prior art in the Asserted Patents and further in view of each other reference and
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`combination of references that discloses the remaining claim limitation(s), as indicated in the claim
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`charts submitted herewith. “Under § 103, the scope and content of the prior art are to be
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`determined; differences between the prior art and the claims at issue are to be ascertained; and the
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`level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or
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`non-obviousness of the subject matter is determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966)). Exemplary
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`motivations to combine references are discussed below in Section 3 and in Appendix C. Defendant
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`reserves the right to rely upon any references or assertions identified herein in connection with
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`Defendant’s contention that each Asserted Claim is invalid under 35 U.S.C. § 103 and to rely upon
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`expert testimony addressing these references and assertions. The fact that prior art is identified to
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`anticipate the Asserted Claims does not prevent Defendant from also relying on the same reference
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`as rendering the Asserted Claims invalid as obvious. In re Meyer, 599 F.2d 1026, 1031 (C.C.P.A.
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`1979) (holding that “a rejection for obviousness under § 103 can be based on a reference which
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`happens to anticipate the claimed subject matter”). If any cited prior art item does not fully disclose
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`a limitation of an Asserted Claim or is alleged by Plaintiff to not disclose a limitation, the limitation
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`is present and identified in another prior art item, or is admitted prior art by the Asserted Patents,
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`as shown in the attached claim charts.
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`As discussed below, Appendix C identifies all the patents and publications that anticipate
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`the Asserted Claims or render the Asserted Claims obvious. Many of the cited references cite or
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`relate to additional references or products, services, or projects. Many of the cited references also
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`cite hardware or systems. Defendant may rely upon these cited additional references and copies
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`or exemplars of the cited hardware or systems. Defendant will produce or make available for
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`inspection any of these cited references, hardware, or systems that they intend to rely upon.
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`Defendant may also rely upon the disclosures of the references cited or discussed during the
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`prosecution of the Asserted Patents or the assertions presented by the inventor about those
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`references.
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`Defendant reserves the right to reduce the number of anticipation or obviousness references
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`relied upon with respect to a given Asserted Claim and to exchange or otherwise modify the
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`specific references relied upon for anticipation and within each obviousness combination for each
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`Asserted Claim.
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`1.
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`Priority
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`Fact discovery has not yet been completed and Plaintiff has not provided full
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`documentation with respect to any alleged pre-filing invention dates or with respect to claim
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`limitations that are allegedly lacking or not obvious in the prior art. Each limitation of the Asserted
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`Claims was well known to those of ordinary skill in the art before, at least, July 17, 2013 (the
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`alleged priority date for the Asserted Patents as identified by Plaintiff in its Preliminary
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`Infringement Contentions). Plaintiff has provided no evidence showing that the Asserted Patents
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`are entitled to an invention date earlier than Jun. 17, 2014, and Defendant disputes that Plaintiff
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`has provided sufficient evidence to entitle them to the July 17, 2013 date1.
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`2.
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`Claim Charts
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`Pursuant to the Court’s Scheduling Order, attached hereto as Exhibits A-1 through A-9,
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`B-1 through B-9, C-1 through C-9, and D-1 through D-9, and incorporated by reference are claim
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`charts setting forth where in the prior art references of each element of the Asserted Claims are
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`found. A list of Exhibits is provided in Appendix B. Any reference to a figure in cited text
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`incorporates by reference that figure itself, and any citation to a figure incorporates by reference
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`1 See prosecution history of application No. 13/944,853. See, for example, non-final rejection
`issued 2016-12-27 and abandonment on 2017-07-28, which establishes that Plaintiff is not entitled
`to an earlier filing date for any of the Asserted Claims.
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`any description of that figure in a reference. To the extent any limitation is deemed not to be met
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`exactly by an item of prior art, Defendant contends that the difference would have been obvious
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`to a person of ordinary skill in the art and within the knowledge of one skilled in the art at the time
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`of the alleged invention. Thus, the claimed invention would have been obvious both in light of
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`the single reference alone and/or in light of combined references.
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`As a general matter, all portions of each prior art item are relied upon to support the
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`disclosure of each patent claim limitation, as all portions provide general support. Supporting
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`citations are nevertheless provided, but do not necessarily represent every location where a
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`particular claim term may be found in the prior art item. Defendant reserves the right to rely on
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`additional or different portions of the prior art items other than those specifically cited in these
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`claim charts and to supplement and/or amend these charts.
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`3.
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`Obviousness and Motivations to Combine
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`The Scheduling Order does not require Defendant to identify combinations of references
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`or a motivation to combine prior art references at this stage. Defendant, however, provides an
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`exemplary discussion of obviousness and potential combinations and motivations to combine
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`below. This discussion is not intended to be comprehensive or to limit Defendant to the specific
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`combinations or motivations to combine discussed. Defendant reserves the right to combine any
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`prior art reference with any other prior art reference identified herein. Defendant also reserves the
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`right to rely on any reference identified herein alone given the knowledge of one of ordinary skill
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`in the art. Defendant reserves the right to rely on different or additional motivations to combine
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`as the case proceeds.
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`The Asserted Claims are directed to providing a telephone services that includes
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`combinations of the following features:
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`(1)
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`A primary telephone number for a wireless telephone
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`(2)
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`(3)
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`(4)
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`(5)
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`A secondary telephone number corresponding to a primary telephone number
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`A bridge number for a server that controls a switch
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`Allowing a subscriber control over the Caller id information that appears to a callee
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`Automatically making different call routing decisions using (1)-(3), using control
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`channels running protocols such as Internet Protocol or wireless protocols such as CDMA
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`or GSM.
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`Scope and Content of the Prior Art
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`As demonstrated in the attached claim charts, the prior art teaches all of these elements (1)
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`– (5) individually and in combination in both single prior art references and combinations of
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`references. Mobile telephones have a primary number. Using a secondary number to reach a
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`subscriber at a primary number has been done for many decades. For example, U.S. Patent
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`5,673,299 to Fuller teach this call routing feature to enable subscribers to use one telephone
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`number to be reached at a variety of different telephone numbers. (“See Fuller at 35 to 40
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`describing using the subscriber’s access number to reach the subscriber at different telephones”,
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`which teaches the secondary number and telephone service aspects of the asserted Flyp patents”).
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`The Skype, Grande Central Communications, and Google Voice systems all used secondary
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`numbers to reach subscribers at primary numbers before the filing date of the asserted Flyp patents.
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`Using bridge numbers in call routing has been germane to conference calling and call routing
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`systems. Automatic call routing has also been a feature of telephone routing since the advent of
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`computers.
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`The advent of Internet and call routing protocols such as SIP protocols made controlling
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`PSTN telephone switches and routing all or parts of telephone calls through the Internet
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`commonplace many years prior to the filing date of the asserted Flyp patents. For example, U.S.
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`U.S. Patent No. 6,445,694 filed on March 2, 1998 of Web Telephony similarly shows the
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`application of the Internet to telephony for call control. (See Abstract, “The subscriber employs a
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`web interface to populate a database with preference data which is used by the host services
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`processor to handle incoming calls and establish outgoing telephone connections in accordance
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`with the preference data provided by the subscriber,” which teaches the telephone service element
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`in each of the asserted patents”). The SIP protocol and its ability to easily enhance and automate
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`traditional telephony functionality was well understood long before the filing of the asserted Flyp
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`patents. See Schulzrinne, Hennging, et al., The Session Initiation Protocol: Pro viding Advance
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`Telephony Services Across the Internet, Bell Labs Jrn., Oct.-Dec. 1998 (See abstract, “In this paper
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`we examine how SIP is used in Internet Telephony. We present an overview of the protocol and
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`its architecture, and describe how it can be used to provide a number of advanced services. Our
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`discussion of some of SIP’s strengths – its simplicity, scalability, extensibility, and modularity-
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`also analyzes why these are critical components for an IP telephony signaling protocol. SIP will
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`prove to be a valuable tool, not just for end-to-end IP services, but also for controlling existing
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`phone systems.”) Features 4 and 5 above are similarly shown in many prior art references charted
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`herein.
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`Each cited prior art reference may be combined with one or more other prior art references
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`to render obvious the Asserted Claims in combination, as explained in more detail below. The
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`disclosures of these references may also be combined with information known to persons skilled
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`in the art at the time of the alleged inventions, and understood and supplemented in view of the
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`common sense of persons skilled in the art at the time of the alleged inventions, including any
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`statements in the intrinsic records of the Asserted Patents and related applications.
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`14
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`Case 6:21-cv-00642-ADA Document 39-3 Filed 02/22/22 Page 16 of 125
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`A person of ordinary skill would have been motivated to combine the prior art cited in
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`Appendix A based on the nature of the problem to be solved, the teachings of the prior art, and the
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`knowledge of persons of ordinary skill in the art. The identified prior art references for each of
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`the Asserted Patents, including portions cited in attached Exhibits A-1 through A-9, B-1 through
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`B-9, C-1 through C-9, and D-1 through D-9, address the same or similar technical issues and
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`suggest the same or similar solutions to those issues as the Asserted Claims. On such bases, for
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`each claim, Defendant expressly intends to combine one or more prior art items identified in
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`Appendix A with each other to address any further contention from Plaintiff that a particular prior
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`art item supposedly lacks one or more limitations of an Asserted Claim. In other words, Defendant
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`contends that each charted prior art item can be combined with other charted prior art items when
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`a particular prior art item lacks or does not explicitly disclose a limitation or feature of an Asserted
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`Claim. The suggested obviousness combinations described below are not to be construed to
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`suggest that any reference included in the combinations is not anticipatory. Further, if Plaintiff
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`contends that any of the anticipatory prior art fails to disclose one or more limitations of the
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`Asserted Claims, Defendant reserves the right to identify other prior art references that, when
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`combined with the anticipatory prior art, would render the claims obvious despite an allegedly
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`missing limitation. Defendant will further specify the motivations to combine the prior art,
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`including through reliance on expert testimony, at the appropriate later stage of this lawsuit.
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`A person of skill in the art would have been motivated to combine the identified prior art
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`items. As the United States Supreme Court held in KSR, 550 U.S. at 416: “The combination of
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`familiar elements according to known methods is likely to be obvious when it does no more than
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`yield predictable results.” The Supreme Court further held that, “[w]hen a work is available in
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`one field of endeavor, design incentives and other market forces can prompt variations of it, either