Ixi Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al

Northern District of California, cand-4:2015-cv-03752

Exhibit 1

Interested in this case?

Current View

Full Text

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK --------------------------------------------------- IXI MOBILE (R&D) LTD., et al., 14-cv-4355 RJS Plaintiffs, ECF CASE v. SAMSUNG ELECTRONICS CO., ET AL., Defendants. --------------------------------------------------- IXI MOBILE (R&D) LTD., et al., 14-cv-4428 RJS ECF CASE Plaintiffs, v. BLACKBERRY LTD, et al., Defendants. --------------------------------------------------- 14-cv-7954 RJS IXI MOBILE (R&D) LTD., et al., ECF CASE Plaintiffs, v. APPLE, INC. Defendant. --------------------------------------------------- PLAINTIFF IXI'S SECOND AMENDED DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS Pursuant to the Case Management Plan and Scheduling Order (Dkt. No. 38) and adopted Rules 3-1 of the Local Patent Rules for the Eastern District of Texas, Plaintiffs IXI Mobile (R&D) Ltd. and IXI IP, LLC ("Plaintiffs" or "IXI") submit the following Disclosure of Asserted Claims and Infringement Contentions to Defendants Samsung Electronics CO., LTD, Samsung 118138926_1 Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, "Samsung" or "Defendants"). These infringement contentions are based upon IXI's current interpretation of the claims of U.S. Patent Nos. 7,039,033 (the "'033 Patent"), 7,295,532 (the "'532 Patent"), and 7,016,648 (the "'648 Patent") (collectively, the "Patents-in-Suit") and publicly available information describing Defendants' proprietary products, systems, and relationships. IXI reserves the right to amend its infringement contentions and asserted claims based on information IXI obtains through discovery and otherwise as this case progresses. IXI reserves the right to amend its infringement contentions responsive to claim construction proceedings and claim construction rulings by the Court in this case or related cases. In addition, IXI reserves the right to amend its infringement contentions and asserted claims based on any proceedings before the United States Patent and Trademark Office regarding IXI's patents, including the Patents-in-Suit. A. 3-1(a): Identification of Infringed Claims IXI contends that Defendant Samsung infringes and has infringed: Claims 1, 4-7, 12, 14- 15, 22-23, 25, 28, 34, 39-40, 42, and 46 of the '033 Patent; Claims 1, 4-5, 7-10, 12, 14-16, and 23-24 of the '532 Patent; and Claims 1-2, 7, 9, 14-16, 22-23, 27, and 30 of the '648 Patent. This identification is based on IXI's current and preliminary understanding. IXI reserves the right to supplement its identification as discovery proceeds, including identifying additional dependent claims. 118138926_1 B. 3-1(b): Identification of Accused Instrumentalities Based on the information currently available, IXI identifies the following instrumentalities, including all reasonably similar variants or improvements, as the accused instrumentalities: '033 Patent As detailed in IXI's Claim Chart regarding Samsung's Infringement of U.S. Patent No. 7,039,033 (attached hereto as Appendix A), the accused instrumentalities for the device claims are Samsung Relevant Devices (i.e., Samsung smartphones, tablets, laptops, or other Samsung devices with Wireless Hotspot Features, including those having installed either of Windows Phone 7 or above or Android Version 2.2 Froyo or above, Samsung mobile hotspots standalone devices, and devices reasonably similar in the operation of Wireless Hotspot Features). In addition or alternatively, the accused instrumentalities are Samsung Relevant Devices that have installed one or more of the various APIs, frameworks, and/or Network Service applications detailed in the "service repository software component" of Claim 1 in the attached Appendix A. For claims directed to "a system," the accused instrumentalities are Samsung Relevant Devices, WLAN Devices (i.e., laptops, tablets, headsets, smart watches, smart TVs, printers, and other devices, including both Samsung and third party devices that connect to Samsung Relevant Devices via short range radio signals (e.g., Wi-Fi, Bluetooth)), and Internet Devices (i.e., computers or other devices that function as internet or application servers, including those owned or operated by Samsung or third parties) or Cellular Network Devices (i.e., computers or other devices that function as application or other cellular network servers, including those owned or operated by Samsung or third parties). 118138926_1 '532 Patent As detailed in IXI's Claim Chart regarding Samsung's Infringement of U.S. Patent No. 7,295,532 (attached hereto as Appendix B), the accused instrumentalities are Samsung Relevant Devices (i.e., Samsung smartphones, tablets, laptops, or other Samsung devices with Wireless Hotspot Features, including those having installed either of Windows Phone 7 or above or Android Version 2.2 Froyo or above, Samsung mobile hotspots standalone devices, and devices reasonably similar in the operation of Wireless Hotspot Features). In addition or alternatively, the accused instrumentalities are Samsung Relevant Devices that have installed one or more of the various APIs, frameworks, and/or Network Service applications detailed in the "interface software component" of Claim 1 in the attached Appendix B. '648 Patent As detailed in IXI's Claim Chart regarding Samsung's Infringement of U.S. Patent No. 7,016,648 (attached hereto as Appendix C), the accused instrumentalities for the method claims are Samsung Relevant Devices (i.e., Samsung smartphones, tablets, laptops, or other Samsung devices with Wireless Hotspot Features, including those having installed either of Windows Phone 7 or above or Android Version 2.2 Froyo or above, Samsung mobile hotspots standalone devices, and devices reasonably similar in the operation of Wireless Hotspot Features). For claims directed to a "system," the accused instrumentalities are Samsung Relevant Devices, WLAN Devices (i.e., laptops, tablets, headsets, smart watches, smart TVs, printers, and other devices, including both Samsung and third party devices that connect to Samsung Relevant Devices via short range radio signals (e.g., Wi-Fi, Bluetooth), and Internet Devices (i.e., computers or other devices that function as internet or application servers, including those owned or operated by Samsung or third parties). 118138926_1 The above identifications are based on IXI's current and preliminary understanding of information currently available to IXI. IXI reserves the right to supplement its identifications as discovery proceeds, including identifying additional instrumentalities. C. 3-1(c): Charts Identifying Accused Instrumentalities IXI provides the claim charts attached hereto as Appendices A-C, which identify where each element of each asserted claim is found within the Accused Instrumentalities. These infringement contentions serve a notice function and are not required to—and therefore do not— present every possible permutation or theory of Plaintiff's case. These infringement contentions are not intended to marshal all of the evidence of Defendants' infringement of the Patents-in- Suit, but rather are intended to help guide discovery. These infringement contentions focus on notice of the underlying direct infringement and are not provided for, and should not be read as, an explanation of such issues as joint liability, mastermind, or indirect infringement. IXI does not presently believe that any asserted claim limitation is governed by 35 U.S.C. 112(f). SUMMARY OF INFRINGEMENT THEORIES Direct Infringement (35 U.S.C. § 271(a)): Samsung directly infringes the asserted claims of the Patents-in-Suit, alone or jointly by directing and controlling mobile network operators (e.g., AT&T, Verizon, Sprint, T-Mobile) or others, by making, using, offering to sell, selling, and/or importing into the United States Samsung Relevant Devices as defined in the claim charts attached hereto as Appendices A-C. Samsung also directly infringes the asserted claims of the Patents-in-Suit, alone or jointly with mobile network operators, by making, using, offering to sell, and/or selling the claimed systems. Further detail is provided in the claim charts attached hereto. 118138926_1 Inducement (35 U.S.C. § 271(b)): Samsung induces infringement of all asserted claims listed above by intentionally instructing and encouraging their customers and/or end-users to use Samsung Relevant Devices and/or WLAN Devices in manners that Samsung knows constitute direct infringement of the asserted claims of the Patents-in-Suit as detailed in the claim charts attached hereto. Samsung also intentionally encourages, trains, and instructs Mobile Network Operators (e.g., AT&T, Verizon, Sprint, T-Mobile) and/or retailers to make, use, import, sell, and/or offer to sell Samsung Relevant Devices and/or Wireless Hotspot Feature service plans that Samsung knows infringe the asserted claims of the Patents-in-Suit. Samsung provides detailed instructions and support regarding how to operate Samsung Relevant Devices, WLAN Devices, Wireless Hotspot Feature applications, and Network Service applications in manners that infringe the asserted claims of the Patents-in-Suit. Samsung also induces infringement by, for example, entering marketing and sales agreements and by providing components used in infringement, technical support, training, advertisements, marketing materials, instruction booklets, user guides, and/or service manuals. Contributory Infringement (35 U.S.C. § 271(c)): Samsung contributorily infringes the asserted system and method claims of the Patents-in-Suit by offering for sale, selling, and/or importing into the United States Samsung Relevant Devices, Galaxy Gear watches, Network Service applications, and/or Wireless Hotspot Feature applications. These devices and/or applications constitute material components of the claimed inventions having no substantial noninfringing uses. Samsung's customers, end-users, retailers, and/or mobile network operators commit direct infringement when they make, use, sell, offer to sell, and/or import into the United States the 118138926_1 accused systems, Samsung Relevant Devices, and/or Galaxy Gear watches, including as described in the claim charts attached hereto. D. 3-1(d): Literal Infringement and Infringement under the Doctrine of Equivalents IXI presently contends that the accused instrumentalities literally infringe the above listed asserted claims. IXI reserves the right to supplement its infringement contentions to include doctrine of equivalents theories in response to claim construction proceedings and claim construction rulings by the Court in this case or related cases. IXI also reserves the right to supplement its infringement contentions to include doctrine of equivalents theories based on information learned as discovery progresses. E. 3-1(e): Patent Priority Dates Based upon the information currently available, IXI discloses that the '033 and '532 Patents are entitled to a priority date of February 20, 2001. See Plaintiffs' Objections and Responses to Defendants' First Set of Interrogatories, Interrogatory No. 1. The '648 Patent is a Continuation-in-Part of U.S. Patent Application Serial Number of 10/023,525, Dec. 18, 2001, now United States Patent Number 7,013,112. Because Claims 2, 9, 16, 23, and 30 of the '648 Patent disclose and claim new subject matter, the priority date of these Claims is the date of filing (Nov. 18, 2002). Because Claims 1, 7, 14-15, 22, and 27 of the '648 Patent do not disclose and claim new subject matter, the priority date of these Claims is December 18, 2001, the date of filing of U.S. Patent Application Serial Number of 10/023,525, now issued as United States Patent Number 7,013,112. IXI reserves the right to supplement its infringement contentions to include earlier priority dates based on information it learns as discovery progresses. 118138926_1 F. 3-1(f) The following IXI products embody, practice, incorporate, or reflect certain claims of the '033 and '532 patents:  Personal Mobile Gateway (PMG), including IXI Connect; IXI-Sleek; IXI- Studio; Mobile Messaging Terminal (MMT); CT devices incorporating IXI Connect; Voice Terminal (VT); and Hands Free Headset Terminal (HFT) - '033 Claims 1,4, 5, 6, 12-16, 22-26, 27-28, 34-35, 39, and 40-43; '532 Claims 1, 5, 7, 8, 9, 10, 12, 13, 15, 16, and 23-25.  IXI-Sleek; Voice Terminal (VT); Hands Free Headset Terminal (HFT) – '033 Claims 7 and 46. IXI reserves the right to amend this section based on information IXI obtains through discovery and otherwise as this case progresses. 118138926_1 Submitted by: /s/ Mark. W. Halderman Thomas S. Biemer, Esquire Joshua D. Wolson, Esquire Dated: April 15, 2015 John J. Higson, Esquire Gary D. Colby, Esquire Mark W. Halderman, Esquire Dilworth Paxson LLP 1500 Market Street, Suite 3500(E) Philadelphia, PA 19102 Email: tbiemer@dilworthlaw.com Email: jwolson@dilworthlaw.com Email: jhigson@dilworthlaw.com Email: gcolby@dilworthlaw.com Email: mwhalderman@dilworthlaw.com Gregory A. Blue, Esquire Dilworth Paxson LLP 99 Park Avenue, Suite 320 New York, NY 10016 Email: gblue@dilworthlaw.com Attorney for Plaintiffs' IXI MOBILE (R&D) Ltd. and IXI IP, LLC 118138926_1