Motorola Mobility, Inc. v. Apple, Inc.

Filing 185

RESPONSE in Opposition re 178 MOTION to Strike Motorola's Supplemental Infringement Contentions filed by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14)(Giuliano, Douglas)

EXHIBIT 3

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

APPLE INC. and NEXT SOFTWARE,
INC. (f/k/a NeXT COMPUTER, INC.),
Plaintiffs,
v.
MOTOROLA, INC. and MOTOROLA
MOBILITY, INC.,
Defendants.

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Case No. 10-CV-662 (BBC)

PLAINTIFFS’ IDENTIFICATION OF ASSERTED CLAIMS AND
ACCUSED PRODUCTS

Plaintiffs Apple Inc. (“Apple”) and NeXT Software, Inc. (“NeXT”) hereby
make the following identification of asserted claims and accused products for U.S. Patent
Nos. 7,479,949 (“the ’949 patent”), 6,493,002 (“the ’002 patent”), 5,838,315 (“the ’315
patent”), RE 39,486 (the “RE ’486 patent”), 6,424,354 (“the ’354 patent”), 6,343,263
(“the ’263 patent”), 6,275,983 (“the ’983 patent”), 5,969,705 (“the ’705 patent”),
5,946,647 (“the ’647 patent”), 5,929,852 (“the ’852 patent”), 5,915,131 (“the ’131
patent”), 5,566,337 (“the ’337 patent”), 5,519,867 (“the ’867 patent”), 5,481,721
(“the ’721 patent”) and 5,455,599 (“the ’599 patent”).
These disclosures are preliminary and based only on publicly available
information.

Defendants Motorola, Inc. and Motorola Mobility, Inc. (collectively

“Motorola”) have not yet provided discovery as to its accused products and Plaintiffs’
investigation of Motorola’s infringement is ongoing.

Based on discovery and Plaintiffs’

continued investigations, Plaintiffs may identify additional claims that are infringed by
Motorola and additional accused products, including products that Motorola may
introduce in the future.

Accordingly, Plaintiffs reserve their rights to amend these

disclosures through interrogatory responses and expert reports as discovery and their
investigation proceeds.

Also, these disclosures are made based on information

ascertained to date, and Plaintiffs expressly reserve the right to modify or amend the
disclosures contained herein based on the Court’s claim constructions or to reflect
additional information that becomes available to Plaintiffs.
Based upon presently known information, Plaintiffs contend that at least
the following claims (collectively, “the Asserted Claims”) have been infringed by
Motorola:

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’949 Patent, claims 1, 4-6, and 9-20.
’002 Patent, claims 1, 3-7, 11, 21, 22, 26, 28-32, 36, 37, 46, and 47.
’315 Patent, claims 1, 7, 8, and 12-14.
RE ’486 Patent, claims 1-3, 6-12, 14-17, and 20.
’354 Patent, claims 1-3, 5-8, 41, and 42.
’263 Patent, claims 1-6, 24, 25, 29, and 30.
’983 Patent, claims 1-11, 16, 17, and 22.
’705 Patent, claim 1.
’647 Patent, claims 1, 3, 8, 9, 13-15, 19, 20, and 22.
’852 Patent, claims 1-3 and 7-13.
’131 Patent, claims 1, 3, 4, 7-12, and 15-17.
’337 Patent, claims 1, 3, 6-10, 12, 14, 16-19, 21, 23, and 24.
’867 Patent, claims 1-3, 7-10, 12, 18, and 32.
’721 Patent, claims 1, 11, and 19.
’599 Patent, claims 1-3, 15, 16, 18, 19, 22, and 24-26.

At least the following Android mobile phone handsets made, used, sold,
offered for sale or imported by Motorola infringe the Asserted Claims: Droid, Droid 2,
Droid 2 Global, Droid X, Droid Pro, Cliq, Cliq XT, Cliq 2, Charm, BackFlip, Devour, i1,
Citrus, Defy, Bravo, Flipout, Flipside, Atrix 4G, and Xoom (collectively “the Accused
Products”).1
All of the Asserted Claims are directly and indirectly infringed by
Motorola. Motorola directly infringes these claims by making, using, offering for sale,
or selling the Accused Products within the United States, or by importing the Accused
Products into the United States.

In addition, Motorola’s customers directly infringe the

Asserted Claims by using the Accused Products and Motorola induces this direct
infringement of the Asserted Claims by selling the Accused Products, by providing
manuals and other user guides encouraging its customers to use the Accused Products in
an infringing manner.

Motorola further contributes to this direct infringement of the

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Plaintiffs expect that Motorola will introduce additional products in the future that
will also infringe the Asserted Patents. Plaintiffs expressly reserve the right to amend
their disclosures to include such products.
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Asserted Claims by selling the Accused Products, which are specifically designed to
practice the inventions of the Asserted Claims and have no substantial non-infringing
uses.

Based on presently known information, Plaintiffs contend that the Accused

Products made, used, sold, offered for sale or imported by Motorola infringe each of the
Asserted Claims literally or, in the alternative, under the doctrine of equivalents.

Dated: March 4, 2011

Respectfully submitted,
/s/ Jill J. Ho
James D. Peterson (# 1022819)
[e-mail]
One East Main Street, Suite 500
P.O. Box 2719
Madison, WI 53701-2719
Telephone: [phone]
Facsimile: [phone]
Matthew D. Powers
[e-mail]
Steven S. Cherensky
[e-mail]
Jill J. Ho
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple Inc. and
NeXT Software, Inc.

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CERTIFICATE OF SERVICE
I declare that I am employed with the law firm of Weil, Gotshal & Manges LLP, whose
address is 201 Redwood Shores Parkway, Redwood Shores, California 94065-1175. I
am not a party to the within cause, and I am over the age of eighteen years. I further
declare that on March 4, 2011, I served a copy of:
PLAINTIFFS’ IDENTIFICATION OF ASSERTED CLAIMS AND
ACCUSED PRODUCTS
BY U.S. MAIL by placing a true copy thereof enclosed in a sealed envelope with
postage thereon fully prepaid, addressed as follows, for collection and mailing in
accordance with the firm’s ordinary business practices. I am readily familiar with the
practice for collection and processing of mail, and know that in the ordinary course of
business practice that the document(s) described above will be deposited with the U.S.
Postal Service on the same date as sworn to below.
BY ELECTRONIC SERVICE by electronically mailing a true and correct copy
through the electronic mail system to the email address(es) set forth in the service list
below.
BY OVERNIGHT DELIVERY by placing a true copy thereof enclosed in a
sealed envelope with overnight delivery fees provided for, addressed as follows, for
collection by Federal Express in accordance with ordinary business practices. I am
readily familiar with the practice for collection and processing of correspondence for
overnight delivery and know that in the ordinary course of business practice the
document(s) described above will be deposited by an employee or agent in a box or other
facility regularly maintained by Federal Express for collection on the same day that the
document(s) are deposited.
BY PERSONAL SERVICE by placing a true copy thereof enclosed in a sealed
envelope to be delivered by messenger to the offices of the addressee(s) (and left with an
employee or person in charge of addressee’s office), as stated below, during ordinary
business hours.
Lynn Stathas (# 1003695)
[e-mail]
REINHART BOERNER VAN DEUREN, S.C.
22 East Mifflin Street
Madison, WI 53701-2018
Phone: [phone]
Fax: [phone]

Edward J. DeFranco
[e-mail]
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorneys for Defendants Motorola, Inc. and
Motorola Mobility, Inc.

I declare under penalty of perjury under the laws of the United States of America that the
foregoing is true and correct. Executed on March 4, 2011, at Redwood Shores,
California.
/s/ Jill J. Ho
Jill J. Ho
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