Motorola Mobility, Inc. v. Microsoft Corporation

Filing 129

MOTION in Limine Nos. 1-9 and Brief in Support Thereof by Motorola Mobility, Inc.. (Attachments: #1 Affidavit, #2 Exhibit A to Affidavit in Support, #3 Exhibit B to Affidavit in Support, #4 Exhibit C to Affidavit in Support, #5 Exhibit D to Affidavit in Support, #6 Exhibit E to Affidavit in Support, #7 Exhibit F to Affidavit in Support, #8 Exhibit G to Affidavit in Support, #9 Exhibit H to Affidavit in Support, #10 Exhibit I to Affidavit in Support, #11 Exhibit J to Affidavit in Support, #12 Exhibit K to Affidavit in Support, #13 Exhibit L to Affidavit in Support, #14 Exhibit M to Affidavit in Support)(Mullins, Edward)

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UNITED STATES DISTRICT COURT FOR THE
SOUTHERN DISTRICT OF FLORIDA
Case No.: 10-24063-Civ-Moreno

MOTOROLA MOBILITY, INC.,
Plaintiff/Counter-Defendant,
v.
MICROSOFT CORPORATION,
Defendant/Counter-Claimant.
______________________________________/
DEFENDANT/COUNTER-CLAIMANT MICROSOFT CORPORATION’S
PRELIMINARY INFRINGEMENT CONTENTIONS
Consistent with the parties Joint Motion to Include Pretrial Dates on Claim Construction
and Expert Testimony (Dkt. 49, 4/10/2011), Defendant/Counter-Claimant Microsoft Corporation
("Microsoft") hereby provides its Preliminary Infringement Contentions.
I.

Right to Supplement
This case is still in the early stages of discovery and Microsoft has not yet completed its

investigation, collection of information, discovery, or analysis related to this action. Microsoft
accordingly reserves the right to amend and supplement these Preliminary Contentions as
necessary based on further discovery and investigation, review of newly or yet-to-be produced
documents, or any rulings of the Court. In particular, Microsoft reserves its right to amend and
supplement this identification of Asserted Claims and modify this identification of Accused
Devices. Additionally, as further discovery is taken, and additional details are provided regarding
infringing activities and the claims of the asserted patents are construed, Microsoft’s
infringement charts and contentions may need to be amended, supplemented and/or corrected.

II.

Asserted Claims
At the present time Microsoft asserts the claims listed below (“Asserted Claims”):
U.S. Patent No.

Claims

6,791,536

14, 16, 17, and 37 – 40

6,897,853

7 – 11

7,024,214

1, 3-6, 10, 14, 17, 19, 22 – 29, 32 – 34,
38, 39, 41 – 44, 46 – 52, and 54 – 56

7,493,130

1, 2, 4 – 8, 10, 11, 13, and 14 – 19

7,383,460

7 – 13

6,897,904

12 and 18 – 20

6,785,901

1 – 3, 5, 6, 8, 9, 11, 22, 23, 25, 27 –
29, 31, 33, and 35

Motorola has infringed, induced infringement of and/or contributorily infringed and
continues to infringe, induce infringement of and/or contributorily infringe the Asserted Claims
literally and/or under the doctrine of equivalents.
III.

Accused Devices
In regards to U.S. Patent Nos. 6,791,536 (“the ’536 Patent”); 6,897,853 (“the ’853

Patent”); 7,024,214 (“the ’214 Patent”); 7,493,130 (“the ’130 Patent”); 7,383,460 (“the ’460
Patent”) Motorola’s infringing products (“Accused Devices”) include mobile devices, such as
smartphones, associated software, and components thereof. The Accused Devices include
Motorola’s Android based phones which include, but are not limited to, the Motorola Droid X,
Droid 2, Droid 2 Global, Cliq 2, Defy, Bravo, Droid Pro, Droid 2 R2-D2, Droid X 2, Charm,
Droid, Flipside, Flipout, Atrix, Droid Bionic, Xoom, Devour A555, Backflip, Cliq/Dext, Cliq

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XT/Quench, Citrus, Spice, i1 and other Motorola Android based phones incorporating hardware
and/or software that is substantially similar. Comparison of the Accused Devices to the asserted
claims is set forth in detail in the attached infringement charts for the ’536 Patent, the ’853
Patent, the ’214 Patent, the ’130 Patent, and the ’460 Patent.
In regards to U.S. Patent No. 6,897,904 (“the ‘904 Patent”), Motorola’s infringing
products (“Accused Devices”) include Motorola set-top boxes with digital video recording
(DVR) functionality and two or more tuners, as well as associated software. The Accused
Devices include the DCH6416 and DCX3400 and other set-top boxes running software version
78.xx or substantially similar software. Comparison of the Accused Devices to the asserted
claims is set forth in detail in the attached infringement chart for the ‘904 Patent.
In regards to U.S. Patent No. 6,785,901 (“the ‘901 Patent”), Motorola’s infringing
products (“Accused Devices”) include Motorola Broadband Media Center set-top boxes with
digital video recording (DVR) functionality and parental control functionality, as well as
associated software. The Accused Devices include the BMC9012 and BMC9022D Moxi based
set top boxes and other set-top boxes incorporating hardware and/or software that is substantially
similar. Comparison of the Accused Devices to the asserted claims is set forth in detail in the
attached infringement chart for the ‘901 Patent.

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DATED this 15th day of April 2011.
Respectfully submitted,
COLSON HICKS EIDSON
Roberto Martinez, Esq.
Curtis Miner, Esq.
255 Alhambra Circle, Penthouse
Coral Gables, Florida 33134
Tel. [phone]
Fax. [phone]

By: ____/s/ Tung T. Nguyen___ _____
Tung T. Nguyen
E-mail: [e-mail]

Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel. [phone]
Brian R. Nester
Kevin C. Wheeler
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel. [phone]
Tung T. Nguyen
SIDLEY AUSTIN LLP
717 N. Harwood
Dallas, TX 75243
Tel. [phone]

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CERTIFICATE OF SERVICE
I hereby certify that on April 15, 2011, a true copy of the foregoing document was served
upon the following counsel of record in the manner indicated.
Respectfully submitted,
__/s/ Tung T. Nguyen_____ _____
Tung T. Nguyen, Esq.
SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-Moreno/Torres
By Email
Edward M. Mullins
[e-mail]
Hal M. Lucas
[e-mail]
ASTIGARRAGA DAVIS
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Tel.: [phone]

Norman H. Beamer
[e-mail]
Mark D. Rowland
[e-mail]
Gabrielle E. Higgins
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Tel.: [phone]

Steven Pepe
[e-mail]
Jesse J. Jenner
[e-mail]
Leslie M. Spencer
[e-mail]
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
Tel.: [phone]

Kevin J. Post
[e-mail]
Megan F. Raymond
[e-mail]
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005-3948
Tel.: [phone]
Counsel for Plaintiff Motorola Mobility, Inc

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LA1 2066796v.1