Apple, Inc. v. Motorola, Inc. et al

Filing 107

Declaration of Winslow B. Taub filed by Plaintiffs Apple, Inc., Next Softward, Inc. re: 90 Motion Requesting Claims Construction by Plaintiffs. (Attachments: # 1 Ex. A, '486 Inf. Chart, # 2 Ex. B, '354 file history excerpt, # 3 Ex. C, '354 file history excerpt, # 4 Ex. D, Spielman report excerpts, # 5 Ex. E, '983 file history excerpts, # 6 Ex. F, '983 file history excerpts, # 7 Ex. G, '337 Inf. Chart, # 8 Ex. H, '002 Inf. Chart, # 9 Ex. I, '002 file history excerpt, # 10 Ex. J, '002 file history excerpt, # 11 Ex. K, '002 file history excerpt, # 12 Ex. L, dictionary definitions, # 13 Ex. N, JPS63-167588 cert. trans., # 14 Ex. O, appl. 08/050952 file history excerpt, # 15 Ex. P, invalidity conten. excerpt, # 16 Ex. Q, 6,371,977, # 17 Ex. R, 5,474,831) (Haslam, Robert) Modified on 7/18/2011 (llj).

EXHIBIT P

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,

Case No. 10-CV-662 (BBC)
JURY TRIAL DEMANDED

v.
MOTOROLA, INC. and MOTOROLA
MOBILITY, INC.
Defendants.

PLAINTIFFS’ AMENDED INVALIDITY CONTENTIONS
Pursuant to the Court’s Preliminary Pretrial Conference Order, and the Parties’
agreement, Plaintiffs and Counter-Defendants Apple Inc. and NeXT Software Inc., (collectively
referred to as “Apple”) hereby provide their joint amended Invalidity Contentions with respect to
the claims identified by Defendants Motorola, Inc. and Motorola Mobility, Inc. (“Motorola”).
Apple received Motorola’s Infringement Contentions on March 18, 2011. Apple objects
to Motorola’s Infringement Contentions as vague and ambiguous, and no position that Apple
takes about the disclosure of the prior art in these Invalidity Contentions should be viewed as an
admission that any portion of the accused products practices any portion of the asserted claims.
These Invalidity Contentions are based on claim constructions implied by Motorola’s
infringement allegations, as set forth in its Infringement Contentions, and/or claim constructions
that may be adopted by the Court in this matter. Nothing in these Invalidity Contentions should
be understood or deemed to be an express or implied admission or contention with respect to the
proper construction of any terms contained within the asserted claims. Apple will offer its

the inventors had in their possession a method for providing cryptographic protection of a data
stream that involves communicating an overflow sequence number on the physical layer.
E.

The ‘193 Patent
1.

Anticipation and Obviousness

Appendix E contains a listing of the prior art references that anticipate and/or render
obvious one or more asserted claims of the ‘193 patent. Attached as Exhibits E1 - E8 are charts
identifying where specifically in each respective item of prior art, or specific prior art
combinations, each element of the asserted claims is found. Each anticipatory prior art reference
disclosed, either alone or in combination with other prior art, renders the asserted claims invalid
as obvious. In particular, each anticipatory prior art reference may be combined with (1)
information known to persons skilled in the art at the time of the alleged invention, (2) any of the
other anticipatory prior art references, and/or (3) any of the additional prior art identified in
Appendix E. To the extent Motorola contends that any of the anticipatory prior art fails to
disclose one or more limitations of the asserted claims, Apple reserves the right to identify other
prior art that would supply any such limitation(s) which, when combined with the contested
anticipatory prior art, would render the claimed subject matter obvious.
2.

Invalidity under 35 U.S.C. § 112

One or more claims of the ‘193 patent fail to satisfy one or more of the requirements of
35 U.S.C. § 112 as follows:
All asserted claims are invalid for lack of written description and/or lack of enablement
because the patent provides no teaching of a method of authentication in a system that is not a
cellular telephone communication system, and one of ordinary skill, upon reading the ‘193
patent, would not conclude that the inventors had in their possession a method of authentication
in a system that is not a cellular telephone communication system.

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