Callwave Communication Llc v. Verizon Services Corp. et Al.

REPLY BRIEF re MOTION to Strike Motion for Summary Judgment that All Asserted Claims of the Patents-In-Suit are Invalid Under Section 101

D. Del.October 31, 2016

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. AT&T MOBILITY, LLC and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1701-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. SPRINT SPECTRUM L.P., SPRINT COMMUNICATIONS COMPANY L.P. and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1702-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. CELLCO PARTNERSHIP d/b/a VERIZON WIRELESS and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1704-RGA PLAINTIFF CALLWAVE COMMUNICATIONS, LLC’S REPLY MEMORANDUM IN SUPPORT OF ITS MOTION TO STRIKE DEFENDANT GOOGLE, INC.’S MOTION FOR SUMMARY JUDGMENT THAT ALL ASSERTED CLAIMS OF THE PATENTS-IN-SUIT ARE INVALID UNDER § 101 Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 1 of 15 PageID #: 48640 -i- TABLE OF CONTENTS I. Google’s Post Hoc Rationalization of its Inexcusable Delay Raises Questions Regarding Google’s New § 101 Defense............................................................................ 1 A. Google’s § 101 Defense Was Not Adequately Pled, and Its Contentions and Expert Reports Were Not Adequate to Maintain It .......................................... 2 B. Google Waited Almost a Year After Stanacard to Bring its § 101 Defense to the Court and Callwave’s Attention .................................................................... 3 II. Google’s Arguments Show Why the Poulis Factors Weigh in Favor of Dismissing Google’s § 101 Defense ...................................................................................................... 3 A. Google’s Failure to Comply with the Scheduling Order and Default Standard Created the Omissions it Now Alleges Callwave Committed ................. 4 B. Callwave’s Filing of Multiple Motions to Strike is Precisely Due to Google’s Willful, Bad Faith Pattern of Dilatoriness ............................................... 6 C. Google Misrepresents Both Callwave’s “Admission” and the Case Law with Regard to the “Meritoriousness” of Google’s Claim ...................................... 7 D. Google’s Arguments Regarding Prejudice Similarly Misstate Callwave’s Position and Relevant Case Law............................................................................. 8 E. Allowing Callwave to Follow the Procedures Laid Out in Rule 56 in Opposing Google’s Motion for Summary Judgment is No Sanction at All ......... 10 III. Conclusion ........................................................................................................................ 10 Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 2 of 15 PageID #: 48641 -ii- TABLE OF AUTHORITIES Page(s) CASES BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) ........3, 4 Emcasco Insurance Co. v. Sambrick, 834 F.2d 71 (3d Cir. 1987)...................................................8 Haraway v. NASCAR, 213 F.R.D. 161 (D. Del. 2003) ....................................................................8 Joao Bock Transaction Sys., LLC v. Jack Henry & Assocs., Inc., 76 F. Supp. 3d 513 (D. Del., Dec. 15, 2014) ...............................................................................................................2, 3 Link v. Wabash R. Co., 370 U.S. 626 (1962) ...................................................................................5 Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016) .........3, 9 O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) .....................4 Poulis v. State Farm Fire & Casualty Co., 747 F.2d 863 (3d Cir. 1984) ....................................5, 7 Radware, Ltd. v. F5 Networks, Inc., 147 F. Supp. 3d 974 (N.D. Cal. 2015) ...................................6 Silicon Labs., Inc. v. Cresta Tech. Corp., 2016 U.S. Dist. LEXIS 25459 (N.D. Cal. 2016) ...........5 Stanacard v. Rubard, LLC, 2015. 2015 U.S. Dist. LEXIS 157345 (S.D.N.Y.).......................1, 6, 9 Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 3 of 15 PageID #: 48642 1 Callwave hereby replies to Google’s Answering Brief in Opposition to Callwave’s Motion to Strike Google’s § 101 Motion (“Opposition”). I. GOOGLE’S POST HOC RATIONALIZATION OF ITS INEXCUSABLE DELAY RAISES QUESTIONS REGARDING GOOGLE’S NEW § 101 DEFENSE Google’s attempt to save its impermissibly late § 101 defense only serves to highlight the flaws, both in Google’s pleading of this defense and its attempts to resurrect it years later. The relevant procedural timeline is as follows: • Google filed its Answer to Callwave’s Second Amended Complaint for Patent Infringement (“Answer”) on February 25, 2014, pleading generically that “[o]ne or more claims . . . are invalid under 35 U.S.C. § 101 because they are directed to abstract ideas or other non-statutory subject matter” or “fail to meet the ‘conditions of patentability’” of § 101. (D.I. 75.1) • Google served six sets of validity contentions on June 23, 2014, January 13, 2015, April 7, 2015, April 27, 2015, May 22, 2015, and June 22, 2015, none of which contended invalidity based on § 101. (Exs. A-F.) • Google served the Expert Reports of Drs. Burger and Eldering on validity on July 2, 2015, neither of which contended invalidity based on § 101. (Exs. G and H.) • The Southern District of New York’s § 101 opinion in Stanacard v. Rubard, LLC issued on November 18, 2015. 2015 U.S. Dist. LEXIS 157345 (S.D.N.Y.). • Google filed its Motion for Summary Judgment That All Asserted Claims of the Patents-in-Suit are Invalid Under § 101 (“Motion”) on September 9, 2016. (D.I. 615.) In its Opposition, Google simultaneously argues that – (1) Google adequately pled a § 101 defense in its Answer and never abandoned it (D.I. 696, pp. 1, 5, 16); and (2) Google could not have timely provided § 101 contentions because “Google developed its § 101 contentions in view of Stanacard, which issued after discovery had closed.” (D.I. 696, p. 13; see also id., at pp. 3 and 10 (admitting that Google “perhaps should have” and “could have” sought to amend validity contentions after Stanacard issued), p. 8 (“discovery had closed at the time of Stanacard, the central authority on which Google’s § 101 motion rests”), p. 15 (“Discovery was 1 All citations to docket numbers refer to the docket numbers in case 1:12-cv-01701-RGA. Exhibits A-H cited herein are attached to Callwave’s Memorandum in Support of its Motion to Strike Google’s Motion for Summary Judgment that All Asserted Claims of the Patents-in-Suit are Invalid Under § 101 (the “Memo”). (D.I. 650-1 and 651.) Further exhibits are attached. Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 4 of 15 PageID #: 48643 -2- closed when Stanacard – a foundation of Google’s § 101 argument – was decided.”).) A. Google’s § 101 Defense Was Not Adequately Pled, and Its Contentions and Expert Reports Were Not Adequate to Maintain It If Google’s § 101 contentions only arose upon the Southern District of New York’s decision in Stanacard, then Google’s generic pleading in its Answer was baseless, unsupported and therefore made in bad faith. If, however, its Answer was not baseless and Google always intended to proceed under § 101, then Google was required to provide “initial invalidity contentions for each asserted claim.” (D.I. 57, p. 5.) It did not do so. Moreover, if Google “developed its § 101 contentions in view of Stanacard, which issued after discovery had closed” (D.I. 696, p. 13), Google cannot credibly argue that “disclosures of the type Google made” in its validity contentions and expert reports, which were served before Stanacard, were enough to maintain the improperly pled § 101 defense. (See D.I. 696, p. 9.) The absurdity of this position is further emphasized by the case Google cites to support it. In Joao Bock Transaction Sys., LLC v. Jack Henry & Assocs., Inc., the defendant pled a conclusory § 101 defense in its answer to the complaint. (Ex. I, ¶ 20.) 76 F. Supp. 3d 513, 521, n.4 (D. Del., Dec. 15, 2014). Google points to the court’s statement that “[t]his defense, coupled with the explanation in defendant’s initial invalidity contentions that plaintiff’s patent follows the ‘natural progression of technology that occurred in the [19]80[‘s] and early [19]90’s…provides notice of defendant’s intent to proceed with an invalidity defense” under § 101. (See D.I. 696, p. 9.) But that statement was made in the defendant’s § 101 contentions. (See Ex. J, pp. 13-15 (highlighting in original).2) By contrast, Google made no such contentions and relies instead on statements made in the context of anticipation and obviousness arguments under §§ 102 and 103, which could not have put Callwave and the Court on notice of any § 101 contention. (See Ex. A, 2 The Joao Bock opinion cites D.I. 195, Ex. 10, which was filed under seal, so Callwave attaches D.I. 223, the redacted public version. (See Ex. K (Joao Bock docket report).) Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 5 of 15 PageID #: 48644 -3- p. 9; Ex. H, p. 22, ¶ 60, p. 43, ¶¶ 120-121, p. 47, ¶ 130.3) Joao Bock does not support Google’s attempt to repurpose its §§ 102 and 103 contentions to argue after-the-fact that they were intended to support an undeveloped and unstated § 101 contention. Further, in Joao Bock, plaintiff’s motion to strike was a conclusory, 1.5 page section of a summary judgment brief based on the argument that the defendant repeatedly changed its interpretation of the “abstract idea” to which plaintiff’s claims were drawn, not because the § 101 defense was untimely. (Ex. L at 25-27 (redaction marks in original).) 76 F. Supp. 3d at 521, n.4. That motion did not analyze the 6 Poulis factors applicable to such motions. (Ex. L at 25-27.) B. Google Waited Almost a Year After Stanacard to Bring its § 101 Defense to the Court and Callwave’s Attention If Google “perhaps should have” and “could have” sought to amend validity contentions after Stanacard issued (D.I. 696, pp. 3 and 10), why did Google instead wait almost 10 months after Stanacard before raising its § 101 defense for the first time in its Motion for Summary Judgment, especially in light of the Scheduling Order, Default Standard, and Google’s obvious understanding, evidenced by its 5 supplementations, that its validity contentions must be updated to contain all invalidity grounds it intends to pursue at trial? The only explanation is that Google intentionally hid the ball to ambush Callwave with its § 101 defense at the last minute. II. GOOGLE’S ARGUMENTS SHOW WHY THE POULIS FACTORS WEIGH IN FAVOR OF DISMISSING GOOGLE’S § 101 DEFENSE Google argues that it has not disobeyed any discovery order, but both the Scheduling Order and the Default Standard are discovery orders. See, e.g., Mortgage Grader, Inc. v. First 3 The Federal Circuit has cautioned that § 103 obviousness arguments should not bleed into the § 101 analysis. See, e.g., BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-50 (Fed. Cir. 2016) (“The district court's analysis . . . looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”) Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 6 of 15 PageID #: 48645 -4- Choice Loan Servs. Inc., 811 F.3d 1314, 1320 (Fed. Cir. 2016) (J. Stark sitting by designation) (local patent rules are “essentially a series of case management orders”). Google disobeyed these orders by inexplicably failing to disclose its § 101 defense prior to filing its § 101 Motion. Google further argues that the Default Standard does not require § 101 contentions because it does not mention “§ 101.” (D.I. 696, p. 10.) But the Delaware local rule applies to “invalidity” generally (see Default Standard, Rule 4.d.), which, under long-standing Supreme Court and Federal Circuit precedent, includes § 101. See, e.g., BASCOM, 827 F.3d at 1347 (Fed. Cir. 2016) (citing collected Supreme Court opinions) (“§ 101 provides a basis for a patentability/validity determination….”). Notably, Google and the other defendants provided § 101 contentions in the ’970 Track in May of 2014, before the Supreme Court’s Alice opinion issued. (Ex. M, pp. 25-26.) Google’s claims that it did not think or know that it was required to disclose § 101 contentions pursuant to the Scheduling Order and Discovery Standard are not believable. Google also claims that “Callwave…fails to explain what additional information it needed from Google.” (D.I. 696, pp. 9-10.) But Google did not provide any information about its § 101 defense, including which patents and claims were subject to its § 101 defense, whether Google alleged the claims were directed to “abstract ideas”, or to “other non-statutory subject matter,” and what the alleged abstract ideas were. It was Google’s responsibility to timely disclose its validity contentions to put the Court and Callwave on notice of Google’s defenses and allow Callwave to develop its theories of the case. See, e.g., O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006). Google never provided a hint of its factual and legal theories (contentions) regarding § 101. A. Google’s Failure to Comply with the Scheduling Order and Default Standard Created the Omissions it Now Alleges Callwave Committed Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 7 of 15 PageID #: 48646 -5- Google argues that it is not responsible for the delay under Poulis factor 1 because it has been represented by outside counsel throughout the case. (D.I. 696, p. 13.) Google fails to provide any reason that it should “avoid the consequences of the acts or omissions of its counsel.” See Poulis v. State Farm Fire & Casualty Co., 747 F.2d 863, 868 (3d Cir. 1984) (citing Link v. Wabash R. Co., 370 U.S. 626, 633 (1962).) Google also claims that “Callwave cannot dispute that it was on notice” of Google’s § 101 defense and that the defense was not withdrawn. As explained in Callwave’s Memo, the opposite is true. (See, e.g., D.I. 650, p. 2 (“Callwave reasonably understood that Google had dropped the unsubstantiated § 101 pleading in its Answer”), p. 3-4 (“a contention raised and later abandoned is no better than a contention never raised at all” (citing Silicon Labs., Inc. v. Cresta Tech. Corp., 2016 U.S. Dist. LEXIS 25459, *8-9 (N.D. Cal. 2016)).) Attempting to pivot from its own failures, Google blames Callwave for not policing Google’s failures well enough, arguing: • Callwave’s Rule 26 disclosures did not identify the inventors as having information relevant to eligibility (D.I. 696, p. 2); • Callwave never argued that the conclusory § 101 defense in Google’s Answer was abandoned (D.I. 696, pp. 2-3); and • Callwave never moved to compel Google’s § 101 contentions (D.I. 696, p. 15). Callwave’s Initial Disclosures listed each of the inventors, including Messrs. Hofstatter and Trandal, as having information regarding “[t]he inventions claimed in the [asserted] patents.” (Ex. N, pp. 3-4.) Google’s failure to question those inventors about whether the inventions are directed to an abstract idea or technological improvements over that unidentified abstract idea only reinforces that Google abandoned its undisclosed § 101 defense. Callwave also argued that Google abandoned its § 101 defense immediately upon Google attempting to resurrect it. The Scheduling Order and Default Standard required Google to disclose its invalidity Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 8 of 15 PageID #: 48647 -6- defenses. Callwave had no reason to believe that Google would suddenly identify an alleged abstract idea after nearly 2.5 years of failing to make any such § 101 contention, and thus no reason to argue Google’s § 101 defense was abandoned prior to filing the present motion. B. Callwave’s Filing of Multiple Motions to Strike is Precisely Due to Google’s Willful, Bad Faith Pattern of Dilatoriness Google argues that it has not displayed a willful, bad faith pattern of dilatoriness under Poulis factor 2 while simultaneously complaining that Callwave has now filed four motions to strike in this case – motions necessitated by Google’s willful, bad faith pattern of dilatory behavior of inserting untimely new defenses into this case. (See D.I. 696, pp. 6-7, 13-14.)4 Google repeats that it “developed its § 101 contentions in view of Stanacard” without addressing any of the questions raised above, which point up Google’s bad faith. Additionally, as explained in Callwave’s Memo, non-binding post-Alice district court decisions such as Stanacard are not the type of intervening law that support untimely amendments to contentions. (D.I. 650, p. 7 (citing Radware, Ltd. v. F5 Networks, Inc., 147 F. Supp. 3d 974, 982 (N.D. Cal. 2015).) District courts such as the Southern District of New York in Stanacard interpret and apply the law. Google does not argue, nor can it, that Stanacard somehow changed or clarified the law. To the contrary, the Stanacard court noted that in the five years before Stanacard, “courts have been flooded with motions to dismiss patent cases” based on patent ineligibility. Stanacard, 2015 LEXIS 157345, *2. Stanacard merely applied existing law to the patent claims at issue in that case, and Google points to no reason it could not have raised its § 101 defense prior to Stanacard. Moreover, even if Stanacard changed the law, Google does not explain why it waited a further 10 months after Stanacard to disclose its § 101 defense. Google also mentions that the Court denied Callwave’s first two motions to strike but, as 4 Google’s argument is also inconsistent with its contention that Callwave should have brought further motion practice to confirm Google’s abandonment of its unidentified § 101 defense. Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 9 of 15 PageID #: 48648 -7- Callwave explained in its Memo, part of the Special Master’s reasoning for denying the second of those motions was that she could not find a bad faith pattern despite admitting that the late production of the New BroadWorks Release 8 software and “demonstrative exhibits” shortly after her prior ruling was “suspect.” (D.I. 470, ¶ 12.) While Google’s first two offenses may have been “suspect” without establishing a pattern, Google has since attempted to insert two more late defenses into this case – the § 101 defense and a § 102(g) defense based on the Burger patent. (See D.I. 615, D.I. 683.) Google later withdrew its new § 102(g) defense in a transparent attempt to save its § 101 defense, but Google cannot and does not deny that four or even three different instances of adding defenses to the case long after the contention deadline demonstrates an ongoing pattern of willfully disregarding the Scheduling Order and Default Standard. C. Google Misrepresents Both Callwave’s “Admission” and the Case Law with Regard to the “Meritoriousness” of Google’s Claim Google attempts to mislead this Court into thinking that Callwave admitted that Google’s § 101 defense was substantively “meritorious.” (D.I. 696, p. 2; see also id. at p. 7 (“Callwave seeks to enforce patents even if they are not – as a matter of law – patent eligible”).) Poulis factor 4 requires that the Court assess whether “the allegations of the pleadings, if established at trial, would support recovery…or would constitute a complete defense.” Poulis, 747 F.2d at 869-70. Most importantly, Callwave’s only admission was that “[u]nder that standard alone, Callwave does not contest that Google’s new § 101 defense is facially meritorious,” i.e., that Google had finally pled a §101 theory. (See D.I. 650, pp. 8-9.) That is not an admission that Google had established its new § 101 defense or that Google had pled it in a timely fashion. Callwave opposed Google’s § 101 Motion on the merits, showing why Callwave’s patents are not invalid under § 101. (See D.I. 657.) Google’s Opposition overstates Emcasco as well. Google argues that if its § 101 defense Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 10 of 15 PageID #: 48649 -8- is facially meritorious under the Poulis standard, that “should be fatal to Callwave’s present motion.” (See D.I. 696, p. 15.) That is not the law. See, e.g., Haraway v. NASCAR, 213 F.R.D. 161, 164 (D. Del. 2003) (the Poulis factors need not all be present or weighed equally to support dismissal with prejudice). It is also not what Emcasco says. In Emcasco Insurance Co. v. Sambrick, the lower court denied a motion to set aside a default judgment. 834 F.2d 71, 73 (3d Cir. 1987). The Third Circuit reversed and remanded because the lower court had not made explicit findings concerning the Poulis factors. Id. at 74-76. In explaining that the lower court had not properly conducted a Poulis analysis, the Third Circuit stated regarding the “meritoriousness” factor that “[w]e need not decide the legal issue at this time; it is sufficient that Sambrick’s proffered defense is not facially unmeritorious.” Id. at 74 (internal citations omitted). In other words, the Third Circuit held that if a defense is facially meritorious, this factor weighs against striking that defense, which is exactly what Callwave candidly admitted here. But, it does not follow that a facially meritorious defense cannot be stricken regardless of the other factors. See Haraway, 213 F.R.D. at 164. If that was the law, the Third Circuit would have had no reason to discuss numerous other Poulis factors before and after making this statement. See Emcasco, 834 F.2d 74-76. D. Google’s Arguments Regarding Prejudice Similarly Misstate Callwave’s Position and Relevant Case Law In addressing Poulis factor 5, Google asserts that “Callwave has articulated no prejudice,” (D.I. 696, p. 16) ignoring that Callwave’s Memo discussed how Google had prejudiced Callwave’s ability to defend on the merits, its ability to ferret out the strengths and weaknesses of Google’s case and obtain the fullest knowledge of the issues and facts, and its ability to conduct Markman and narrow the asserted patents and claims with full knowledge of the issues Google actually intended to litigate. (D.I. 650, pp. 9-10.) After claims were Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 11 of 15 PageID #: 48650 -9- construed, discovery closed, and Callwave reduced its claims dramatically at Google’s insistence, Google added four new invalidity defenses – all of which were available to it from day one. This shifting sands approach to invalidity is prejudice enough, requiring Callwave to make strategic decisions in a vacuum and expend vast resources chasing down the numerous disclosed contentions while Google withheld the defenses it intended to actually litigate. Google wants this Court to ignore Google’s repeated delays, but to do so yet again would make a mockery of the Scheduling Orders and the Default Standard. The purpose of rules is fairness and compliance, and Google has unfairly failed to comply yet again. As with Joao Bock and Emcasco, Google also misinterprets the meaning and impact of Mortgage Grader. In Mortgage Grader, the defendant did not advance a § 101 argument in its initial contentions, but timely added a § 101 defense to its final contentions just 2 months after the Supreme Court’s Alice opinion issued. Mortgage Grader, 811 F.3d at 1317-1323. Unlike Stanacard, the Federal Circuit affirmed the lower court’s finding that “Alice represents a big enough change [in § 101 law] to justify including a new § 101 argument in Defendants’ Final Invalidity Contentions.” Id. at 1321. Google identifies no change in the law from Stanacard supporting late disclosure of contentions. Additionally, the Federal Circuit in Mortgage Grader was not applying the Poulis test, but rather evaluated a California district judge’s standing patent rule, which did not require consideration of prejudice, and therefore the Federal Circuit held that “[t]he district court did not abuse its discretion by failing to consider prejudice when it applied a rule that does not require consideration of prejudice.” Id. at 1323. Finally, unlike Callwave, the appellee in Mortgage Grader admitted that it failed to present arguments related to prejudice in its motion to strike and thus, the Federal Circuit considered such arguments waived. Id. at 1323. That is what the Mortgage Grader court was Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 12 of 15 PageID #: 48651 -10- referencing when it made the statement upon which Google relies. The appellee had literally done nothing, made no arguments, about whether it would have conducted the case differently or was otherwise prejudiced. By contrast, Callwave directly addressed prejudice. (D.I. 650, pp. 9- 10.) Since it was addressing a rule that did not require consideration of prejudice, this Federal Circuit statement is also non-binding dicta. E. Allowing Callwave to Follow the Procedures Laid Out in Rule 56 in Opposing Google’s Motion for Summary Judgment is No Sanction at All In addressing Poulis factor 6, Google does not address any of Callwave’s arguments about the inappropriateness of alternative sanctions, but summarily asserts that an appropriate sanction would be “to allow Callwave’s two recent inventor declarations into the record for the § 101 motion even though Callwave never identified either person as having knowledge of facts relating to patent eligibility.” (D.I. 696, p. 16.) First, this is factually incorrect. As discussed above, Callwave properly identified both inventors in its Initial Disclosures. Second, Federal Rule of Civil Procedure 56(c)(4) allows for affidavits or declarations to be used to oppose a motion for summary judgment, which Callwave did by submitting the two inventor declarations. Had Google actually been pursuing a § 101 defense, it could have elicited this same information from those inventors in their nearly 19 hours of on-the-record testimony. Simply put, Google has identified no sanction more appropriate than that requested by Callwave. III. CONCLUSION Google’s Opposition does nothing to overcome the instant Motion. It remains that, overall, five Poulis factors favor striking Google’s Motion for Summary Judgment and dismissing Google’s § 101 defense with prejudice, with two, including the most weighty in respect to failures to comply with a discovery schedule – pattern of dilatoriness – heavily in favor. Therefore, Callwave respectfully requests that the Court grant the instant Motion. Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 13 of 15 PageID #: 48652 -11- OF COUNSEL: William D. Belanger * Suparna Datta * L. Andrew Tseng * Megan E. L. Bigelow * Pepper Hamilton LLP 125 High Street 19th Fl. High Street Tower Boston, MA 02110 (617) 204-5100 Gregory S. Bishop * Charles F. Koch * Pepper Hamilton LLP 333 Twin Dolphin Drive, Suite 400 Redwood City, CA 94065 (650) 802-3600 *all admitted pro hac vice Dated: October 31, 2016 Respectfully submitted, /s/ James G. McMillan, III James G. McMillan, III (Del. Bar. No. 3979) Pepper Hamilton LLP Hercules Plaza, Suite 5100 1313 Market Street P.O. Box 1709 Wilmington, Delaware 19899-1709 (302) 777-6500 mcmillaj@pepperlaw.com Attorneys for Plaintiff Callwave Communications, LLC Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 14 of 15 PageID #: 48653 CERTIFICATE OF SERVICE I hereby certify that, on October 31, 2016, I caused a copy of PLAINTIFF CALLWAVE COMMUNICATIONS, LLC’S REPLY MEMORANDUM IN SUPPORT OF ITS MOTION TO STRIKE DEFENDANT GOOGLE, INC.’S MOTION FOR SUMMARY JUDGMENT THAT ALL ASSERTED CLAIMS OF THE PATENTS-IN-SUIT ARE INVALID UNDER § 101, to be electronically filed with the Clerk of the Court using CM/ECF, which will send electronic notification of such filing to the following counsel of record: Jack B. Blumenfeld, Esquire Paul Saindon, Esquire Morris, Nichols, Arsht & Tunnell LLP 1201 North Market Street, Suite 1800 P.O. Box 1347 Wilmington, DE 19899 /s/ James G. McMillan, III James G. McMillan, III (Del. Bar. No. 3979) Case 1:12-cv-01704-RGA Document 653 Filed 10/31/16 Page 15 of 15 PageID #: 48654 EXHIBIT I Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 1 of 51 PageID #: 48655 3199607.1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE JOAO BOCK TRANSACTION SYSTEMS, LLC Plaintiff, v. JACK HENRY & ASSOCIATES, INC. Defendant. ) ) ) ) ) ) ) ) ) ) Case No. 1:12-cv-01138-SLR JURY TRIAL DEMANDED JACK HENRY & ASSOCIATES’ ANSWER AND COUNTERCLAIM PRELIMINARY STATEMENT This is the third action that plaintiff Joao Bock Transaction Systems (“JBTS”) or one of its affiliates has brought against Jack Henry & Associates (“Jack Henry”) and/or one of its customers. JBTS is a non-practicing entity. 1 Its principal owner is Raymond Joao, who is a licensed patent attorney. JBTS claims to own a number of patents, many of which contain vague claims that purportedly cover nearly all forms of business communications activity. Jack Henry is a banking software development company based in Monett, Missouri. Jack Henry creates software solutions for smaller community and regional banks. JBTS first sued Jack Henry and one of its customer banks, Sleepy Hollow Bank of Sleepy Hollow, New York in 2003. A two-week trial in March 2010 resulted in a jury verdict and judgment that Jack Henry’s internet banking product did not infringe any part of U.S. Patent No. 6,529,725 2 and that all of the asserted claims were invalid under 35 U.S.C. §§ 102 or 103, based on at least four pieces of 1 JBTS has, at last count, sued more than sixty parties in federal courts in New York, California, Florida, Georgia, Illinois, Texas and, now, Delaware. 2 The ‘725 patent was originally filed on October 9, 1998 as application number 09/169,053 and claims priority to a provisional application filed on August 8, 1996. The ‘725 patent issued on March 4, 2003. The ‘003 patent was originally filed on September 10, 2001 as application number 09/949,694 and also claims priority back to the provisional application filed on August 8, 1996 and is a continuation of the ‘075 patent. The ‘003 patent issued on August 22, 2006. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 1 of 11 PageID #: 83Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 2 of 51 PageID #: 48656 2 3199607.1 prior art, including one of Jack Henry’s proprietary systems known as Cash Management. The Federal Circuit affirmed that judgment in December 2011. Even as the Sleepy Hollow litigation was pending, JBTS continued to seek to obtain continuation patents stemming from the same parent application. On August 22, 2006, the Patent Office issued U.S. No. 7,096,003. The ‘003 patent contained the exact same priority date (subject to a terminal disclaimer), specification, description and drawings as the ‘725 patent. The claims of the ‘075 and the ‘003 patents are substantially –in many cases almost word for word -- the same. To obtain the ‘003 patent, JBTS dumped hundreds of references totaling over 3200 pages –including the art JHA had disclosed in discovery in the Sleepy Hollow litigation -- on the examiner. On August 18, 2009, an entity names Joao Bock Transaction Systems of Texas, LLC filed an action against six Jack Henry customers in the Eastern District of Texas, alleging that they were infringing the ‘003 patent as a result of using Jack Henry’s internet banking software products. Jack Henry’s attorneys entered their appearances and took steps to defend the banks. On January 4, 2011, JBTS dismissed that action without prejudice. It has not been re-filed. Jack Henry now responds to the specific allegations set forth in the Complaint. NATURE OF THE ACTION 1. Answering paragraph 1 of Plaintiff’s Complaint, Jack Henry denies any and all allegations of patent infringement. The substance of this patent was litigated in 2010 in the Southern District of New York, where a jury found unanimously that the ‘075 patent, from which the ‘003 patent claims priority, was invalid and that Jack Henry’s product did not infringe it. Further, Jack Henry denies that Plaintiff is entitled to any damages in relation to this patent. This action was filed over 6 years after the ‘003 patent issued and 9 years after the Plaintiff was aware of Jack Henry’s products. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 2 of 11 PageID #: 84Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 3 of 51 PageID #: 48657 3 3199607.1 Further, Jack Henry lacks sufficient information and knowledge as to whether or not the Plaintiff is the owner of the patent in suit. When JBTS-Texas sued six Jack Henry banks in 2010, that entity alleged that it was the owner or exclusive assignee of the ‘003 patent. Jack Henry therefore denies the allegations in paragraph 1 of the Complaint. PARTIES 2. Answering the second paragraph 13 of Plaintiff’s Complaint, Jack Henry lacks sufficient information and knowledge as to whether or not the Plaintiff is the owner of the patent in suit. When JBTS-Texas sued six Jack Henry banks in 2010, that entity alleged that it was the owner or exclusive assignee of the ‘003 patent. Jack Henry therefore denies the allegations in paragraph 1 of the Complaint. 3. Answering paragraph 2 of Plaintiff’s Complaint, Jack Henry lacks sufficient information and knowledge as to whether or not the Plaintiff is the owner of the patent in suit. When JBTS-Texas sued six Jack Henry banks in 2010, that entity alleged that it was the owner or exclusive assignee of the ‘003 patent. Jack Henry therefore denies the allegations in paragraph 1 of the Complaint. 4. Answering paragraph 3 of Plaintiff’s Complaint, Jack Henry admits that it is organized under the laws of Delaware and that it has a principal place of business in Monett, Missouri. Jack Henry also admits that it has a registered agent located at 2711 Centerville Road, Suite 400 in Wilmington, Delaware. Jack Henry denies that any infringing activity takes place in this State or this District, or through its website, www.jackhenry.com. Further, if the accusation is that www.jackhenry.com is the product that is “infringing the Patent-in-Suit” then Jack Henry will move for immediate summary judgment. 3 There are two paragraphs in the Complaint numbered 1. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 3 of 11 PageID #: 85Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 4 of 51 PageID #: 48658 4 3199607.1 JURISDICTION AND VENUE 5. Answering paragraph 4 of Plaintiff’s Complaint, Jack Henry lacks sufficient knowledge or information to either admit or deny the allegations contained therein and therefore deny same. 6. Answering paragraph 5 of Plaintiff’s Complaint, Jack Henry lacks sufficient knowledge or information to either admit or deny the allegations contained therein and therefore deny same. 7. Answering paragraph 6 of Plaintiff’s Complaint, Jack Henry denies that it and/or any of its customers has committed patent infringement in the State of Delaware and denies that it has intentionally induced others to commit patent infringement in the State of Delaware. 8. Answering paragraph 7 of Plaintiff’s Complaint, Jack Henry lacks sufficient knowledge or information to either admit or deny the allegations contained therein and therefore deny same. COUNT I: INFRINGEMENT OF U.S.PATENT NO. 7,096,003 BY JACK HENRY 9. Answering paragraph 8 of Plaintiff’s Complaint, Jack Henry denies the allegations contained therein. Jack Henry admits that the ‘003 patent issued on August 22, 2006. However, Jack Henry denies that there was a “full and fair examination” of this patent. Raymond Joao dumped numerous references totaling thousands of pages on the patent office, including documents obtained during the litigation of the ‘725 patent, documents he knew the patent office would not actually consider but that would be documented on the face of the patent. Raymond Joao is a patent attorney and engaged in activities that necessarily prevented a fair and full examination of the ‘003 patent. Jack Henry denies that the ‘003 is a valid patent. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 4 of 11 PageID #: 86Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 5 of 51 PageID #: 48659 5 3199607.1 Further, Jack Henry lacks sufficient information and knowledge as to whether or not the Plaintiff is the owner of the patent in suit since the last time a lawsuit was raised over this patent it was in the Eastern District of Texas and the patent was owned by a different entity. Jack Henry therefore denies same. 10. Answering paragraph 9 of Plaintiff’s Complaint, Jack Henry denies each and every allegation contained therein. 11. Answering paragraph 10 of Plaintiff’s Complaint, Jack Henry denies each and every allegation contained therein. 12. Answering paragraph 11 of Plaintiff’s Complaint, Jack Henry denies each and every allegation contained therein. 13. Answering paragraph 12 of Plaintiff’s Complaint, Jack Henry states that it does not infringe any claim of the ‘003 patent and is not required to have authorization and/or a license from Plaintiff to distribute any Jack Henry product. 14. Answering paragraph 13 of Plaintiff’s Complaint, Jack Henry states that ii was first made aware of the ‘003 patent on or about September 18, 2006, when JBTS’ counsel advised that the patent had been issued and that JBTS was considering adding it to the Sleepy Hollow litigation. Jack Henry also states that Plaintiff was aware that the ‘003 patent issued on August 22, 2006, which is more than six years before this lawsuit was filed. 15. Answering paragraph 14 of Plaintiff’s Complaint, Jack Henry denies each and every allegation contained therein. 16. Answering paragraph 15 of Plaintiff’s Complaint, Jack Henry denies each and every allegation contained therein. 17. Answering paragraph 16 of Plaintiff’s Complaint, Jack Henry states that this lawsuit should be barred by estoppel, laches and/or any other equitable remedy. Plaintiff could Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 5 of 11 PageID #: 87Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 6 of 51 PageID #: 48660 6 3199607.1 have asserted these claims in 2006 in the Sleepy Hollow litigation but chose for its own reasons not to do so. Plaintiff has brought this lawsuit simply for the purpose of harassing Jack Henry and its customers. Jack Henry successfully defended the previous trial against Plaintiff and that result should dispose of this case. DEMAND FOR A JURY TRIAL 18. Jack Henry demands a jury trial pursuant to Fed. R. Civ. P. 38. AFFIRMATIVE DEFENSES 19. Jack Henry has not and does not infringe, contribute to infringement, or induce infringement upon any valid and enforceable claim of U.S. Patent 7,096,003. 20. The subject matter claimed in U.S. Patent 7,096,003 is not patent-eligible subject matter under Title 35, § 101 as it is not a process, machine, article of manufacture, or composition of matter as that subject matter is defined under the patent laws of the United States. 21. U.S. Patent 7,096,003 is invalid, void and unenforceable because: (1) The alleged invention of U.S. Patent 7,096,003 was known or used by others in this country or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent; (2) The alleged invention of U.S. Patent 7,096,003 was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States; (3) The alleged invention of U.S. Patent 7,096,003 was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent; (4) Those persons identified as the inventors of U.S. Patent 7,096,003 did not invent the subject matter of U.S. Patent 7,096,003; (5) Before the alleged invention thereof, the invention of U.S. Patent 7,096,003 was made in this country by another who had not abandoned, suppressed or concealed it; Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 6 of 11 PageID #: 88Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 7 of 51 PageID #: 48661 7 3199607.1 (6) U.S. Patent No. 7,096,003 describes and claims an alleged invention, the making of which did not involve the inventive faculty but only the obvious judgment, knowledge and mechanical skill possessed by persons having ordinary skill in the art to which the alleged invention pertains. Defendant avers that the subject matter claimed in the patent fails to comply with Title 35, § 102 and § 103 of the United States Code in that the differences between the subject matter claimed in such patent and the prior art are such that the subject matter as a whole was either fully anticipated by the prior art or would have been obvious at the time the alleged invention was made to a person having knowledge of such prior art and having ordinary skill in the art to which such claimed subject matter pertains; (7) U.S. Patent 7,096,003 does not contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as required by the statutes of the United States to enable any person skilled in the art to practice the invention purported to be covered thereby; (8) The claims of U.S. Patent 7,096,003 are fatally vague and indefinite, and therefore invalid and void, because they do not particularly point out and distinctly claim the subject matter of the alleged invention, as required by Title 35, § 112 of the United States Code. 22. If the Plaintiff is entitled to damages, which is expressly denied, those damages are limited by 35 USC § 286. 23. Plaintiff’s claim for infringement and injunctive relief is barred by the doctrine of unclean hands, waiver, laches, estoppel and/or equitable estoppel. As stated above, JBTS obtained the ‘003 patent by dumping hundreds of references containing thousands of pages on the examiner, effectively burying relevant prior art in the stack so the examiner would be less likely to find and study it. Further, JBTS has waited more than six years after the ‘003 patent issued to file this action. The delay has prejudiced Jack Henry. 24. Plaintiff’s claims are barred by the doctrines of claim preclusion, claim splitting, res judicata and/or collateral estoppel, by reason of the judgments on non-infringement and invalidity obtained in the Sleepy Hollow litigation. The claims in the ‘003 patent are substantially similar if not virtually identical to the claims in the ‘725 patent, and the court’s final Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 7 of 11 PageID #: 89Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 8 of 51 PageID #: 48662 8 3199607.1 judgments of non-infringement and invalidity in the Sleepy Hollow litigation (which the Federal Circuit affirmed) preclude JBTS’ asserting claims in the ‘003 patent against Jack Henry. 25. Jack Henry avers that the claims of U.S. Patent 7,096,003 are limited and restricted by their terms and the prior art and are made so by limitations and restrictions made therein under the requirements of the U.S. Patent Office during the proceedings in the U.S. Patent and Trademark Office while the application for the patent was pending. The Plaintiff is therefore now estopped from maintaining that U.S. Patent 7,096,003 covers or embraces any products being made, used or sold by Jack Henry. 26. Jack Henry reserves the right to raise additional affirmative defenses as discovered through the course of litigation, including, but not limited to: (1) any additional grounds of invalidity of the patent of which Jack Henry may hereinafter learn will be brought to Plaintiff’s notice by appropriate proceedings; (2) that U.S. Patent 7,096,003 is unenforceable as having been obtained by fraud, should facts developed in discovery demonstrate that the applicant failed to call to the attention of the Patent Examiner prior art, public knowledge and uses of which he had knowledge and over which the alleged invention was not patentable; (3) the Plaintiff lacks standing to assert some or all of the claims set forth in the Complaint as Plaintiff lacks sufficient ownership interest in U.S. Patent No. 7,096,003 to permit Plaintiff to bring an action for infringement of U.S. Patent No. 7,096,003; as noted above, one of Plaintiff’s affiliates, Joao Bock Transaction Systems – Texas, LLC has claimed ownership or exclusive assignment of the ‘003 patent; (4) the Plaintiff has so misused U.S. Patent 7,096,003 as to render it unenforceable. WHEREFORE, Jack Henry prays that Plaintiff’s Complaint be dismissed with prejudice; judgment be entered in favor of Jack Henry.; and that the Court award Jack Henry its costs, fees and expenses to the extent allowed by law. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 8 of 11 PageID #: 90Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 9 of 51 PageID #: 48663 9 3199607.1 COUNTERCLAIM FOR DECLARATORY JUDGEMENT 27. Jack Henry & Associates (“Jack Henry”) for its Counterclaim against Joao Bock Transactions Systems, LLC, (“Plaintiff”) states as follows: PARTIES 28. Jack Henry maintains a place of business at 663 W. Highway 60, P.O. Box 807, Monett, MO 65708. 29. Upon information and belief, Plaintiff is a limited liability company organized under the laws of the State of Delaware and maintains it principal place of business at 116 Sweetfield Circle, Yonkers, New York 10704. JURISDICTION 30. Jurisdiction of this counterclaim arises under the Federal Declaratory Judgment Act, 28 U.S.C. § § 220l and 2202, and under the laws of the United States concerning actions relating to patents, Title 28 United States Code, § 1338(a). 31. There is a justiciable controversy between Plaintiff and Jack Henry concerning the validity and scope of Plaintiff’s U.S. Patent No. 7,096,003 and Jack Henry’s liability for infringement thereof. 32. Venue is proper in this judicial district in that it involves a claim that is already before this Court. 33. Jack Henry avers that U.S. Patent No. 7,096,003 is void, invalid and unenforceable for the reasons set forth in its Answer to the Complaint filed by Plaintiff. 34. Plaintiff, having instituted this vexatious and expensive infringement suit against Jack Henry could, with the approval of this Court, dismiss such suit without an adjudication of the validity of U.S. Patent 7,096,003. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 9 of 11 PageID #: 91Case 1:12-cv-01704-RGA Document 653-1 0 31 6 10 of 51 PageID #: 48664 10 3199607.1 35. Such action would expose Jack Henry to further annoyance and litigation regarding alleged infringement of U.S. Patent 7,096,003. 36. Jack Henry denies infringement of Plaintiff’s patent, and avers that unless Jack Henry is found not to infringe U.S. Patent 7,096,003 or the patent is adjudged invalid, void and unenforceable, Jack Henry will be harassed in the use, manufacture and sale of their products and services. 37. A declaratory judgment as to Jack Henry’s non-infringement and invalidity of U.S. Patent 7,096,003 is therefore necessary. WHEREFORE, for the above-stated reasons, Jack Henry requests this Court enter a declaratory judgment finding that U.S. Patent 7,096,003 patent is invalid and unenforceable; award Jack Henry their costs, fees and expenses to the extent allowed by law; and grant Jack Henry all other relief to which they are justly entitled. Dated: December 3, 2012 Wilmington, Delaware POLSINELLI SHUGHART PC /s/ Shanti M. Katona Shanti M. Katona (Del. Bar No. 5352) 222 Delaware Avenue, Suite 1101 Wilmington, Delaware 19801 Telephone: (302) 252-0920 Facsimile: (302) 252-0921 skatona@polsinelli.com OF COUNSEL: Russell S. Jones, Jr. Joshua M. McCaig Polsinelli Shughart PC Twelve Wyandotte Plaza 120 W. 12th Street Kansas City, MO 64105 Telephone: (816) 421-3355 Facsimile: (816) 374-0509 rjones@polsinelli.com jmccaig@polsinelli.com Attorneys for Jack Henry & Associates, Inc. Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 10 of 11 PageID #: 92Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 11 of 51 PageID #: 48665 11 3199607.1 CERTIFICATE OF SERVICE I, Shanti M. Katona, hereby certify that a copy of the foregoing pleading was served upon all counsel of record via US First Class Mail and the United States District Court for the District of Delaware’s ECF Document Filing System on the 3rd day of December, 2012. Stamatios Stamoulis Richard C. Weinblatt Two Fox Point Centre 6 Denny Road , Suite 307 Wilmington, DE 19809 Telephone: (302) 999-1540 stamoulis@swdelaw.com weinblatt@swdelaw.com Attorneys for Plaintiff Steven W. Ritcheson HENINGER GARRISON DAVIS, LLC 9800 D. Topanga Canyon Blvd., #347 Chatsworth, CA 91311 Telephone: 818-274-1883 Facsimile: 818-337-0383 swritcheson@hgdlawfirm.com Attorneys for Plaintiff /s/ Shanti M. Katona Shanti M. Katona (Del. Bar No. 5352) Case 1:12-cv-01138-SLR Document 6 Filed 12/03/12 Page 11 of 11 PageID #: 93Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 12 of 51 PageID #: 48666 EXHIBIT J Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 13 of 51 PageID #: 48667 EXHIBIT 10 Case 1:12-cv-01138-SLR Document 223-4 Filed 11/07/14 Page 1 of 5 PageID #: 14086Case 1: 2-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 14 f 1 PageID #: 86 8 Case 1:12-cv-01138-SLR Document 223-4 Filed 11/07/14 Page 2 of 5 PageID #: 14087Case 1: 2-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 15 f 1 PageID #: 8669 Case 1:12-cv-01138-SLR Document 223-4 Filed 11/07/14 Page 3 of 5 PageID #: 14088Case 1: 2-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 16 f 1 PageID #: 8670 Case 1:12-cv-01138-SLR Document 223-4 Filed 11/07/14 Page 4 of 5 PageID #: 14089Case 1: 2-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 17 f 1 PageID #: 8671 Case 1:12-cv-01138-SLR Document 223-4 Filed 11/07/14 Page 5 of 5 PageID #: 14090Case 1: 2-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 18 f 1 PageID #: 8672 EXHIBIT K Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 19 of 51 PageID #: 48673 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 1/32 CLOSED,APPEAL,PaperDocuments,MEDIATIONSRF,PATENT U.S. District Court District of Delaware (Wilmington) CIVIL DOCKET FOR CASE #: 1:12cv01138SLR Joao Bock Transaction Systems LLC v. Jack Henry & Associates Inc. Assigned to: Judge Sue L. Robinson Related Cases: 1:14cv00089SLR 1:14cv00425SLR 1:14cv00528SLR 1:14cv00531SLR 1:14cv00529SLR 1:14cv00530SLR Case in other court: Federal Circuit, 1501245 Federal Circuit, 1601887 Cause: 35:271 Patent Infringement Date Filed: 09/14/2012 Date Terminated: 12/18/2014 Jury Demand: Plaintiff Nature of Suit: 830 Patent Jurisdiction: Federal Question Plaintiff Joao Bock Transaction Systems LLC represented by Stamatios Stamoulis Stamoulis & Weinblatt LLC Two Fox Point Centre 6 Denny Road, Suite 307 Wilmington, DE 19809 (302) 9991540 Email: stamoulis@swdelaw.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Jacqueline K. Burt Email: jburt@hgdlawfirm.com PRO HAC VICE ATTORNEY TO BE NOTICED Jonathan R. Miller Email: jmiller@hgdlawfirm.com PRO HAC VICE ATTORNEY TO BE NOTICED Joseph C. Gabaeff UNDELIVERABLE EMAIL 4/1/2016 PRO HAC VICE ATTORNEY TO BE NOTICED Joseph J. Gleason UNDELIVERABLE EMAIL 3/8/2016 PRO HAC VICE ATTORNEY TO BE NOTICED Matthew Blair Clinton Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 20 of 51 PageID #: 48674 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 2/32 Email: bclinton@hgdlawfirm.com PRO HAC VICE ATTORNEY TO BE NOTICED Maureen V. Abbey Email: maureen@hgdlawfirm.com PRO HAC VICE ATTORNEY TO BE NOTICED Richard Charles Weinblatt Stamoulis & Weinblatt LLC Two Fox Point Centre 6 Denny Road, Suite 307 Wilmington, DE 19809 3029991540 Email: weinblatt@swdelaw.com ATTORNEY TO BE NOTICED Steven W. Ritcheson UNDELIVERABLE EMAIL 1/8/16 PRO HAC VICE ATTORNEY TO BE NOTICED Timothy C. Davis Email: tim@hgdlawfirm.com PRO HAC VICE ATTORNEY TO BE NOTICED V. Defendant Jack Henry & Associates Inc. represented by Christopher M. Coggins Polsinelli PC 222 Delaware Avenue, Suite 1101 Wilmington, DE 19801 (302)2520932 Fax: 3022520921 Email: ccoggins@polsinelli.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Shanti Mulpuru Katona Polsinelli Shughart PC 222 Delaware Avenue, Suite 1101 Wilmington, DE 19801 3022520924 Email: skatona@polsinelli.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Jay E. Heidrick Email: jheidrick@polsinelli.com PRO HAC VICE ATTORNEY TO BE NOTICED Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 21 of 51 PageID #: 48675 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 3/32 ATTORNEY TO BE NOTICED Joshua M. McCaig Email: jmccaig@polsinelli.com PRO HAC VICE ATTORNEY TO BE NOTICED Richard P. Stitt Email: rstitt@polsinelli.com PRO HAC VICE ATTORNEY TO BE NOTICED Russell S. Jones , Jr. Email: rjones@polsinelli.com PRO HAC VICE ATTORNEY TO BE NOTICED Counter Claimant Jack Henry & Associates Inc. represented by Christopher M. Coggins (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Shanti Mulpuru Katona (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED V. Counter Defendant Joao Bock Transaction Systems LLC represented by Stamatios Stamoulis (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Richard Charles Weinblatt (See above for address) ATTORNEY TO BE NOTICED Counter Claimant Jack Henry & Associates Inc. represented by Christopher M. Coggins (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Shanti Mulpuru Katona (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Joshua M. McCaig (See above for address) ATTORNEY TO BE NOTICED Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 22 of 51 PageID #: 48676 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 4/32 ATTORNEY TO BE NOTICED Richard P. Stitt (See above for address) ATTORNEY TO BE NOTICED Russell S. Jones , Jr. (See above for address) ATTORNEY TO BE NOTICED V. Counter Defendant Joao Bock Transaction Systems LLC represented by Stamatios Stamoulis (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Jacqueline K. Burt (See above for address) ATTORNEY TO BE NOTICED Jonathan R. Miller (See above for address) ATTORNEY TO BE NOTICED Joseph C. Gabaeff (See above for address) PRO HAC VICE ATTORNEY TO BE NOTICED Matthew Blair Clinton (See above for address) ATTORNEY TO BE NOTICED Maureen V. Abbey (See above for address) ATTORNEY TO BE NOTICED Richard Charles Weinblatt (See above for address) ATTORNEY TO BE NOTICED Date Filed # Docket Text 09/14/2012 1 COMPLAINT FOR PATENT INFRINGEMENT filed with Jury Demand against Jack Henry & Associates Inc. Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 03111139442.) filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Civil Cover Sheet)(els) (Entered: 09/17/2012) 09/14/2012 2 Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction (els) (Entered: 09/17/2012) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 23 of 51 PageID #: 48677 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 5/32 09/14/2012 3 Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 7,096,003B2;. (els) (Entered: 09/17/2012) 09/14/2012 4 Disclosure Statement pursuant to Rule 7.1 filed by Joao Bock Transaction Systems LLC. (els) (Entered: 09/17/2012) 09/17/2012 Summons Issued with Magistrate Consent Notice attached as to Jack Henry & Associates Inc. on 9/17/2012. Requesting party or attorney should pick up issued summons at the Help Desk, Room 4209, or call 3025736170 and ask the Clerk to mail the summons to them. (els) (Entered: 09/17/2012) 09/26/2012 Case Assigned to Judge Sue L. Robinson. Please include the initials of the Judge (SLR) after the case number on all documents filed. (rjb) (Entered: 09/26/2012) 11/14/2012 5 SUMMONS Returned Executed by Joao Bock Transaction Systems LLC. Jack Henry & Associates Inc. served on 11/12/2012, answer due 12/3/2012. (Stamoulis, Stamatios) (Entered: 11/14/2012) 12/03/2012 6 ANSWER to 1 Complaint, with Jury Demand , COUNTERCLAIM against All Plaintiffs by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 12/03/2012) 12/04/2012 7 Disclosure Statement pursuant to Rule 7.1 filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 12/04/2012) 12/05/2012 8 MOTION for Pro Hac Vice Appearance of Attorney Russell S. Jones, Jr., Esq. and Joshua M. McCaig, Esq. filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 12/05/2012) 12/06/2012 SO ORDERED, re 8 MOTION for Pro Hac Vice Appearance of Attorney Russell S. Jones, Jr., Esq. and Joshua M. McCaig, Esq. filed by Jack Henry & Associates Inc.. Signed by Judge Sue L. Robinson on 12/6/2012. (fms) (Entered: 12/06/2012) 12/10/2012 9 Order Setting Telephonic Scheduling Conference: A Scheduling Conference is set for 1/14/2013 at 04:30 PM before Judge Sue L. Robinson. Signed by Judge Sue L. Robinson on 12/10/2012. (nmfn) (Entered: 12/10/2012) 12/11/2012 10 MOTION for Pro Hac Vice Appearance of Attorney Richard P. Stitt, Esq. filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 12/11/2012) 12/11/2012 SO ORDERED, re 10 MOTION for Pro Hac Vice Appearance of Attorney Richard P. Stitt, Esq. filed by Jack Henry & Associates Inc. Signed by Judge Sue L. Robinson on 12/11/2012. (fms) (Entered: 12/11/2012) 12/12/2012 Pro Hac Vice Attorney Joshua M. McCaig for Jack Henry & Associates Inc. added for electronic noticing. (dmp, ) (Entered: 12/12/2012) 12/27/2012 11 MOTION to Dismiss for Failure to State a Claim and to Strike Pursuant to FRCP 12(f) filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Text of Proposed Order) (Stamoulis, Stamatios) (Entered: 12/27/2012) 12/27/2012 12 OPENING BRIEF in Support re 11 MOTION to Dismiss for Failure to State a Claim and to Strike Pursuant to FRCP 12(f) filed by Joao Bock Transaction Systems LLC.Answering Brief/Response due date per Local Rules is 1/14/2013. (Stamoulis, Stamatios) (Entered: 12/27/2012) 12/28/2012 Pro Hac Vice Attorney Richard P. Stitt for Jack Henry & Associates Inc. added for electronic noticing. (dmp, ) (Entered: 12/28/2012) 01/02/2013 Pro Hac Vice Attorney Russell S. Jones, Jr for Jack Henry & Associates Inc. added for electronic noticing. (rbe) (Entered: 01/02/2013) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 24 of 51 PageID #: 48678 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 6/32 01/11/2013 13 Joint PROPOSED ORDER Regarding Case Scheduling re 9 Order Setting Scheduling Conference by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 01/11/2013) 01/14/2013 14 RESPONSE to Motion re 11 MOTION to Dismiss for Failure to State a Claim and to Strike Pursuant to FRCP 12(f) filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 01/14/2013) 01/15/2013 15 NOTICE OF SERVICE of Defendant's Rule 26(a)(1) Initial Disclosures by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 01/15/2013) 01/22/2013 16 MOTION for Pro Hac Vice Appearance of Attorney Blair Clinton, Joseph Gabaeff, Jonathan Miller, Steven Ritcheson, Maureen Abbey, and Jacqueline Burt filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Main Document 16 replaced on 1/28/2013) (nmfn, ). (Entered: 01/22/2013) 01/23/2013 SO ORDERED, re 16 MOTION for Pro Hac Vice Appearance of Attorney Blair Clinton, Joseph Gabaeff, Jonathan Miller, Steven Ritcheson, Maureen Abbey, and Jacqueline Burt filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 1/23/2013. (fms) (Entered: 01/23/2013) 01/24/2013 17 REPLY BRIEF re 11 MOTION to Dismiss for Failure to State a Claim and to Strike Pursuant to FRCP 12(f) filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 01/24/2013) 01/24/2013 18 DECLARATION re 17 Reply Brief of Jonathan R. Miller by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 01/24/2013) 01/25/2013 Pro Hac Vice Attorney Jonathan R. Miller for Joao Bock Transaction Systems LLC added for electronic noticing. (rbe) (Entered: 01/25/2013) 01/28/2013 CORRECTING ENTRY: The pdf of D.I. 16 has been replaced with a corrected version per request of counsel. (nmfn) (Entered: 01/28/2013) 01/28/2013 Pro Hac Vice Attorney Matthew Blair Clinton,Joseph C. Gabaeff for Joao Bock Transaction Systems LLC added for electronic noticing. (rbe) (Entered: 01/28/2013) 01/30/2013 Pro Hac Vice Attorney Jacqueline K. Burt for Joao Bock Transaction Systems LLC added for electronic noticing. (dmp, ) (Entered: 01/30/2013) 02/05/2013 19 Joint PROPOSED ORDER Case Scheduling re 9 Order Setting Scheduling Conference by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 02/06/2013) 02/07/2013 SO ORDERED re 19 SCHEDULING ORDER: Case referred to the Magistrate Judge for the purpose of exploring ADR. Joinder of Parties due by 10/7/2013. Amended Pleadings due by 10/7/2013. Discovery due by 5/15/2014. A Discovery Conference is set for 9/10/2013 at 04:30 PM in Courtroom 4B before Judge Sue L. Robinson. Dispositive Motions due by 4/28/2014. An Oral Argument is set for 10/24/2014 at 09:30 AM in Courtroom 4B before Judge Sue L. Robinson. Claim Construction Opening Brief due by 2/3/2014. Claim Construction Answering Brief due by 3/3/2014. Claim Construction Reply Brief due by 3/17/2014. Claim Construction Surreply Brief due by 3/24/2014. A Final Pretrial Conference is set for 12/18/2014 at 04:00 PM in Courtroom 4B before Judge Sue L. Robinson. A Jury Trial is set for 1/5/2015 at 09:30 AM in Courtroom 4B before Judge Sue L. Robinson. Signed by Judge Sue L. Robinson on 2/7/2013. (nmfn) (Entered: 02/07/2013) 02/07/2013 Set Hearings: A Discovery Conference is set for 9/10/2013 at 04:30 PM in Courtroom 2A before Judge Sue L. Robinson. (nmfn) (Entered: 09/05/2013) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 25 of 51 PageID #: 48679 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 7/32 02/08/2013 CASE REFERRED to Judge Fallon for Mediation. (lih) (Entered: 02/08/2013) 02/08/2013 20 ORDER Setting Teleconference: Plaintiff's counsel shall initiate the call. A Telephone Conference is set for 6/4/2013 at 03:30 PM before Judge Sherry R. Fallon to discuss ADR. Signed by Judge Sherry R. Fallon on 2/8/2013. (lih) (Entered: 02/08/2013) 02/12/2013 21 MOTION for Leave to File Amended Counterclaim filed by Jack Henry & Associates Inc.. (Attachments: # 1 Proposed First Amended Counterclaim, # 2 Text of Proposed Order, # 3 Certificate of Service)(Katona, Shanti) (Entered: 02/12/2013) 02/12/2013 22 MEMORANDUM in Support re 21 MOTION for Leave to File Amended Counterclaim filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 3/1/2013. (Katona, Shanti) (Entered: 02/12/2013) 02/13/2013 LOCAL RULE 7.1.1 NOTICE: In accordance with Local Rule 7.1.1, except for civil cases involving pro se parties or motions brought by nonparties, every nondispositive motion shall be accompanied by an averment of counsel for the moving party that a reasonable effort has been made to reach agreement with the opposing party on the matters set forth in the motion. Unless otherwise ordered, failure to so aver may result in dismissal of the motion. The records of this case do not reflect such an averment by counsel for DI # 21 . (fms) (Entered: 02/13/2013) 02/18/2013 23 STATEMENT re 21 MOTION for Leave to File Amended Counterclaim Pursuant to Local Rule 7.1.1 by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 02/18/2013) 02/26/2013 Pro Hac Vice Attorney Maureen V. Abbey for Joao Bock Transaction Systems LLC added for electronic noticing. (dmp, ) (Entered: 02/26/2013) 03/01/2013 24 ANSWERING BRIEF in Opposition re 21 MOTION for Leave to File Amended Counterclaim filed by Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 3/11/2013. (Stamoulis, Stamatios) (Entered: 03/01/2013) 04/10/2013 25 NOTICE OF SERVICE of Documents Pursuant to Paragraph 4(b) of the Default Standard for Discovery by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/10/2013) 04/13/2013 26 NOTICE OF SERVICE of Plaintiffs First Sets of Interrogatories and Requests for Production to Defendant by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 04/13/2013) 04/15/2013 27 NOTICE OF SERVICE of Defendant Jack Henry & Associates, Inc.'s First Set of Interrogatories to Plaintiff Joao Bock Transaction Systems, LLC by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/15/2013) 04/16/2013 28 NOTICE OF SERVICE of Defendant Jack Henry & Associates, Inc.'s Answers and Objections to Plaintiff's First Set of Interrogatories to Defendant Jack Henry & Associates, Inc. and Response to Plaintiff's First Set of Requests for Production of Documents and Things from Defendant Jack Henry & Associates, Inc. by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/16/2013) 06/11/2013 29 NOTICE OF SERVICE of Initial Invalidity Contentions by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 06/11/2013) 06/13/2013 30 MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 6/13/2013. (nmfn) (Entered: 06/13/2013) 06/13/2013 31 ORDER denying 11 Motion to Dismiss ; granting 21 Motion for Leave to File Amended Counterclaim. Signed by Judge Sue L. Robinson on 6/13/2013. (nmfn) (Entered: Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 26 of 51 PageID #: 48680 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 8/32 06/13/2013) 06/13/2013 32 ANSWER to 1 Complaint, with Jury Demand, FIRST AMENDED COUNTERCLAIM against Joao Bock Transaction Systems LLC by Jack Henry & Associates Inc.(nmfn) (Entered: 06/13/2013) 06/27/2013 33 ANSWER to 32 Answer to Complaint, Counterclaim by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 06/27/2013) 07/10/2013 34 NOTICE OF SERVICE of Defendant's First Request for Production of Documents by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 07/10/2013) 07/24/2013 35 NOTICE OF SERVICE of Additional Core Technical Documents by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 07/24/2013) 07/24/2013 36 NOTICE OF SERVICE of Answers to Plaintiffs Second Interrogatories and Invalidity Claim Charts by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 07/24/2013) 07/30/2013 37 ORDER, ReSetting Hearings( The Final Pretrial Conference is reset for 12/17/2014 at 04:30 PM in Courtroom 4B before Judge Sue L. Robinson.). Signed by Judge Sue L. Robinson on 7/29/2013. (nmfn) (Entered: 07/30/2013) 08/07/2013 38 NOTICE OF SERVICE of Additional Set of Core Technical Documents by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 08/07/2013) 08/13/2013 Set Hearings: A Discovery Conference is set for 8/27/2013 at 02:00 PM in Courtroom 2A before Judge Sue L. Robinson. (nmfn) (Entered: 08/13/2013) 08/16/2013 39 NOTICE OF SERVICE of Additional Documents Responsive to Plaintiffs Document Requests by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 08/16/2013) 08/23/2013 The 8/27/2013 discovery conference is cancelled per joint request of counsel. (nmfn) (Entered: 08/23/2013) 08/23/2013 40 NOTICE OF SERVICE of Supplemental Document Production by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 08/23/2013) 08/23/2013 41 NOTICE OF SERVICE of Supplemental Document Production by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 08/23/2013) 09/10/2013 Minute Entry for proceedings held before Judge Sue L. Robinson Discovery Conference held on 9/10/2013. (Court Reporter V. Gunning.) (nmfn) (Entered: 09/11/2013) 09/10/2013 Set Hearings: A Discovery Conference is set for 12/9/2013 at 04:30 PM in Courtroom 2A before Judge Sue L. Robinson. (Set in court 9/10/2013) (nmfn) (Entered: 09/11/2013) 09/12/2013 42 NOTICE OF SERVICE of Supplemental Rule 26(a) Disclosures by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 09/12/2013) 09/12/2013 43 NOTICE OF SERVICE of Additional Set of Documents Responsive to Plaintiffs Document Requests, Bates Numbers JHADE00004813000001 thru JHADE 00006857000002 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 09/12/2013) 09/17/2013 44 NOTICE OF SERVICE of Additional Set of Documents Responsive to Plaintiff's Document Requests, Bates Numbers JHADE00006858000001 thru JHADE 00006950000036 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 09/17/2013) 10/23/2013 45 NOTICE OF SERVICE of Additional Set of Documents Responsive to Plaintiff's Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 27 of 51 PageID #: 48681 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 9/32 Document Requests, Bates Numbers JHADE00006951000001 thru JHADE 00007668000004 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 10/23/2013) 10/24/2013 46 Joint MOTION for Protective Order filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 10/24/2013) 10/29/2013 SO ORDERED, re 46 Joint MOTION for Protective Order filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 10/29/2013. (fms) (Entered: 10/29/2013) 11/11/2013 47 NOTICE OF SERVICE of Additional Set of Documents Responsive to Plaintiff's Document Requests, Bates Numbers JHADE00007669000001 thru JHADE 00013940000001 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 11/11/2013) 11/15/2013 48 NOTICE OF SERVICE of Additional Set of Documents Responsive to Plaintiffs Document Requests, Bates Numbers JHADE00013941000001 through JHADE 00017294000001 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 11/15/2013) 11/22/2013 49 NOTICE OF SERVICE of Additional Set of Documents Responsive to Plaintiff's Document Requests, Bates Numbers JHADE00017295000001 through JHADE 00019366000001 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 11/22/2013) 11/27/2013 50 NOTICE OF SERVICE of Additional Set of Documents Produced Responsive to Plaintiff's Document Requests, Bates Numbers JHADE00019367000001 through JHA DE00024558000002 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 11/27/2013) 12/04/2013 51 NOTICE OF SERVICE of Additional Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00024559000001 through JHADE 00032332000002 by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 12/04/2013) 12/09/2013 Today's 4:30 p.m. inperson discovery conference has been postponed per request of counsel. It will be rescheduled shortly. (nmfn) (Entered: 12/09/2013) 12/09/2013 Reset Hearings: The Discovery Conference is rescheduled per request of counsel for 1/6/2014 at 11:00 AM in Courtroom 2A before Judge Sue L. Robinson. (nmfn) (Entered: 12/09/2013) 12/18/2013 52 NOTICE OF SERVICE of Additional Documents in Response to Plaintiff's Document Requests, Bates Numbers JHADE00032333000001 through JHADE00032476 000007 and JHADE00032477000001 through JHADE00032622000001 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 12/18/2013) 12/23/2013 53 NOTICE OF SERVICE of Additional Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00032623000001 through JHADE 00035230000009 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 12/23/2013) 01/06/2014 54 NOTICE OF SERVICE of Additional Documents in Response to Plaintiff's Document Requests, Bates Numbers JHADE00035231000001 through JHADE00040299 000001 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 01/06/2014) 01/06/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Discovery Conference held on 1/6/2014. (Court Reporter Hawkins Reporting (302)6586697.) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 28 of 51 PageID #: 48682 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 10/32 (nmfn) (Entered: 01/06/2014) 01/07/2014 Set/Reset Hearings: A Telephone Conference is set for 1/29/2014 at 04:30 PM before Judge Sue L. Robinson. (nmfn) (Entered: 01/07/2014) 01/15/2014 55 NOTICE OF SERVICE of Additional Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00040300000001 through JHADE 00040370000001 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 01/15/2014) 01/23/2014 56 NOTICE OF SERVICE of PLAINTIFF'S REQUEST FOR ADMISSIONS TO DEFENDANT and PLAINTIFF'S PROPOSAL FOR REPRESENTATIVE PRODUCTS filed by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 01/23/2014) 01/24/2014 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 01/24/2014) 01/24/2014 58 DECLARATION re 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16)(Katona, Shanti) (Entered: 01/24/2014) 01/24/2014 59 OPENING BRIEF in Support re 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 2/10/2014. (Katona, Shanti) (Entered: 01/24/2014) 01/26/2014 60 Joint STIPULATION SETTING BRIEFING SCHEDULE REGARDING COLLATERAL ESTOPPEL ARGUMENTS by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 01/26/2014) 01/27/2014 61 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding delivery of disk containing electronic, text searchable copies of pleadings electronically filed with the Court on Friday, January 24, 2014, by Defendant Jack Henry & Associates, Inc. re 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel, 59 Opening Brief in Support, 58 Declaration,. (Katona, Shanti) (Entered: 01/27/2014) 01/27/2014 62 Letter to the Honorable Sue L. Robinson from Stamatios Stamoulis regarding Representative Product Proposal. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 01/27/2014) 01/28/2014 SO ORDERED, re 60 Joint Stipulation Setting Briefing Schedule Regarding Collateral Estoppel Arguments. Signed by Judge Sue L. Robinson on 1/28/2014. (nmfn) (Entered: 01/28/2014) 01/28/2014 63 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding Defendant's Response to Plaintiff's Representative Product Proposal re 62 Letter. (Katona, Shanti) (Entered: 01/28/2014) 01/29/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Telephone Conference held on 1/29/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 01/30/2014) 01/29/2014 Set/Reset Hearings: A Telephone Conference is set for 2/21/2014 at 02:00 PM before Judge Sue L. Robinson. (Set during teleconference on 1/29/14) (nmfn) (Entered: 01/30/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 29 of 51 PageID #: 48683 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 11/32 02/06/2014 64 NOTICE OF SERVICE of Objections and Responses to Plaintiff's First Set of Requests for Admissions filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 02/06/2014) 02/10/2014 65 NOTICE OF SERVICE of Additional Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00040371000001 through JHADE 00040408000019 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 02/10/2014) 02/14/2014 66 NOTICE to Take Deposition of Robert Richard Bock on February 26, 2014 at 9:00 a.m. (ET) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 02/14/2014) 02/14/2014 67 NOTICE to Take Deposition of Raymond Anthony Joao on February 25, 2014 at 9:30 a.m. (ET) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 02/14/2014) 02/14/2014 68 NOTICE to Take Deposition of Plaintiff Joao Bock Transaction Systems, LLC on February 26, 2014 at 10:00 a.m. (ET) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 02/14/2014) 02/21/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Telephone Conference held on 2/21/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 02/21/2014) 02/21/2014 Set Hearings: A Telephone Conference is set for 3/13/2014 at 02:00 PM before Judge Sue L. Robinson (nmfn) (Entered: 02/21/2014) 02/25/2014 69 [SEALED] Cross MOTION for Summary Judgment of No Colllateral Estoppel filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 02/25/2014) 02/25/2014 70 [SEALED] SEALED OPENING BRIEF in Support re 69 Cross MOTION for Summary Judgment of No Colllateral Estoppel filed by Joao Bock Transaction Systems LLC.Answering Brief/Response due date per Local Rules is 3/14/2014. (Stamoulis, Stamatios) (Entered: 02/25/2014) 02/25/2014 71 [SEALED] SEALED DECLARATION re 70 Opening Brief in Support, 69 Cross MOTION for Summary Judgment of No Colllateral Estoppel [CONFIDENTIAL DECLARATION OF STEVEN W. RITCHESON IN SUPPORT OF PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS LLC'S CROSSMOTION FOR SUMMARY JUDGMENT OF NO COLLATERAL ESTOPPEL] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit AG)(Stamoulis, Stamatios) (Entered: 02/25/2014) 02/25/2014 72 ANSWERING BRIEF in Opposition re 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel filed by Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 3/7/2014. (Stamoulis, Stamatios) (Entered: 02/26/2014) 02/26/2014 73 DECLARATION re 72 Answering Brief in Opposition [DECLARATION OF JONATHAN R. MILLER IN SUPPORT OF PLAINTIFF'S OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES, INC.'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY BASED ON COLLATERAL ESTOPPEL] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C) (Stamoulis, Stamatios) (Entered: 02/26/2014) 02/26/2014 74 DECLARATION re 72 Answering Brief in Opposition, 70 Opening Brief in Support, 69 Cross MOTION for Summary Judgment of No Colllateral Estoppel [EXPERT DECLARATION OF IVAN ZATKOVICH IN SUPPORT OF PLAINTIFF'S OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES, INC.'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY BASED ON COLLATERAL ESTOPPEL AND IN Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 30 of 51 PageID #: 48684 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 12/32 FURTHER SUPPORT OF PLAINTIFF'S CROSSMOTION FOR SUMMARY JUDGMENT OF NO COLLATERAL ESTOPPEL] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A M, # 2 Exhibit N Q, # 3 Exhibit R S, # 4 Exhibit T, # 5 Exhibit U BB)(Stamoulis, Stamatios) (Entered: 02/26/2014) 03/07/2014 75 NOTICE OF SERVICE of Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00040409000001 through JHADE00041603 000001 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 03/07/2014) 03/11/2014 76 NOTICE to Take Deposition of Robert Richard Bock on March 18, 2014 at 9:00 a.m. (ET) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 03/11/2014) 03/11/2014 77 NOTICE to Take Deposition of Raymond Anthony Joao on March 17, 2014 at 9:30 a.m. (ET) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 03/11/2014) 03/11/2014 78 NOTICE to Take Deposition of Joao Bock Transaction Systems, LLC on March 18, 2014 at 10:00 a.m. (ET) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 03/11/2014) 03/12/2014 79 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding Supplemental Case Law Provided Pursuant to February 21, 2014 Telephone Conference. (Katona, Shanti) (Entered: 03/12/2014) 03/12/2014 REDACTION NOTICE: In accordance with section G of the Administrative Procedures Governing Filing and Service by Electronic Means, redacted versions of sealed documents shall be filed electronically within 7 days of the filing of the sealed document. The records of this case do not reflect the filing of a redacted version of DI Nos. 69, 70, 71. (fms) (Entered: 03/12/2014) 03/12/2014 80 Letter to the Honorable Sue L. Robinson from Steven W. Ritcheson regarding Representative Product Case Cites. (Stamoulis, Stamatios) (Entered: 03/12/2014) 03/13/2014 81 NOTICE OF SERVICE of Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00041604000001 through JHADE00066126 000001 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 03/13/2014) 03/13/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Telephone Conference held on 3/13/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 03/13/2014) 03/14/2014 82 REDACTED VERSION of 70 Opening Brief in Support, OF ITS CROSSMOTION FOR SUMMARY JUDGMENT OF NO COLLATERAL ESTOPPEL by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 03/14/2014) 03/14/2014 83 REDACTED VERSION of 71 Declaration, OF STEVEN W. RITCHESON IN SUPPORT OF PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS LLC'S CROSSMOTION FOR SUMMARY JUDGMENT OF NO COLLATERAL ESTOPPEL by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 03/14/2014) 03/17/2014 84 Joint STIPULATION TO EXTEND TIME Briefing Schedule Regarding Collateral Estoppel Arguments to March 21, 2014 for Defendant and April 3, 2014 for Plaintiff filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 03/17/2014) 03/18/2014 SO ORDERED, re 84 Joint STIPULATION TO EXTEND TIME Briefing Schedule Regarding Collateral Estoppel Arguments to March 21, 2014 for Defendant and April 3, 2014 for Plaintiff filed by Jack Henry & Associates Inc.. Signed by Judge Sue L. Robinson on 3/18/2014. (fms) (Entered: 03/18/2014) 03/19/2014 85 NOTICE OF SERVICE of Second Supplemental Rule 26 Disclosures and Additional Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 31 of 51 PageID #: 48685 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 13/32 Documents Produced in Response to Plaintiff's Document Requests filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 03/19/2014) 03/21/2014 86 BRIEF (Combined Answering and Reply) re 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel, 69 Cross MOTION for Summary Judgment of No Colllateral Estoppel filed by Jack Henry & Associates Inc..Reply Brief due date per Local Rules is 3/31/2014. (Katona, Shanti) (Entered: 03/21/2014) 03/21/2014 87 DECLARATION re 86 Brief (Combined Answering and Reply), by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H)(Katona, Shanti) (Entered: 03/21/2014) 03/31/2014 88 Letter to The Honorable Sue L. Robinson from Stamatios Stamoulis regarding Joint Proposed Revised Case Schedule. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 03/31/2014) 04/03/2014 89 REPLY BRIEF re 69 Cross MOTION for Summary Judgment of No Colllateral Estoppel filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 04/03/2014) 04/03/2014 90 DECLARATION re 89 Reply Brief of MAUREEN V. ABBEY by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1)(Stamoulis, Stamatios) (Entered: 04/03/2014) 04/14/2014 91 NOTICE OF SERVICE of Additional Set of Electronic Documents in Response to Plaintiff's Document Requests, Produced as Bates Number JHADE00066188000001 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/14/2014) 04/14/2014 92 NOTICE OF SERVICE of Responses and Objections to Plaintiff's First Amended Rule 30(b)(6) Deposition Notice filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/14/2014) 04/14/2014 93 (THIS HAS BEEN CORRECTED SEE D.I. 122 ) Joint STATEMENT [JOINT CLAIM CONSTRUCTION STATEMENT] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A Joint Claim Construction Chart)(Stamoulis, Stamatios) Modified on 6/9/2014 (fms). (Entered: 04/14/2014) 04/17/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Telephone Conference held on 4/17/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 04/17/2014) 04/21/2014 94 NOTICE to Take Deposition of Sam Tuohey on April 29, 2014 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/21/2014) 04/21/2014 95 AMENDED DOCUMENT by Jack Henry & Associates Inc.. Amendment to 94 Notice to Take Deposition of Sam Tuhoey on May 8, 2014. (Katona, Shanti) (Entered: 04/21/2014) 04/23/2014 96 NOTICE OF SERVICE of Additional Set of Documents Produced in Response to Plaintiffs Document Requests, Bates Numbers JHADE00070028000001 through JHA DE00070031000090 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/23/2014) 04/23/2014 97 NOTICE OF SERVICE of Additional Set of Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00070032000001 through JHA DE00070047000054 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/23/2014) 04/23/2014 98 NOTICE OF SERVICE of Additional Set of Documents Produced in Response to Plaintiff's Document Requests, Bates Numbers JHADE00070048000001 through JHA Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 32 of 51 PageID #: 48686 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 14/32 DE00070059000002 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/23/2014) 04/23/2014 99 Letter to The Honorable Sue L. Robinson from Stamatios Stamoulis regarding Joint Proposed Revised Case Schedule. (Attachments: # 1 Exhibit A Joint Proposed Revised Case Schedule)(Stamoulis, Stamatios) (Entered: 04/23/2014) 04/28/2014 100 CLAIM Construction Chart by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 04/28/2014) 04/28/2014 101 CLAIM CONSTRUCTION OPENING BRIEF filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 04/28/2014) 04/30/2014 102 NOTICE to Take Deposition of Jerry McCarley on May 1, 2014 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 04/30/2014) 05/05/2014 103 PROPOSED ORDER FIRST AMENDED RULE 16 ORDER re 88 Letter by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 05/05/2014) 05/06/2014 104 AMENDED SCHEDULING ORDER: Case referred to the Magistrate Judge for the purpose of exploring ADR. Discovery due by 9/22/2014. A Discovery Conference is set for 5/12/2014 at 04:30 PM in Courtroom 4B before Judge Sue L. Robinson. A Status Conference is set for 9/24/2014 at 04:30 PM in Courtroom 4B before Judge Sue L. Robinson Dispositive Motions due by 9/29/2014. An Oral Argument is set for 6/9/2014 at 03:30 PM in Courtroom 4B before Judge Sue L. Robinson. Claim Construction Opening Brief due by 4/28/2014. Claim Construction Answering Brief due by 5/12/2014. Claim Construction Reply Brief due by 5/19/2014. Claim Construction Surreply Brief due by 5/27/2014. A Status Conference is set for 7/23/2014 at 04:00 PM in Courtroom 4B before Judge Sue L. Robinson An Oral Argument is set for 10/31/2014 at 01:30 PM in Courtroom 4B before Judge Sue L. Robinson. A Final Pretrial Conference is set for 12/17/2014 at 04:30 PM in Courtroom 4B before Judge Sue L. Robinson. A Jury Trial is set for 1/5/2015 at 09:00 AM in Courtroom 4B before Judge Sue L. Robinson. Signed by Judge Sue L. Robinson on 5/6/2014. (nmfn) (Entered: 05/06/2014) 05/12/2014 The 5/12/2014 discovery conference has been postponed per request of counsel. It will be rescheduled shortly. (nmfn) (Entered: 05/12/2014) 05/12/2014 Pro Hac Vice Attorney Steven W. Ritcheson for Joao Bock Transaction Systems LLC added for electronic noticing. (dmp, ) (Entered: 05/12/2014) 05/12/2014 105 CLAIM CONSTRUCTION ANSWERING BRIEF re 101 Claim Construction Opening Brief filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 05/12/2014) 05/12/2014 106 DECLARATION re 105 Claim Construction Answering Brief Declaration of Richard Stitt in Support of Jack Henry & Associates, Inc.'s Answering Claim Construction Brief by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit H1, # 10 Exhibit H2, # 11 Exhibit H3, # 12 Exhibit I, # 13 Exhibit J, # 14 Exhibit K, # 15 Exhibit L, # 16 Exhibit M, # 17 Exhibit N, # 18 Exhibit O)(Katona, Shanti) (Entered: 05/12/2014) 05/19/2014 107 CLAIM CONSTRUCTION REPLY BRIEF re 101 Claim Construction Opening Brief filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Appendix)(Stamoulis, Stamatios) (Entered: 05/19/2014) 05/19/2014 108 DECLARATION re 107 Claim Construction Reply Brief of Richard J Apley by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 05/19/2014) 05/19/2014 109 DECLARATION re 107 Claim Construction Reply Brief of Alex Cheng by Joao Bock Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 33 of 51 PageID #: 48687 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 15/32 Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 05/19/2014) 05/19/2014 110 DECLARATION re 107 Claim Construction Reply Brief of Raymond A. Joao by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 05/19/2014) 05/19/2014 111 DECLARATION re 107 Claim Construction Reply Brief of Jonathan R. Miller by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1)(Stamoulis, Stamatios) (Entered: 05/19/2014) 05/27/2014 112 CLAIM CONSTRUCTION SURREPLY BRIEF re 107 Claim Construction Reply Brief filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 05/27/2014) 05/27/2014 113 DECLARATION re 112 Claim Construction Surreply Brief by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J) (Katona, Shanti) (Entered: 05/27/2014) 05/28/2014 Reset Hearings: The Oral Argument re: Claim Construction is rescheduled for 6/9/2014 at 02:30 PM in Courtroom 4B before Judge Sue L. Robinson. (nmfn) (Entered: 05/28/2014) 05/29/2014 114 Joint APPENDIX re 101 Claim Construction Opening Brief, 107 Claim Construction Reply Brief, 111 Declaration, 113 Declaration, 106 Declaration,, 109 Declaration, 112 Claim Construction Surreply Brief, 108 Declaration, 105 Claim Construction Answering Brief, 110 Declaration [JOINT APPENDIX TO CLAIM CONSTRUCTION BRIEFING] by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 05/29/2014) 05/29/2014 115 NOTICE of filing the following NonPaper material(s) in multi media format: CD CONTAINING DOCUMENTS REFERENCED IN CLAIM CONSTRUCTION BRIEFINGS AND REFERENCED IN JOINT APPENDIX (D.I. 114). Original Non paper material(s) to be filed with the Clerk's Office. Notice filed by Stamatios Stamoulis on behalf of Joao Bock Transaction Systems LLC (Stamoulis, Stamatios) (Entered: 05/29/2014) 05/29/2014 118 MULTI MEDIA DOCUMENT (Multimedia Materials In Support Of The Parties' Claim Construction Briefing) filed by Jack Henry & Associates Inc., Joao Bock Transaction Systems LLC in the form of a CD Rom. Filing related to 114 Appendix, 115 Notice of Filing Multi Media Materials,. (Media on file in Clerk's Office). (fms) (Entered: 06/02/2014) 05/30/2014 116 MOTION to Strike Reports of Richard J. Apley and Alex Cheng filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 05/30/2014) 05/30/2014 117 OPENING BRIEF in Support re 116 MOTION to Strike Reports of Richard J. Apley and Alex Cheng filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 6/16/2014. (Katona, Shanti) (Entered: 05/30/2014) 06/05/2014 119 Letter to Honorable Sue L. Robinson from Stamatios Stamoulis regarding recently decided opinion that may be relevant to June 9, 2014 claim construction hearing. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 06/05/2014) 06/05/2014 120 NOTICE of Supplemental Expert Declaration of Alex Cheng by Joao Bock Transaction Systems LLC re 109 Declaration (Attachments: # 1 Exhibit A Supplemental Declaration)(Stamoulis, Stamatios) (Entered: 06/05/2014) 06/06/2014 121 ANSWERING BRIEF in Opposition re 116 MOTION to Strike Reports of Richard J. Apley and Alex Cheng [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES, INC.'S MOTION TO STRIKE EXPERT REPORTS OF RICHARD J. APLEY AND ALEX CHENG] filed by Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 34 of 51 PageID #: 48688 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 16/32 Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 6/16/2014. (Stamoulis, Stamatios) (Entered: 06/06/2014) 06/06/2014 122 Amended STATEMENT re 93 Statement [CORRECTED JOINT CLAIM CONSTRUCTION STATEMENT] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A Corrected Joint Claim Construction Chart)(Stamoulis, Stamatios) (Entered: 06/06/2014) 06/09/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Markman Hearing held on 6/9/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 06/10/2014) 06/18/2014 123 NOTICE OF SERVICE of PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLCS FIRST SUPPLEMENTAL INITIAL DISCLOSURES PURSUANT TO THIS DISTRICT COURTS DEFAULT STANDARD DISCOVERY ORDER filed by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 06/18/2014) 06/30/2014 124 MEMORANDUM ORDER re claim construction. MEMORANDUM ORDER denying 57 MOTION for Summary Judgment of Invalidity Based on Collateral Estoppel, denying as moot 69 Cross MOTION for Summary Judgment of No Colllateral Estoppel, denying as moot 116 MOTION to Strike Reports of Richard J. Apley and Alex Cheng. Signed by Judge Sue L. Robinson on 6/30/2014. (nmfn) (Entered: 06/30/2014) 07/16/2014 Set Hearings: A Telephone Conference is set for 7/21/2014 at 03:00 PM before Judge Sue L. Robinson to be coordinated and initiated by defendant's counsel. (fms) (Entered: 07/16/2014) 07/17/2014 125 NOTICE OF SERVICE of Final Infringement Contentions filed by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 07/17/2014) 07/21/2014 CORRECTING ENTRY: The second notice of service filed on 7/17/2014 has been deleted per request of filer as it was a duplicate version of D.I. 125 . (nmfn) (Entered: 07/21/2014) 07/21/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Telephone Conference held on 7/21/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 07/21/2014) 07/21/2014 ORAL ORDER by Judge Sue L. Robinson during telephone conference on 7/21/2014 cancelling the 7/23/2014 status conference. (nmfn) (Entered: 07/21/2014) 07/22/2014 126 Letter to The Honorable Sue L. Robinson from Stamatios Stamoulis regarding Plaintiff's selection of asserted claims. (Stamoulis, Stamatios) (Entered: 07/22/2014) 07/22/2014 127 Letter to The Honorable Sue L. Robinson from Shanti M. Katona. (Katona, Shanti) (Entered: 07/22/2014) 07/30/2014 128 NOTICE OF SERVICE of Final NonInfringement Contention Claim Charts and Final Invalidity Contentions (with Corresponding Invalidity Claim Charts) filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 07/30/2014) 08/08/2014 129 Joint STIPULATION Resetting Expert Discovery Deadlines by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Main Document 129 replaced on 8/11/2014) (fms). (Entered: 08/08/2014) 08/11/2014 CORRECTING ENTRY: D.I. 129 has been removed and replaced with a version that contains a so ordered line. (fms) (Entered: 08/11/2014) 08/11/2014 SO ORDERED, re 129 Stipulation to Reset Certain Expert Discovery Deadlines filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 8/11/2014. (fms) (Entered: 08/11/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 35 of 51 PageID #: 48689 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 17/32 08/12/2014 130 MOTION for Pro Hac Vice Appearance of Attorney Joseph J. Gleason of the law firm HENINGER GARRISON DAVIS, LLC filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Certificate of Compliance, # 2 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 08/12/2014) 08/13/2014 SO ORDERED, re 130 MOTION for Pro Hac Vice Appearance of Attorney Joseph J. Gleason of the law firm HENINGER GARRISON DAVIS, LLC filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 8/13/2014. (fms) (Entered: 08/13/2014) 08/13/2014 Pro Hac Vice Attorney Joseph J. Gleason for Joao Bock Transaction Systems LLC added for electronic noticing. (dmp, ) (Entered: 08/13/2014) 08/19/2014 131 NOTICE OF SERVICE of Expert Report on Infringement re 104 Scheduling Order,,,, filed by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 08/19/2014) 08/22/2014 132 NOTICE OF SERVICE of Expert Reports of John Fulton and Steven Kursh filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 08/22/2014) 09/02/2014 133 NOTICE to Take Deposition of Alex Cheng on September 4, 2014 filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 09/02/2014) 09/09/2014 134 NOTICE OF SERVICE of Subpoena and Notice of Subpoena filed by Jack Henry & Associates Inc..(Katona, Shanti) (Entered: 09/09/2014) 09/19/2014 135 MOTION for Pro Hac Vice Appearance of Attorney Jay E. Heidrick, Esquire of Polsinelli PC filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 09/19/2014) 09/22/2014 SO ORDERED, re 135 MOTION for Pro Hac Vice Appearance of Attorney Jay E. Heidrick, Esquire of Polsinelli PC filed by Jack Henry & Associates Inc.. Signed by Judge Sue L. Robinson on 9/22/2014. (fms) (Entered: 09/22/2014) 09/24/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Status Conference re: Expert Discovery held on 9/24/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 09/25/2014) 09/25/2014 136 ORDER that defendant shall be permitted to supplement its rebuttal expert report on infringement. ORDER Setting Teleconference: Counsel for defendant to initiate the call.( A Telephone Conference is set for 10/1/2014 at 03:00 PM before Judge Sue L. Robinson). See order for further details. Signed by Judge Sue L. Robinson on 9/25/2014. (nmfn) (Entered: 09/25/2014) 09/26/2014 137 Joint STIPULATION Amending Briefing Schedule Regarding Summary Judgment Motions re 104 Scheduling Order,,,, by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 09/26/2014) 09/29/2014 138 MOTION for Summary Judgment of Invalidity filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 09/29/2014) 09/29/2014 139 OPENING BRIEF in Support re 138 MOTION for Summary Judgment of Invalidity filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 10/17/2014. (Katona, Shanti) (Entered: 09/29/2014) 09/29/2014 140 DECLARATION re 139 Opening Brief in Support, 138 MOTION for Summary Judgment of Invalidity by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 36 of 51 PageID #: 48690 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 18/32 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19)(Katona, Shanti) (Attachment 12 replaced on 10/1/2014) (fms). (Entered: 09/29/2014) 09/29/2014 141 [SEALED] EXHIBIT re 140 Declaration,, (Exhibits 17 and 19) by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 19, # 2 Certificate of Service)(Katona, Shanti) (Entered: 09/29/2014) 09/29/2014 142 MOTION for Partial Summary Judgment of No Invalidity filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 09/29/2014) 09/29/2014 143 [SEALED] OPENING BRIEF in Support re 142 MOTION for Partial Summary Judgment of No Invalidity filed by Joao Bock Transaction Systems LLC.Answering Brief/Response due date per Local Rules is 10/17/2014. (Stamoulis, Stamatios) (Entered: 09/29/2014) 09/29/2014 144 [SEALED] APPENDIX re 143 Opening Brief in Support, by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit Pages 1100, # 2 Exhibit Pages 101150, # 3 Exhibit Pages 150200, # 4 Exhibit Pages 201450, # 5 Exhibit Pages 451688) (Stamoulis, Stamatios) (Entered: 09/29/2014) 09/30/2014 SO ORDERED, re 137 Stipulation Amending Briefing Schedule Regarding Summary Judgment Motions filed by Jack Henry & Associates Inc. Signed by Judge Sue L. Robinson on 9/30/2014. (fms) (Entered: 09/30/2014) 10/01/2014 145 Letter to The Honorable Sue L. Robinson from Shanti M. Katona regarding disc containing electronic, text searchable copies of the following items electronically filed with the Court on Monday, September 29, 2014, by Defendant Jack Henry & Associates, Inc. re 139 Opening Brief in Support, 138 MOTION for Summary Judgment of Invalidity, 140 Declaration,,. (Katona, Shanti) (Entered: 10/01/2014) 10/01/2014 CORRECTING ENTRY: Exhibit 12 to D.I. 140 has been removed and replaced. The revised version is signed. (fms) (Entered: 10/01/2014) 10/01/2014 The teleconference originally set for 10/1/2014 at 3:00 p.m. is cancelled per phone call from counsel. (nmfn) (Entered: 10/01/2014) 10/11/2014 146 MOTION for Summary Judgment on NonInfringement filed by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/11/2014) 10/11/2014 147 [SEALED] OPENING BRIEF in Support re 146 MOTION for Summary Judgment on NonInfringement of U.S. Patent 7,096,003 filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 10/30/2014. (Katona, Shanti) (Entered: 10/11/2014) 10/11/2014 148 [SEALED] AFFIDAVIT of Jay E. Heidrick re 146 MOTION for Summary Judgment on NonInfringement, 147 Opening Brief in Support, of Summary Judgment on Non Infringement of U.S. Patent 7,096,003 filed by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17)(Katona, Shanti) (Entered: 10/11/2014) 10/11/2014 149 MOTION for Partial Summary Judgment of Infringement filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 10/11/2014) 10/11/2014 150 [SEALED] OPENING BRIEF in Support re 149 MOTION for Partial Summary Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 37 of 51 PageID #: 48691 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 19/32 Judgment of Infringement filed by Joao Bock Transaction Systems LLC.Answering Brief/Response due date per Local Rules is 10/30/2014. (Stamoulis, Stamatios) (Entered: 10/11/2014) 10/11/2014 151 THIS HAS BEEN AMENDED SEE D.I. 211 [SEALED] APPENDIX re 150 Opening Brief in Support by Joao Bock Transaction Systems LLC. (Attachments: # 1 Appendix 10011065, # 2 Appendix 10661495 pt 1, # 3 Appendix 10661495 pt 2, # 4 Appendix 10661495 pt 3, # 5 Appendix 10661495 pt 4, # 6 Appendix 10661495 pt 5, # 7 Appendix 14961512, # 8 Appendix 15131656 pt 1, # 9 Appendix 15131656 pt 2, # 10 Appendix 15131656 pt 3, # 11 Appendix 16571692, # 12 Appendix 16931809 pt 1, # 13 Appendix 16931809 pt 2, # 14 Appendix 16931809 pt 3, # 15 Appendix 16931809 pt 4, # 16 Appendix 18101894 pt 1, # 17 Appendix 18101894 pt 2, # 18 Appendix 18101894 pt 3, # 19 Appendix 18101894 pt 4, # 20 Appendix 18951985 pt 1, # 21 Appendix 18951985 pt 2, # 22 Appendix 18951985 pt 3, # 23 Appendix 18951985 pt 4, # 24 Appendix 19861995, # 25 Appendix 18101895 pt 5)(Stamoulis, Stamatios) Modified on 11/4/2014 (nmfn). (Entered: 10/11/2014) 10/13/2014 152 MOTION to Strike New Infringement Theories and Product Functionality filed by Jack Henry & Associates Inc.. (Attachments: # 1 Text of Proposed Order)(Katona, Shanti) (Entered: 10/13/2014) 10/13/2014 153 [SEALED] OPENING BRIEF in Support re 152 MOTION to Strike New Infringement Theories and Product Functionality filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 10/30/2014. (Katona, Shanti) (Entered: 10/13/2014) 10/13/2014 154 [SEALED] DECLARATION re 153 Opening Brief in Support, 152 MOTION to Strike New Infringement Theories and Product Functionality by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34)(Katona, Shanti) (Entered: 10/13/2014) 10/13/2014 155 [SEALED] ANSWERING BRIEF in Opposition re 142 MOTION for Partial Summary Judgment of No Invalidity filed by Jack Henry & Associates Inc..Reply Brief due date per Local Rules is 10/23/2014. (Katona, Shanti) (Entered: 10/13/2014) 10/13/2014 156 [SEALED] DECLARATION re 155 Answering Brief in Opposition to Joao Bock Transaction Systems, LLC's Motion for Partial Summary Judgment of No Invalidity by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F)(Katona, Shanti) (Entered: 10/13/2014) 10/13/2014 157 MOTION to Strike 138 MOTION for Summary Judgment of Invalidity filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 10/13/2014) 10/13/2014 158 [SEALED] APPENDIX re 157 MOTION to Strike 138 MOTION for Summary Judgment of Invalidity and Joao Bock Transaction Systems LLC's Opposition to DI 138 by Joao Bock Transaction Systems LLC. (Attachments: # 1 Appendix 20012007, # 2 Appendix 20082009, # 3 Appendix 20102017, # 4 Appendix 20182022, # 5 Appendix 20232034, # 6 Appendix 20352039, # 7 Appendix 20402041, # 8 Appendix 2042 2050, # 9 Appendix 20512060, # 10 Appendix 20612064, # 11 Appendix 20652068, # 12 Appendix 206923901, # 13 Appendix 206923902, # 14 Appendix 206923903, # 15 Appendix 206923904, # 16 Appendix 206923905, # 17 Appendix 23912404, # 18 Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 38 of 51 PageID #: 48692 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 20/32 Appendix 24052532, # 19 Appendix 25332607, # 20 Appendix 2608, # 21 Appendix 260926211, # 22 Appendix 260926212, # 23 Appendix 26222623, # 24 Appendix 26242648, # 25 Appendix 26492650)(Stamoulis, Stamatios) (Attachment 24 replaced on 10/28/2014) (nmfn, ). (Entered: 10/13/2014) 10/13/2014 159 [SEALED] BRIEF (Combined Opening and Answering) re 157 MOTION to Strike 138 MOTION for Summary Judgment of Invalidity , 138 MOTION for Summary Judgment of Invalidity filed by Joao Bock Transaction Systems LLC.Answering Brief/Response due date per Local Rules is 10/30/2014. Reply Brief due date per Local Rules is 10/23/2014. (Stamoulis, Stamatios) (Entered: 10/14/2014) 10/14/2014 160 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding delivery of disc containing electronic, text searchable copies of items electronically filed with the Court re 146 MOTION for Summary Judgment on NonInfringement, 147 Opening Brief in Support, 148 Affidavit,,. (Katona, Shanti) (Entered: 10/14/2014) 10/14/2014 161 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding delivery of discs containing electronic, text searchable copies of the items electronically filed with the Court re 155 Answering Brief in Opposition, 154 Declaration,,, 153 Opening Brief in Support, 156 Declaration, 152 MOTION to Strike New Infringement Theories and Product Functionality. (Katona, Shanti) (Entered: 10/14/2014) 10/16/2014 REDACTION NOTICE: In accordance with section G of the Administrative Procedures Governing Filing and Service by Electronic Means, redacted versions of sealed documents shall be filed electronically within 7 days of the filing of the sealed document. The records of this case do not reflect the filing of a redacted version of DI # 141, 143 and 144. (fms) (Entered: 10/16/2014) 10/16/2014 162 REDACTED VERSION of 141 Exhibit to a Document by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/16/2014) 10/17/2014 163 MOTION for Pro Hac Vice Appearance of Attorney TIMOTHY C. DAVIS of the law firm HENINGER GARRISON DAVIS, LLC filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 10/17/2014) 10/17/2014 164 REDACTED VERSION of 147 Opening Brief in Support, by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/17/2014) 10/17/2014 165 REDACTED VERSION of 148 Affidavit,, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17)(Katona, Shanti) (Entered: 10/17/2014) 10/17/2014 166 REDACTED VERSION of 143 Opening Brief in Support, [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPENING BRIEF IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY] by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 10/17/2014) 10/17/2014 167 REDACTED VERSION of 144 Appendix, by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit Pages 1100, # 2 Exhibit Pages 101150, # 3 Exhibit Pages 151200, # 4 Exhibit Pages 201450, # 5 Exhibit Pages 451688)(Stamoulis, Stamatios) (Entered: 10/17/2014) 10/20/2014 SO ORDERED, re 163 MOTION for Pro Hac Vice Appearance of Attorney TIMOTHY C. DAVIS of the law firm HENINGER GARRISON DAVIS, LLC filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 10/20/2014. (fms) (Entered: 10/20/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 39 of 51 PageID #: 48693 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 21/32 10/20/2014 168 REPLY BRIEF re 142 MOTION for Partial Summary Judgment of No Invalidity filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 10/20/2014) 10/20/2014 169 [SEALED] ANSWERING BRIEF in Opposition re 149 MOTION for Partial Summary Judgment of Infringement filed by Jack Henry & Associates Inc..Reply Brief due date per Local Rules is 10/30/2014. (Katona, Shanti) Modified on 10/21/2014 (fms). (Entered: 10/20/2014) 10/20/2014 170 DECLARATION re 168 Reply Brief of Jonathan Miller by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Stamoulis, Stamatios) (Entered: 10/20/2014) 10/20/2014 171 [SEALED] AFFIDAVIT of Jay E. Heidrick re 169 Answering Brief in Opposition,, filed by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Katona, Shanti) (Entered: 10/20/2014) 10/20/2014 172 [SEALED] ANSWERING BRIEF in Opposition re 146 MOTION for Summary Judgment on NonInfringement filed by Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 10/30/2014. (Stamoulis, Stamatios) (Entered: 10/20/2014) 10/20/2014 173 [SEALED] REPLY BRIEF re 138 MOTION for Summary Judgment of Invalidity filed by Jack Henry & Associates Inc.. (Katona, Shanti) Modified on 10/21/2014 (fms). (Entered: 10/20/2014) 10/20/2014 174 [SEALED] DECLARATION re 173 Reply Brief by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F (part 1), # 7 Exhibit F (part 2), # 8 Exhibit F (part 3), # 9 Exhibit F (part 4), # 10 Exhibit F (part 5), # 11 Exhibit G, # 12 Exhibit H, # 13 Exhibit I, # 14 Exhibit J, # 15 Exhibit K, # 16 Exhibit N, # 17 Exhibit O, # 18 Exhibit P)(Katona, Shanti) (Entered: 10/20/2014) 10/20/2014 175 [SEALED] APPENDIX re 172 Answering Brief in Opposition of No Infringment by Joao Bock Transaction Systems LLC. (Attachments: # 1 Appendix 30013004, # 2 Appendix 30053013, # 3 Appendix 30143068, # 4 Appendix 30693121, # 5 Appendix 3122 3183, # 6 Appendix 31843243, # 7 Appendix 32443312, # 8 Appendix 33133383, # 9 Appendix 33843423, # 10 Appendix 34243434, # 11 Appendix 34353455, # 12 Appendix 34563519, # 13 Appendix 35203570, # 14 Appendix 35713638, # 15 Appendix 36393722, # 16 Appendix 37233726, # 17 Appendix 37273729, # 18 Appendix 37303733, # 19 Appendix 37343740, # 20 Appendix 37413746, # 21 Appendix 37473749, # 22 Appendix 37503757, # 23 Appendix 37583771, # 24 Appendix 37723806, # 25 Appendix 38073812)(Stamoulis, Stamatios) (Entered: 10/20/2014) 10/21/2014 CORRECTING ENTRY: Per request of filer, the exhibits attached to D.I. 169 have been removed from the filing as they were attached in error. (fms) (Entered: 10/21/2014) 10/21/2014 CORRECTING ENTRY: The docket text of D.I. 173 has been corrected to link the brief to the appropriate motion, D.I. 138. (fms) (Entered: 10/21/2014) 10/21/2014 176 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding delivery of discs containing electronic, text searchable copies of items electronically filed with the Court on Monday, October 20, 2014 re 171 Affidavit, 173 Reply Brief, 169 Answering Brief in Opposition, 174 Declaration,. (Katona, Shanti) (Entered: 10/21/2014) 10/21/2014 177 REDACTED VERSION of 155 Answering Brief in Opposition to Motion for Partial Summary Judgment of No Invalidity by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/21/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 40 of 51 PageID #: 48694 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 22/32 10/21/2014 178 REDACTED VERSION of 156 Declaration, in Support of Answering Brief in Opposition to Joao Bock Transaction Systems, LLC's Motion for Partial Summary Judgment of No Invalidity by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F)(Katona, Shanti) (Entered: 10/21/2014) 10/21/2014 179 REDACTED VERSION of 153 Opening Brief in Support, of Motion to Strike New Infringement Theories and Product Functionality by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/21/2014) 10/21/2014 180 REDACTED VERSION of 154 Declaration,,, re Opening Brief in Support of Motion to Strike New Infringement Theories and Product Functionality by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34)(Katona, Shanti) (Entered: 10/21/2014) 10/23/2014 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng filed by Jack Henry & Associates Inc.. (Attachments: # 1 Text of Proposed Order)(Katona, Shanti) (Entered: 10/23/2014) 10/23/2014 182 [SEALED] OPENING BRIEF in Support re 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng filed by Jack Henry & Associates Inc..Answering Brief/Response due date per Local Rules is 11/10/2014. (Katona, Shanti) (Entered: 10/23/2014) 10/23/2014 183 [SEALED] DECLARATION re 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11)(Katona, Shanti) (Entered: 10/23/2014) 10/24/2014 184 Letter to The Honorable Sue L. Robinson from Shanti M. Katona, Esq. regarding delivery of disc containing electronic, text searchable copies of items electronically filed with the Court re 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng, 182 Opening Brief in Support, 183 Declaration,. (Katona, Shanti) (Entered: 10/24/2014) 10/24/2014 REDACTION NOTICE: In accordance with section G of the Administrative Procedures Governing Filing and Service by Electronic Means, redacted versions of sealed documents shall be filed electronically within 7 days of the filing of the sealed document. The records of this case do not reflect the filing of a redacted version of DI Nos. 150, 151, 158 and 159. (fms) (Entered: 10/24/2014) 10/27/2014 185 NOTICE of Appearance by Christopher M. Coggins on behalf of Jack Henry & Associates Inc. (Coggins, Christopher) (Entered: 10/27/2014) 10/27/2014 Pro Hac Vice Attorney Jay E. Heidrick for Jack Henry & Associates Inc. added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (dmp, ) (Entered: 10/27/2014) 10/27/2014 186 NOTICE OF SERVICE of Witness List for Trial filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 10/27/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 41 of 51 PageID #: 48695 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 23/32 10/27/2014 187 REPLY BRIEF re 146 MOTION for Summary Judgment on NonInfringement of U.S. Patent 7,096,003 filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 10/27/2014) 10/27/2014 188 AFFIDAVIT of Jay E. Heidrick re 187 Reply Brief in Support of Motion for Summary Judgment on NonInfringement of U.S. Patent 7,096,003 filed by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1)(Coggins, Christopher) (Entered: 10/27/2014) 10/27/2014 189 SEALED ANSWERING BRIEF in Opposition re 152 MOTION to Strike New Infringement Theories and Product Functionality [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES' MOTION TO STRIKE NEW INFRINGEMENT THEORIES AND PRODUCT FUNCTIONALITY (D.I. 152)] filed by Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 11/6/2014. (Stamoulis, Stamatios) Modified on 10/28/2014 (nmfn). (Entered: 10/27/2014) 10/27/2014 190 [SEALED] ANSWERING BRIEF in Opposition re 157 MOTION to Strike 138 MOTION for Summary Judgment of Invalidity filed by Jack Henry & Associates Inc..Reply Brief due date per Local Rules is 11/6/2014. (Coggins, Christopher) (Entered: 10/27/2014) 10/27/2014 191 [SEALED] DECLARATION re 189 Answering Brief in Opposition, [DECLARATION OF JONATHAN R. MILLER IN SUPPORT OF PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES' MOTION TO STRIKE NEW INFRINGEMENT THEORIES AND PRODUCT FUNCTIONALITY (D.I. 152)] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 10/27/2014) 10/27/2014 192 [SEALED] REPLY BRIEF in Opposition re 149 MOTION for Partial Summary Judgment of Infringement filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) Modified on 10/28/2014 (fms). (Entered: 10/27/2014) 10/27/2014 193 [SEALED] APPENDIX re 192 Answering Brief in Opposition by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4) (Stamoulis, Stamatios) Modified on 10/28/2014 (nmfn). (Entered: 10/27/2014) 10/27/2014 194 [SEALED] DECLARATION re 190 Answering Brief in Opposition, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5a (part 1), # 6 Exhibit 5a (part 2), # 7 Exhibit 5a (part 3), # 8 Exhibit 5a (part 4), # 9 Exhibit 5b, # 10 Exhibit 5c, # 11 Exhibit 5d, # 12 Exhibit 5e, # 13 Exhibit 5f (part 1), # 14 Exhibit 5f (part 2), # 15 Exhibit 5g, # 16 Exhibit 5h, # 17 Exhibit 5i, # 18 Exhibit 5j, # 19 Exhibit 5k)(Coggins, Christopher) (Entered: 10/27/2014) 10/27/2014 195 [SEALED] EXHIBIT re 194 Declaration,, (Exhibit 6 through Exhibit 15) by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 7, # 2 Exhibit 8, # 3 Exhibit 9, # 4 Exhibit 10, # 5 Exhibit 11, # 6 Exhibit 12, # 7 Exhibit 13, # 8 Exhibit 14, # 9 Exhibit 15) (Coggins, Christopher) (Entered: 10/27/2014) 10/27/2014 196 MOTION to Strike 171 Affidavit, 169 Answering Brief in Opposition, 147 Opening Brief in Support, 148 Affidavit,, [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S MOTION TO STRIKE PORTIONS OF DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT, MOTION TO STRIKE PORTIONS OF DEFENDANTS OPPOSITION TO PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGEMENT OF INFRINGEMENT, AND EVIDENCE IN SUPPORT THEREOF] filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 10/27/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 42 of 51 PageID #: 48696 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 24/32 10/28/2014 CORRECTING ENTRY: The text of D.I. 193 has been corrected per request of filer to reflect that the document is an appendix. (nmfn) (Entered: 10/28/2014) 10/28/2014 CORRECTING ENTRY: D.I. 189 has been placed under seal per request of filer. (nmfn) (Entered: 10/28/2014) 10/28/2014 CORRECTING ENTRY: Attachment 24 to D.I. 158 (Affidavit of Alex Cheng) has been replaced with a notarized version per request of filer. (nmfn) (Entered: 10/28/2014) 10/28/2014 Pro Hac Vice Attorney Timothy C. Davis for Joao Bock Transaction Systems LLC added for electronic noticing. Pursuant to Local Rule 83.5 (d)., Delaware counsel shall be the registered users of CM/ECF and shall be required to file all papers. (dmp, ) (Entered: 10/28/2014) 10/28/2014 CORRECTING ENTRY: D.I. 192 has been corrected to reflect that it is a Reply Brief rather than an Answering Brief. The deadline set by the use of the incorrect docket code has been removed. (fms) (Entered: 10/28/2014) 10/29/2014 197 Letter to The Honorable Sue L. Robinson from Christopher M. Coggins, Esq. regarding delivery of discs containing electronic, text searchable copies of items electronically filed with the Court re 188 Affidavit, 190 Answering Brief in Opposition, 194 Declaration,, 187 Reply Brief, 195 Exhibit to a Document,. (Coggins, Christopher) (Entered: 10/29/2014) 10/30/2014 198 REDACTED VERSION of 169 Answering Brief in Opposition, by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/30/2014) 10/30/2014 199 REDACTED VERSION of 171 Affidavit, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Katona, Shanti) (Entered: 10/30/2014) 10/30/2014 200 REDACTED VERSION of 173 Reply Brief by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 10/30/2014) 10/30/2014 201 REDACTED VERSION of 174 Declaration, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit N, # 13 Exhibit O, # 14 Exhibit P)(Katona, Shanti) (Entered: 10/30/2014) 10/30/2014 202 REDACTED VERSION of 158 Appendix,,, by Joao Bock Transaction Systems LLC. (Attachments: # 1 Appendix 20012007, # 2 Appendix 20082009, # 3 Appendix 2010 2017, # 4 Appendix 20182022, # 5 Appendix 20232034, # 6 Appendix 20352039, # 7 Appendix 20402041, # 8 Appendix 20422050, # 9 Appendix 20512060, # 10 Appendix 20612064, # 11 Appendix 20652068, # 12 Appendix 206923901, # 13 Appendix 206923902, # 14 Appendix 206923903, # 15 Appendix 206923904, # 16 Appendix 206923905, # 17 Appendix 23912404, # 18 Appendix 24052532, # 19 Appendix 25332607, # 20 Appendix 2608, # 21 Appendix 260926211, # 22 Appendix 260926212, # 23 Appendix 26222623, # 24 Appendix 26242648, # 25 Appendix 26492650)(Stamoulis, Stamatios) (Entered: 10/30/2014) 10/30/2014 203 REDACTED VERSION of 159 Brief (Combined Opening and Answering), PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE] by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 10/30/2014) 10/31/2014 Reset Hearings: The Oral Argument is rescheduled for 10/31/2014 at 01:00 PM in Courtroom 4B before Judge Sue L. Robinson. (nmfn) (Entered: 10/31/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 43 of 51 PageID #: 48697 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 25/32 10/31/2014 204 REDACTED VERSION of 150 Opening Brief in Support [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPENING BRIEF IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT OF INFRINGEMENT] by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 10/31/2014) 10/31/2014 205 REDACTED VERSION of 151 Appendix,,, [APPENDIX TO PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF INFRINGEMENT] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Appendix 10011065, # 2 Appendix 10661495, # 3 Appendix 14961512, # 4 Appendix 15131995)(Stamoulis, Stamatios) (Entered: 10/31/2014) 10/31/2014 Minute Entry for proceedings held before Judge Sue L. Robinson Oral Argument held on 10/31/2014. (Court Reporter V. Gunning.) (nmfn) (Entered: 10/31/2014) 11/03/2014 Remark re: Sealed Documents filed in the future by the parties of this civil action. Documents filed under seal should have the words Filed Under Seal on the cover pages of the files uploaded to CM/ECF and the courtesy copies. (fms) Modified on 11/3/2014 (fms). (Entered: 11/03/2014) 11/03/2014 206 NOTICE OF SERVICE of List of Fact Witnesses filed by Joao Bock Transaction Systems LLC.(Stamoulis, Stamatios) (Entered: 11/03/2014) 11/03/2014 207 REDACTED VERSION of 192 Answering Brief in Opposition REPLY BRIEF IN FURTHER SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGEMENT OF INFRINGEMENT by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/03/2014) 11/03/2014 208 REDACTED VERSION of 172 Answering Brief in Opposition TO DEFENDANT'S MOTION FOR SUMMARY JUDGMENT ON NONINFRINGEMENT by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/03/2014) 11/03/2014 209 REDACTED VERSION of 182 Opening Brief in Support, by Jack Henry & Associates Inc.. (Katona, Shanti) (Entered: 11/03/2014) 11/03/2014 210 REDACTED VERSION of 183 Declaration, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11) (Katona, Shanti) (Entered: 11/03/2014) 11/04/2014 211 SEALED AMENDED DOCUMENT by Joao Bock Transaction Systems LLC. Amendment to 151 Appendix,,, . (Attachments: # 1 10011065, # 2 10661165, # 3 1066 1265, # 4 12661365, # 5 13661465, # 6 14661495, # 7 14961512, # 8 15131562, # 9 15631610, # 10 16111656, # 11 16571692, # 12 16931710, # 13 17111715, # 14 17161809, # 15 18101834, # 16 18351846, # 17 18471859, # 18 18601879, # 19 18801894, # 20 18951907, # 21 19081911, # 22 19121915, # 23 19161985, # 24 19861995)(Stamoulis, Stamatios) (Main Document 211 replaced on 11/4/2014) (nmfn, ). Modified on 11/5/2014 (fms). (Entered: 11/04/2014) 11/04/2014 212 Letter to The Honorable Sue L. Robinson from Stamatios Stamoulis regarding Substitute Pages for DI 151 re 211 Amended Document,,. (Stamoulis, Stamatios) (Entered: 11/04/2014) 11/04/2014 213 REDACTED VERSION of 193 Declaration by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4)(Stamoulis, Stamatios) (Entered: 11/04/2014) 11/04/2014 214 REDACTED VERSION of 189 Answering Brief in Opposition, by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/04/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 44 of 51 PageID #: 48698 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 26/32 11/04/2014 215 REDACTED VERSION of 191 Declaration, by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1)(Stamoulis, Stamatios) (Entered: 11/04/2014) 11/04/2014 CORRECTING ENTRY: D.I. 211 has been placed under seal per request of filer. The pdf of the main document has been replaced with a pdf that states that the document has been filed under seal. D.I. 151 has been modified to state that it has been amended and to see D.I. 211 . (nmfn) (Entered: 11/04/2014) 11/05/2014 216 REDACTED VERSION of 175 Appendix,,, by Joao Bock Transaction Systems LLC. (Attachments: # 1 30013001, # 2 30053013, # 3 30143068, # 4 30693121, # 5 3122 3183, # 6 31843243, # 7 32443312, # 8 33133383, # 9 33843423, # 10 34243434, # 11 3435.3455, # 12 34563519, # 13 35203570, # 14 35713638, # 15 36393722, # 16 37233726, # 17 37273729, # 18 37303733, # 19 37343740, # 20 37413746, # 21 37473749, # 22 37503757, # 23 37583771, # 24 37723806, # 25 38073812) (Stamoulis, Stamatios) (Entered: 11/05/2014) 11/06/2014 217 ANSWERING BRIEF in Opposition re 196 MOTION to Strike 171 Affidavit, 169 Answering Brief in Opposition, 147 Opening Brief in Support, 148 Affidavit,, [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S MOTION TO STRIKE PORTIONS OF DEFENDANT'S MOTION FOR SUMMARY J filed by Jack Henry & Associates Inc..Reply Brief due date per Local Rules is 11/17/2014. (Coggins, Christopher) (Entered: 11/06/2014) 11/06/2014 218 REPLY BRIEF re 152 MOTION to Strike New Infringement Theories and Product Functionality filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 11/06/2014) 11/06/2014 219 REPLY BRIEF re 157 MOTION to Strike 138 MOTION for Summary Judgment of Invalidity filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/06/2014) 11/06/2014 220 DECLARATION re 219 Reply Brief of Jonathan R. Miller by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 11/06/2014) 11/07/2014 221 REDACTED VERSION of 190 Answering Brief in Opposition, by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 11/07/2014) 11/07/2014 222 REDACTED VERSION of 194 Declaration,, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5a (part 1), # 6 Exhibit 5a (part 2), # 7 Exhibit 5a (part 3), # 8 Exhibit 5a (part 4), # 9 Exhibit 5b, # 10 Exhibit 5c, # 11 Exhibit 5d, # 12 Exhibit 5e, # 13 Exhibit 5f (part 1), # 14 Exhibit 5f (part 2), # 15 Exhibit 5g, # 16 Exhibit 5h, # 17 Exhibit 5i, # 18 Exhibit 5j, # 19 Exhibit 5k)(Coggins, Christopher) (Entered: 11/07/2014) 11/07/2014 223 REDACTED VERSION of 195 Exhibit to a Document, Exhibits 615 to Declaration 194 by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit 7, # 2 Exhibit 8, # 3 Exhibit 9, # 4 Exhibit 10, # 5 Exhibit 11, # 6 Exhibit 12, # 7 Exhibit 13, # 8 Exhibit 14, # 9 Exhibit 15)(Coggins, Christopher) (Entered: 11/07/2014) 11/10/2014 224 NOTICE of SUPPLEMENTAL AUTHORITY by Joao Bock Transaction Systems LLC re 142 MOTION for Partial Summary Judgment of No Invalidity, 138 MOTION for Summary Judgment of Invalidity (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 11/10/2014) 11/10/2014 225 SEALED ANSWERING BRIEF in Opposition re 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S BRIEF IN OPPOSITION TO DEFENDANT'S SECOND MOTION TO Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 45 of 51 PageID #: 48699 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 27/32 STRIKE PORTIONS OF THE EXPERT INFRINGEMENT REPORT OF ALEX CHENG] filed by Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 11/20/2014. (Stamoulis, Stamatios) Modified on 11/12/2014 (nmfn). (Entered: 11/10/2014) 11/10/2014 226 [SEALED] DECLARATION re 225 Answering Brief in Opposition, [DECLARATION OF MAUREEN V. ABBEY IN SUPPORT OF PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPPOSITION TO MOTION TO STRIKE PORTIONS OF EXPERT INFRINGEMENT REPORT OF ALEX CHENG AND EVIDENCE IN SUPPORT THEREOF] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3)(Stamoulis, Stamatios) (Entered: 11/10/2014) 11/11/2014 227 NOTICE of Supplemental Authority by Jack Henry & Associates Inc. re 142 MOTION for Partial Summary Judgment of No Invalidity, 138 MOTION for Summary Judgment of Invalidity (Attachments: # 1 Exhibit A)(Coggins, Christopher) (Entered: 11/11/2014) 11/12/2014 CORRECTING ENTRY: D.I. 225 has been placed under seal per request of filer. (nmfn) (Entered: 11/12/2014) 11/13/2014 228 REDACTED VERSION of 225 Answering Brief in Opposition, by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/13/2014) 11/13/2014 229 REDACTED VERSION of 226 Declaration, by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3)(Stamoulis, Stamatios) (Entered: 11/13/2014) 11/17/2014 230 Second NOTICE of Supplemental Authority by Jack Henry & Associates Inc. (Attachments: # 1 Exhibit A)(Coggins, Christopher) (Entered: 11/17/2014) 11/17/2014 231 REPLY BRIEF re 196 MOTION to Strike 171 Affidavit, 169 Answering Brief in Opposition, 147 Opening Brief in Support, 148 Affidavit,, [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC'S MOTION TO STRIKE PORTIONS OF DEFENDANT'S MOTION FOR SUMMARY J filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/17/2014) 11/18/2014 232 MOTION for Extension of Time to Regarding Certain PreTrial Deadlines filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 11/18/2014) 11/18/2014 233 Second NOTICE of Supplemental Authority by Joao Bock Transaction Systems LLC (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 11/18/2014) 11/20/2014 SO ORDERED, re 232 MOTION for Extension of Time to Regarding Certain PreTrial Deadlines filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 11/20/2014. (fms) (Entered: 11/20/2014) 11/26/2014 234 Joint STIPULATION TO EXTEND TIME to File Reply in Support of Motion to Strike Portions of Alex Cheng's Report to December 1, 2014 filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Main Document 234 replaced on 12/1/2014) (fms). (Entered: 11/26/2014) 12/01/2014 CORRECTING ENTRY: D.I. 234 has been removed and replaced with a revised version that contains a so ordered line. (fms) (Entered: 12/01/2014) 12/01/2014 SO ORDERED, re 234 Joint STIPULATION TO EXTEND TIME to File Reply in Support of Motion to Strike Portions of Alex Cheng's Report to December 1, 2014 filed by Jack Henry & Associates Inc., Set Briefing Schedule: re 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng. (Reply Brief due 12/1/2014.). Signed by Judge Sue L. Robinson on 12/1/2014. (fms) (Entered: 12/01/2014) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 46 of 51 PageID #: 48700 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 28/32 12/01/2014 235 REPLY BRIEF re 181 MOTION to Strike Portions of the Expert Infringement Report of Alex Cheng filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 12/01/2014) 12/10/2014 236 Letter to The Honorable Sue L. Robinson from Stam Stamoulis regarding enclosed Supplemental Authority from the Federal Circuit. (Attachments: # 1 Exhibit A) (Stamoulis, Stamatios) (Entered: 12/10/2014) 12/14/2014 237 Proposed Pretrial Order by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E)(Stamoulis, Stamatios) (Entered: 12/14/2014) 12/15/2014 238 MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 12/15/2014. (nmfn) (Entered: 12/15/2014) 12/15/2014 239 ORDER granting 138 Motion for Summary Judgment ; denying 142 Motion for Partial Summary Judgment; granting 146 Motion for Summary Judgment ; denying 149 Motion for Partial Summary Judgment; finding as moot 152 Motion to Strike ; denying 157 Motion to Strike ; finding as moot 181 Motion to Strike ; finding as moot 196 Motion to Strike. Signed by Judge Sue L. Robinson on 12/15/2014. (nmfn) (Entered: 12/15/2014) 12/16/2014 240 NOTICE of Cancellation of Pretrial Conference and Jury Trial re 238 Memorandum Opinion, 239 Order.(nmfn) (Entered: 12/16/2014) 12/18/2014 241 JUDGMENT in favor of Jack Henry & Associates Inc. against Joao Bock Transaction Systems LLC (CASE CLOSED). Signed by Judge Sue L. Robinson on 12/18/2014. (nmfn) (Entered: 12/18/2014) 12/18/2014 242 Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 7,096,003. (Attachments: # 1 Judgment, # 2 Memorandum Opinion, # 3 Order)(nmfn) (Entered: 12/18/2014) 12/23/2014 243 MOTION to Supplement the Record [PLAINTIFF'S UNOPPOSED MOTION TO SUPPLEMENT THE RECORD] filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 12/23/2014) 12/31/2014 244 MOTION for Extension of Time to File Motion Under 35 U.S.C. Section 285 filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 12/31/2014) 01/05/2015 245 [SEALED] SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 01/05/2015) 01/05/2015 246 [SEALED] MEMORANDUM OF LAW IN SUPPORT OF ITS APPLICATION FOR ATTORNEYS FEES AND EXPENSES filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Main Document 246 replaced on 1/6/2015) (fms). Modified on 1/6/2015 (fms). (Entered: 01/05/2015) 01/05/2015 247 [SEALED] Declaration of Russell Jones In Support Of Jack Henrys Motion For Attorneys Fees And Expenses filed by Jack Henry & Associates Inc.. (Coggins, Christopher) Modified on 1/6/2015 (fms). (Entered: 01/05/2015) 01/05/2015 248 [SEALED] SEALED EXHIBIT re 247 SEALED MOTION for Attorney Fees Declaration of Russell Jones In Support Of Jack Henrys Motion For Attorneys Fees And Expenses, 246 SEALED MOTION for Attorney Fees MEMORANDUM OF LAW IN SUPPORT OF ITS APPLICATION FOR ATTORNEYS FEES AND EXPENSES by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit Exhibit A Plaintiff JBTS Initial Disclosureses, # 2 Exhibit Exhibit B JBTS Not of Accused Instrumentalities, # 3 Exhibit Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 47 of 51 PageID #: 48701 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 29/32 Exhibit C Plaintiff Notice of Initial Claim Charts, # 4 Exhibit Exhibit D 5142013 Jones Email to Abbey, # 5 Exhibit Exhibit E 10102013 McCraig Email to Abbey, # 6 Exhibit Exhibit F JBTS Proposal for Repres Products, # 7 Exhibit Exhibit G 01272014 Abbey Email to Jones, # 8 Exhibit Exhibit H Lts to Court re Primary Products, # 9 Exhibit Exhibit I 02614 Plaintiff Email re Rep Prod Proposal, # 10 Exhibit Exhibit J 021414 JHA letter to Rep Product Proposal, # 11 Exhibit Exhibit K 03122014 Abbey Email to Jones, # 12 Exhibit Exhibit L JBTS Final Infring Conten, # 13 Exhibit Exhibit M List of Objs in Depos, # 14 Exhibit Exhibit O Polsinelli Bills to Jack Henry, # 15 Exhibit Exhibit P Spec Counsel Invoices, # 16 Exhibit Exhibit Q Expert Invoices, # 17 Exhibit Exhibit R JBTS Varying Accused Prod List, # 18 Exhibit Exhibit S Patent cases filed by JBTS since 2009, # 19 Exhibit Exhibit T JBTS Sett & Lic Agmt List, # 20 Exhibit Exhibit U Companies Sent JBTS Demand Letters, # 21 Exhibit Exhibit V AIPLA Report of Economic Survey 2013)(Coggins, Christopher) (Entered: 01/05/2015) 01/05/2015 249 [SEALED] SEALED EXHIBIT re 247 SEALED MOTION for Attorney Fees Declaration of Russell Jones In Support Of Jack Henrys Motion For Attorneys Fees And Expenses, 246 SEALED MOTION for Attorney Fees MEMORANDUM OF LAW IN SUPPORT OF ITS APPLICATION FOR ATTORNEYS FEES AND EXPENSES Exhibit N Deposition Transcript Excerpts by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 01/05/2015) 01/06/2015 SO ORDERED, re 243 MOTION to Supplement the Record [PLAINTIFF'S UNOPPOSED MOTION TO SUPPLEMENT THE RECORD] filed by Joao Bock Transaction Systems LLC. Signed by Judge Sue L. Robinson on 1/6/2015. (fms) (Entered: 01/06/2015) 01/06/2015 250 Official Transcript of Markman Hearing held on 6/9/2014 before Judge Robinson. Court Reporter/Transcriber Valerie Gunning,Telephone number 3025736194. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 1/27/2015. Redacted Transcript Deadline set for 2/6/2015. Release of Transcript Restriction set for 4/6/2015. (fms) (Entered: 01/06/2015) 01/06/2015 251 Official Transcript of Oral Argument held on 10/31/2014 before Judge Robinson. Court Reporter/Transcriber Valerie Gunning,Telephone number 3025736194. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 1/27/2015. Redacted Transcript Deadline set for 2/6/2015. Release of Transcript Restriction set for 4/6/2015. (fms) (Entered: 01/06/2015) 01/06/2015 CORRECTING ENTRY: D.I. 246 has been removed and replaced with the correct memorandum in support. The incorrect docket events were used to docket D.I. Nos. 246 and 247. The docket texts have been corrected. For future filings, sealed exhibits should be attached to the sealed declaration instead of using separate docket entries. (fms) (Entered: 01/06/2015) 01/07/2015 252 NOTICE OF APPEAL to the Federal Circuit of 241 Judgment . Appeal filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 01/07/2015) 01/08/2015 APPEAL Credit Card Payment of $505.00 received re 252 Notice of Appeal (Federal Circuit) filed by Joao Bock Transaction Systems LLC. ( Filing fee $505, receipt number 03111651601.) (Stamoulis, Stamatios) (Entered: 01/08/2015) 01/08/2015 Notice of Appeal and Docket Sheet to US Court of Appeals for the Federal Circuit re 252 Notice of Appeal (Federal Circuit). (els) (Entered: 01/08/2015) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 48 of 51 PageID #: 48702 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 30/32 01/08/2015 Notification regarding 252 Notice of Appeal (Federal Circuit) sent to Reporter Gunning (els) (Entered: 01/08/2015) 01/09/2015 253 NOTICE of Docketing Record on Appeal from USCA for the Federal Circuit re 252 Notice of Appeal (Federal Circuit) filed by Joao Bock Transaction Systems LLC. USCA Case Number 151245 (fms) (Entered: 01/09/2015) 01/12/2015 254 REDACTED VERSION of 245 SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 01/12/2015) 01/12/2015 255 REDACTED VERSION of 246 SEALED MOTION for Attorney Fees MEMORANDUM OF LAW IN SUPPORT OF ITS APPLICATION FOR ATTORNEYS FEES AND EXPENSES by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 01/12/2015) 01/12/2015 256 REDACTED VERSION of 247 SEALED MOTION for Attorney Fees Declaration of Russell Jones In Support Of Jack Henrys Motion For Attorneys Fees And Expenses by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 01/12/2015) 01/12/2015 257 REDACTED VERSION of 248 Exhibit to a Document,,,,,, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit O, # 15 Exhibit P, # 16 Exhibit Q, # 17 Exhibit R, # 18 Exhibit S, # 19 Exhibit T, # 20 Exhibit U, # 21 Exhibit V) (Coggins, Christopher) (Entered: 01/12/2015) 01/12/2015 258 REDACTED VERSION of 249 Exhibit to a Document, by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 01/12/2015) 01/13/2015 259 TRANSCRIPT REQUEST by Joao Bock Transaction Systems LLC TRANSCRIPT NOT NEEDED (Stamoulis, Stamatios) (Entered: 01/13/2015) 01/15/2015 260 MOTION for Extension of Time to Respond to Jack Henry & Associates, Inc.'s Motion for Attorneys' Fees and Expenses (DI 245) filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 01/15/2015) 01/20/2015 SO ORDERED, re 260 MOTION for Extension of Time to Respond to Jack Henry & Associates, Inc.'s Motion for Attorneys' Fees and Expenses (DI 245) filed by Joao Bock Transaction Systems LLC, Set Briefing Schedule: re 245 SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers. (Answering Brief due 1/29/2015.). Signed by Judge Sue L. Robinson on 1/20/2015. (fms) (Entered: 01/20/2015) 01/29/2015 261 ANSWERING BRIEF in Opposition re 245 SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers filed by Joao Bock Transaction Systems LLC.Reply Brief due date per Local Rules is 2/9/2015. (Stamoulis, Stamatios) (Entered: 01/29/2015) 01/29/2015 262 DECLARATION re 261 Answering Brief in Opposition, [DECLARATION OF STEVEN W. RITCHESON, ESQ. IN SUPPORT OF JOAO BOCK TRANSACTION SYSTEMS, LLC'S OPPOSITION TO JACK HENRY'S MOTION FOR ATTORNEYS' FEES AND EXPENSES] by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Stamoulis, Stamatios) (Entered: 01/29/2015) 02/09/2015 263 MOTION for Extension of Time to File Reply Brief in Support, MOTION for Extension of Time to File Response/Reply as to 245 SEALED MOTION for Attorney Fees and Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 49 of 51 PageID #: 48703 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 31/32 Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 02/09/2015) 02/11/2015 264 ORDER granting granting 263 Motion for Extension of Time to File Response/Reply re 245 SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers ( Reply due by 2/16/2015.). Signed by Judge Sue L. Robinson on 2/11/2015. (nmfn) (Entered: 02/11/2015) 02/17/2015 265 [SEALED] REPLY BRIEF re 245 SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers filed by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A)(Coggins, Christopher) (Entered: 02/17/2015) 02/24/2015 266 REDACTED VERSION of 265 Reply Brief, by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit A)(Coggins, Christopher) (Entered: 02/24/2015) 03/18/2015 267 NOTICE of SUPPLEMENTAL AUTHORITY by Joao Bock Transaction Systems LLC (Attachments: # 1 Exhibit A)(Stamoulis, Stamatios) (Entered: 03/18/2015) 11/19/2015 268 MANDATE of USCA as to 252 Notice of Appeal (Federal Circuit) filed by Joao Bock Transaction Systems LLC. USCA Decision: Affirmed. (Attachments: # 1 Mandate)(fms) (Entered: 11/19/2015) 12/03/2015 269 BILL OF COSTS by Jack Henry & Associates Inc.. (Coggins, Christopher) (Main Document 269 replaced on 12/7/2015) (fms). (Entered: 12/03/2015) 12/03/2015 270 [SEALED] MOTION for Attorney Fees (Supplemental) filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 12/03/2015) 12/03/2015 271 [SEALED] DECLARATION re 270 MOTION for Attorney Fees (Supplemental) by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit Exhibit A to Declaration of Jay E. Heidrick)(Coggins, Christopher) (Entered: 12/03/2015) 12/04/2015 272 Letter to Judge Robinson from Christopher M. Coggins regarding enclosure of disc containing electronic, textsearchable copies of items electronically filed with the Court re 270 MOTION for Attorney Fees (Supplemental), 271 Declaration. (Coggins, Christopher) (Entered: 12/04/2015) 12/07/2015 CORRECTING ENTRY: Per request of filer, D.I. 269 has been removed and replaced with a redacted version. (fms) (Entered: 12/07/2015) 12/10/2015 273 REDACTED VERSION of 270 MOTION for Attorney Fees (Supplemental) with Certificate of Service by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 12/10/2015) 12/10/2015 274 REDACTED VERSION of 271 Declaration of Jay E. Heidrick by Jack Henry & Associates Inc.. (Attachments: # 1 Exhibit Redacted in Its Entirety Exhibit A to Declaration of Jay E. Heidrick)(Coggins, Christopher) (Entered: 12/10/2015) 12/21/2015 275 RESPONSE to Motion re 270 MOTION for Attorney Fees (Supplemental) [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLCS RESPONSE IN OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES, INC.S SUPPLEMENT TO MOTION FOR FEES AND EXPENSES] filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 12/21/2015) 12/21/2015 276 OBJECTIONS by Joao Bock Transaction Systems LLC to 269 Bill of Costs [PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLCS OPPOSITION TO DEFENDANT JACK HENRY & ASSOCIATES, INC.S BILL OF COSTS]. (Stamoulis, Stamatios) (Entered: 12/21/2015) Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 50 of 51 PageID #: 48704 10/25/2016 CM/ECF LIVE U.S. District Court:ded https://ecf.ded.uscourts.gov/cgibin/DktRpt.pl?849710626889024L_1_01 32/32 03/31/2016 277 MEMORANDUM ORDER granting 245 SEALED MOTION for Attorney Fees and Expenses pursuant to 35 U.S.C. § 285 and the Courts Inherent Powers filed by Jack Henry & Associates Inc.; denying 270 MOTION for Attorney Fees (Supplemental) filed by Jack Henry & Associates Inc. Signed by Judge Sue L. Robinson on 3/31/2016. (nmfn) (Entered: 03/31/2016) 04/18/2016 278 NOTICE OF APPEAL to the Federal Circuit of 277 Memorandum and Order, . Appeal filed by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 04/18/2016) 04/18/2016 APPEAL Credit Card Payment of $505.00 received re 278 Notice of Appeal (Federal Circuit) filed by Joao Bock Transaction Systems LLC. ( Filing fee $505, receipt number 03111915399.) (Stamoulis, Stamatios) (Entered: 04/18/2016) 04/18/2016 Notification regarding 278 Notice of Appeal (Federal Circuit) sent to Reporter Gunning. (cna) (Entered: 04/18/2016) 04/18/2016 Notice of Appeal and Docket Sheet to US Court of Appeals for the Federal Circuit re 278 Notice of Appeal (Federal Circuit). (cna) (Entered: 04/18/2016) 04/19/2016 279 NOTICE of Docketing Record on Appeal from USCA for the Federal Circuit re 278 Notice of Appeal (Federal Circuit) filed by Joao Bock Transaction Systems LLC. USCA Case Number 161887. (fms) (Entered: 04/19/2016) 05/03/2016 280 TRANSCRIPT REQUEST by Joao Bock Transaction Systems LLC before Judge Sue L. Robinson. (Stamoulis, Stamatios) (Entered: 05/03/2016) 05/03/2016 281 MOTION to Supplement Recod with Teleconference Transcripts filed by Joao Bock Transaction Systems LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Text of Proposed Order)(Stamoulis, Stamatios) (Entered: 05/03/2016) 05/17/2016 282 RESPONSE to Motion re 281 MOTION to Supplement Recod with Teleconference Transcripts filed by Jack Henry & Associates Inc.. (Coggins, Christopher) (Entered: 05/17/2016) 05/26/2016 283 ORDER denying 281 MOTION to Supplement Record with Teleconference Transcripts . Signed by Judge Sue L. Robinson on 5/26/2016. (nmfn) (Entered: 05/26/2016) 06/16/2016 284 SUGGESTION OF BANKRUPTCY Upon the Record as to Joao Bock Transaction Systems, LLC by Joao Bock Transaction Systems LLC. (Stamoulis, Stamatios) (Entered: 06/16/2016) PACER Service Center Transaction Receipt 10/24/2016 20:01:10 PACER Login: ph0879:2808621:4042754 Client Code: 000001.00005.64255 Description: Docket Report SearchCriteria: 1:12cv01138SLR Start date: 1/1/1970 End date: 10/24/2016 Billable Pages: 29 Cost: 2.90 Case 1:12-cv-01704-RGA Document 653-1 Filed 10/31/16 Page 51 of 51 PageID #: 48705 EXHIBIT L Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 1 of 45 PageID #: 48706 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE JOAO BOCK TRANSACTION SYSTEMS, LLC, Plaintiff, v. JACK HENRY & ASSOCIATES, INC., Defendant. 1:12-cv-01138-SLR Judge Sue L. Robinson PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 1 of 44 PageID #: 12359Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 2 of 5 PageID #: 48707 D. Del. Case No. 1:12-CV-01138 (SLR) Page |ii PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Table Of Contents I. NATURE AND STAGE OF PROCEEDINGS ................................................................... 1 II. SUMMARY OF ARGUMENT ......................................................................................... 2 III. STATEMENT OF FACTS ................................................................................................ 3 IV. ARGUMENT ...................................................................................................................... 5 A. THE ASSERTED CLAIMS ARE NOT OBVIOUS ....................................................... 5 1. JBTS’s Motion to Strike ................................................................................................ 5 2. JHA’s Prior Art Combinations Lack More Than Just The Internet ...................... 11 3. Adding Communications Over the Internet and World Wide Web is Not Obvious 14 4. Secondary Considerations ........................................................................................... 17 B. THE PATENT-IN-SUIT CONTAINS A WRITTEN DESCRIPTION OF THE ASSERTED CLAIMS ............................................................................................................. 19 1. The Written Description Requirement Does Not Require Disclosure of Algorithms 19 2. The Specification Discloses Algorithms ...................................................................... 21 3. JHA’s Failure To Offer Expert Testimony On Written Description Is Fatal ........ 23 4. Mr. Joao’s Qualifications Are Irrelevant ................................................................... 24 C. THE ASSERTED CLAIMS ARE DIRECTED TO PATENT ELIGIBLE SUBJECT MATTER ................................................................................................................................. 25 1. JHA’s Newly-Proposed “Abstract Ideas” Should Be Stricken ................................ 25 2. The Asserted Claims Are Not Directed To JHA’s Sixth Proposed “Abstract Idea” 27 3. Even if Directed To An Abstract Idea, The Asserted Claims Would Still Be Patentable ............................................................................................................................. 30 4. The Machine-Or-Transformation Test Is Inapplicable ............................................ 36 D. JHA’s COLLATERAL ESTOPPEL ARGUMENT IS IMPROPER ......................... 36 1. JHA’s Affidavits on Collateral Estoppel Should be Stricken .................................. 36 2. JHA’s Collateral Estoppel Argument Is An Improper Motion For Reconsideration 38 V. CONCLUSION .................................................................................................................... 39 Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 2 of 44 PageID #: 12360Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 3 of 5 PageID #: 487 8 D. Del. Case No. 1:12-CV-01138 (SLR) Page |iii PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE TABLE OF AUTHORITIES Cases Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) .. 34 Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970) ......................................................................... 6 Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. __, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) ............................................................................................................................................. 30, 34 Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2011) ....................... 19, 20, 23 Bilski v. Kappos, 561 U.S. 593, ___, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) ........................... 29 Burr v. Duryee, 68 U.S. 531 1 Wall. 531, 17 L.Ed. 650 (1863) ................................................... 30 Capon v. Eshhar, 418 F.3d 1349 (Fed. Cir. 2005)........................................................................ 22 Card Verification Solutions, LLC v. Citigroup Inc., Case No. 1:13-cv-06339, 2014 WL 4922524 (N.D. Ill. Sep. 29, 2014) ...................................................................................................... 31, 34 Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115 (Fed. Cir. 2008) ................ 20 Daoud v. City of Wilmington, 946 F.Supp.2d 369 (D. Del. 2013) ................................................ 38 Diamond v. Chakrabarty, 447 U.S. 303 (1980) ............................................................................ 29 Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014).......................................................................................................................................... 30 Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956 (Fed. Cir. 2002) ........................................ 20 Falko-Gunter Falkner v. Inglis, 448 F.3d 1357 (Fed. Cir. 2006) .................................................. 20 Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543 (Fed. Cir. 1997) .................................................. 21 Fowle v. C&C Cola, 868 F.2d 59 (3d Cir. 1989) ........................................................................... 5 Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) ......................... 22 In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) ......................................................................................................................... 19 In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009)........................................................................... 30 In re Hayes Microcomputer Products, 982 F.2d 1527 (Fed. Cir. 1992) ....................................... 21 In re Nuijten, 500 F.3d 1346 (2007) ............................................................................................. 30 In re Smith, 481 F.2d 910 (C.C.P.A. 1973) .................................................................................. 23 Invista North America S.A.R.L. et al. v. M&G USA Corporation et al., 951 F.Supp.2d 626 (D. Del. 2013), reconsideration denied by, 2013 WL 3624014 (D. Del. July 12, 2013) .................. 6 Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005) ................................... 20 Jones v. Pittsburgh Nat’l Corp., 899 F.2d 1350 (3d Cir.1990) .................................................... 38 LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ................... 19 Max’s Seafood Cafe ex rel. Lou–Ann, Inc. v. Quinteros, 176 F.3d 669 (3d Cir.1999) ................. 38 Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) ........................................ 17 Planet Bingo, LLC v. VKGS LLC, 2014 WL 4195188 (Fed. Cir. 2014) ...................................... 32 PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) ................................... 20 Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 3 of 44 PageID #: 12361Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 4 of 5 PageID #: 48709 D. Del. Case No. 1:12-CV-01138 (SLR) Page |iv PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE SiRF Technology, Inc. v. International Trade Com’n, 601 F.3d 1319(Fed. Cir. 2010) ............... 30 SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) ............................... 9 Soverain Software LLC v. Newegg Inc., 705 F.3d 1333 (Fed. Cir. 2013), amended on rehearing by, 728 F.3d 1332 (Fed. Cir. 2013), cert. denied, 134 S.Ct. 910, 187 L.Ed.2d 779 (2014) ...... 16 Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269 (Fed. Cir. 2012) ................ 20, 23 Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) ......................... 24 Telecordia Technologies, Inc. v. Cisco Systems, Inc., 612 F.3d 1365 (Fed. Cir. 2010) ............... 24 Triton Tech of Texas, LLC v. Nintendo of America, Inc., 753 F.3d 1375 (Fed. Cir. 2014) .......... 21 Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) .................................. 24 United States v. Dunkel, 927 F.2d 955 (7th Cir. 1991) ................................................................... 9 Western Union Co. v. MoneyGram Payment Systems, 626 F.3d 1361 (Fed. Cir. 2010) .............. 17 Statutes 35 U.S.C. § 101 ...................................................................................................................... passim 35 U.S.C. § 103(a) ........................................................................................................................ 25 35 U.S.C. § 112, ¶ 6 ...................................................................................................................... 24 35 U.S.C. § 112, ¶1 ................................................................................................................. 19, 24 Rules Fed. R. Civ. Proc. 59(e) .......................................................................................................... 38, 39 Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 4 of 44 PageID #: 12362Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 5 of 5 PageID #: 48710 D. Del. Case No. 1:12-CV-01138 (SLR) Page |1 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Plaintiff Joao Bock Transaction Systems, LLC (hereinafter, “JBTS” or “Plaintiff”) files its Opposition to the Motion for Summary Judgment Of Invalidity filed by Defendant Jack Henry & Associates, Inc. (hereinafter, “JHA” or “Defendant”). D.I. 139. JHA cannot prove any of the invalidity defenses set forth in its motion by clear and convincing evidence. The Court should deny JHA’s motion for summary judgment because: (1) the asserted claims are nonobvious; (2) the patent-in-suit contains a written description of the asserted claims, (3) the asserted claims are not directed to abstract ideas; and, (4) JHA’s collateral estoppel argument has already been denied, and JHA cannot meet the standard for a motion for reconsideration. In addition, JBTS moves to strike portions of JHA’s motion and evidence in support thereof as improper evidence on summary judgment evidence, as incomplete or as untimely disclosed. I. NATURE AND STAGE OF PROCEEDINGS Plaintiff JBTS filed this patent infringement action against defendant JHA on September 14, 2012 alleging infringement of U.S. Patent Number 7,096,003 (the “’003 Patent”). Complaint, D.I. 1. JHA’s operative answer and counterclaims are found in its “Original Answer and First Amended Counterclaim” filed February 12, 2013. D.I. 32. JHA served its final invalidity contentions on July 28, 2014, and then supplemented those contentions the next day, July 29, 2014. See JBTS-0001-0335, 0336-0419. JHA served its invalidity expert reports on August 18 and 19, 2014. See JBTS-0420-0539, 0558-0614. Fact discovery concluded on May 9, 2014, and expert discovery concluded on September 22, 2014. D.I. 104; D.I. 129. The pretrial conference has been scheduled for December 17, 2014 and trial is scheduled for January 5, 2015. Id. Both Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 5 of 44 PageID #: 12363Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 6 of 5 PageID #: 48711 D. Del. Case No. 1:12-CV-01138 (SLR) Page |2 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE parties have recently filed Motions for Summary Judgment regarding infringement (D.I. 146, 149) and JBTS has also filed a Motion for Summary Judgment of No Invalidity (D.I. 142). II. SUMMARY OF ARGUMENT 1. JHA’s § 103 argument fails because JHA has not presented even a prima facie case that any of the asserted claims are obvious. Even if it had, JHA’s asserted combinations do not disclose all limitations of the claims, and its motion ignores the many secondary considerations of nonobviousness present in the record. On this record, JHA cannot prove by clear and convincing evidence that the asserted claims are obvious. 2. JHA’s written description argument fails because it presents no evidence – much less clear and convincing evidence – that persons skilled in the art would not recognize in the disclosure of the ’003 Patent a description of the claimed inventions. Instead, JHA’s argument incorrectly focuses on software code, which it is not necessary to disclose, and one of the inventor’s qualifications, which are legally irrelevant. JHA’s § 112 argument finds no support in either fact or law, and should be rejected. 3. JHA makes a brand new § 101 argument, attempting for a sixth time to identify an “abstract idea” to which the asserted claims are purportedly directed. JHA’s new argument should be stricken as untimely disclosed. Even if permitted to proceed on its new theory, the asserted claims are not directed to JHA’s newly-proposed “abstract idea” as it fails to accurately describe the limitations of the claims. Further, even if they were directed to an abstract idea, the asserted claims are nevertheless appropriately limited and thus claim only patent-eligible subject matter. Finally, the asserted apparatus claims all easily pass the machine-or-transformation test. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 6 of 44 PageID #: 12364Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 7 of 5 PageID #: 48712 D. Del. Case No. 1:12-CV-01138 (SLR) Page |3 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE III. STATEMENT OF FACTS JBTS responds to JHA’s statement of undisputed facts as follows: Disputed Facts 1. Mr. Fulton does not and cannot rely on any “embodiment” of his ’052 patent “offered before 1996.” D.I. 139 at 5. In fact, the relevant Huntington Bank Smart Phone project was never commercialized and never got past the prototype stage. (Fulton Depo., Sep. 2, 2014, 157:6- 158:1). See JBTS-2023-2034. 2. JBTS disputes that Dr. Kursh has “showed that Jack Henry’s pre-1996 Cash Management product was in use by others well before the priority date of the ’003 Patent.” D.I. 139 at 5. Instead, Dr. Kursh apparently intends to rely on unspecified future testimony of certain JHA witnesses and documents which have not yet been presented to the Court or to JBTS. See D.I. 140-1, Exhibit J. JHA also relies on documents which have not been submitted to the Court and which appear to have a copyright date of 1997, well after the priority date of the ’003 Patent. See D.I. 140-1, Exhibit J. 3. JBTS disputes that Mr. Fulton’s patented system “had all the structural features of the ’003 claims … and performed almost all the functions claimed in the ’003 claims.” D.I. 139 at 5. 4. The Fulton patent does not disclose the limitation or restriction of claims 30, 102 and their dependent claims. (D.I. 143 at 30-32; Cheng Decl. at ¶¶ 10-13, ¶¶ 14-14). See JBTS-2624- 2648. 5. Mr. Fulton’s patented system did not send or receive electronic mail messages. (Fulton Depo., Sep., 2, 2014 at 212:1-4; Cheng Decl. at ¶ 17). See JBTS-2624-2648. 6. The Fulton patent does not disclose the “network computer” of claim 414 and its dependents. (Cheng Decl. at ¶ 20). See JBTS-2624-2648. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 7 of 44 PageID #: 12365Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 8 of 5 PageID #: 48713 D. Del. Case No. 1:12-CV-01138 (SLR) Page |4 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 7. JHA concedes that the Fulton patent also does not disclose the Internet transactions of claim 324, or the wireless communications device of claims 343 and 416. D.I. 139 at 5-6. 8. JBTS disputes that the old Cash Management system “had all the physical structures recited in the ’003 claims and performed virtually all of the claimed functions.” D.I. 139 at 5. 9. In fact, the old Cash Management system lacked the limitation or restriction of claims 30, 102 and their dependent claims. See D.I. 143 at 31-32 (citing Calman Depo, Sep. 16, 2014 Tr. at 170:22-24; 191:7-14). See JBTS-2018-2022. 10. The Cash Management system relied on by JHA had no bill payment functionality. (Donald Smith, Sleepy Hollow1 Tr. Mar. 9, 2010 at 1010:3-10). See JBTS-2001-2007. 11. Old Cash Management lacked the ability to perform interbank transfers. (Joe Nicholas Depo, May 2, 2014 Tr. at 92:10-93:6). See JBTS-2051-2060. 12. Old Cash Management allowed intrabank transfers, but even these could not be scheduled for the future or set to recur. (Joe Nicholas Depo, Mar. 6, 2014 Tr. at 164:10-21). See JBTS-2042-2050. 13. The purportedly prior art Cash Management system could not make tax payments. (Id., 172:22-173:2). See JBTS-2042-2050. 14. The old Cash Management system lacked the ability to send alerts to a user. (Donald Smith, Sleepy Hollow Tr. Mar. 9, 2010 at 1010:11-19)(“Q. No alerts at all? A. No.”) (see JBTS- 2001-2007); see also id. at 1012:9-18 (no sign-on alerts); see also (Joe Nicholas Depo, May 2, 2014 Tr. at 102:2-103:5) (see JBTS-2051-2060). 15. Old Cash Management lacked the ability to send electronic mail messages. (Donald Smith, Sleepy Hollow Tr. Mar. 9, 2010 at 1012:19-22). See JBTS-2001-2007. 1 Joao Bock Transactions Systems, LLC v. Sleepy Hollow Bank, Case No. 03 CV. 10199 (S.D. N.Y.) Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 8 of 44 PageID #: 12366Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 9 of 5 PageID #: 48714 D. Del. Case No. 1:12-CV-01138 (SLR) Page |5 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 16. Old Cash Management did not support the ‘web’ transaction type. (Joe Nicholas Depo, May 2, 2014 Tr. at 98:20-99:6; 100:1-14). See JBTS-2051-2060. 17. The pre-1996 version of Cash Management did not include multi-factor authentication. (Id. at 99:7-15). 18. Old Cash Management could not be used in a mobile environment. (Id. at 105:22-106:1). 19. Old Cash Management could not be used in a wireless environment. (Id. at 106:19-20). JHA does not appear to offer any separately identified “undisputed” facts concerning its § 101 patent eligible subject matter or its § 112 written description argument. JHA offers certain additional facts in opposition to JHA’s motion as set forth below. IV. ARGUMENT A. THE ASSERTED CLAIMS ARE NOT OBVIOUS 1. JBTS’s Motion to Strike For the Court’s convenience, JBTS is including in the present brief its arguments in support of JBTS’s concurrently-filed motion to strike. JBTS’s Motion outlines the precise relief it seeks, and the precise arguments and evidence which should be stricken. The arguments as to why this evidence should be stricken are set forth here. a. JHA’s Unsworn Expert Reports Should Be Stricken JHA has not submitted any admissible evidence in support of its obviousness argument. Instead, JHA has submitted only unsworn expert reports, which are not competent evidence on a motion for summary judgment. D.I. 140-1 (Kursh Report), 140-18 (Fulton Report); see Fowle v. C&C Cola, 868 F.2d 59, 67 (3d Cir. 1989) (citing Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970)(noting that an unsworn expert report is not competent evidence on a motion for summary Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 9 of 44 PageID #: 12367Case 1: 2-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 10 of 45 PageID #: 48715 D. Del. Case No. 1:12-CV-01138 (SLR) Page |6 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE judgment). JHA’s unsworn expert reports should be stricken as they are not competent evidence under Rule 56. In the past, this Court has allowed a party to correct a similar error by later submitting a short affidavit from the expert. Invista North America S.A.R.L. et al. v. M&G USA Corporation et al., 951 F.Supp.2d 626, 641 fn. 6 (D. Del. 2013), reconsideration denied by, 2013 WL 3624014 (D. Del. July 12, 2013). Here, even if such an affidavit were submitted, JHA’s expert reports should still be stricken as incomplete since they cite to and rely on evidence which itself has not been submitted into the summary judgment record. For example, JHA has failed to submit the evidence on which Dr. Kursh purportedly relies to demonstrate the operation of the Cash Management system, even though Cash Management is the primary reference for one of JHA’s obviousness arguments. In his chart applying Cash Management to the asserted claims, Dr. Kursh cites to the unspecified future testimony of Joseph Nicholas, Jon Henley and Don Smith concerning Cash Management for every claim limitation. See D.I. 140-1, Exhibit J. In many cases, this unspecified future testimony is the only evidence Dr. Kursh cites in support of his opinions of how Cash Management worked. See, e.g., id. at limitation 30(c); 30(i); 30(k); 102(c); 102(j); 122(b); 414(g). None of this testimony has been submitted to the Court on summary judgment, thereby preventing the Court from evaluating it and preventing JBTS from rebutting it. In the same chart, Dr. Kursh also relies on certain “legacy Cash Management documentation” (limitations 30(f)-(h), 30(j), 30(l), 31(b), 34(b)-(d), 102(d)-(f), 102(h)-(i), 102(k), 106(b)-(d), 317(b)-(i), 324, 414(b)-(f), 414(h), 414(k), 414(m), 422(b), 422(d)), but this documentation has been omitted from the summary judgment record.2 JHA cannot even present 2 Further, assuming JBTS has identified the correct documents, the “legacy Cash Management documentation” on which Dr. Kursh relies bears a copyright date of 1997. The priority date of the ’003 patent is at least August 8, 1996. JHA has submitted no evidence into the summary Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 10 of 44 PageID #: 12368Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 11 of 5 PageID #: 48716 D. Del. Case No. 1:12-CV-01138 (SLR) Page |7 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE a prima facie case that the asserted claims are obvious over JHA’s Cash Management system when most of the evidence describing the Cash Management system has never been presented to the Court. Dr. Kursh relies in his chart on several other pieces of evidence which are not before the Court. He relies on unspecified prior trial testimony concerning the Westar Bank Remote Banking product (limitations 30(b), 102(b), 317(b) and 414(b)). D.I. 140-1 at App. J. This testimony has not been presented to the Court, or even identified with enough specificity for JBTS to locate it. Dr. Kursh relies on Mr. Henley’s May 5, 2014 deposition testimony and Exhibit 6 thereto (limitations 30(b), 30(e), 30(m), 102(b), 102(g), 414(f)). D.I. 140-1 at App. J. This, too, has been entirely omitted from the summary judgment record. Dr. Kursh’s chart even includes references that are explicitly necessary for his obviousness combinations, but which are not present in the summary judgment record. For example, for asserted claim 34, Dr. Kursh combines the Cash Management system with the Blonder patent, but the Blonder patent has not been submitted to the Court. D.I. 140-1 at App. J. For asserted claim 343, Dr. Kursh combines Cash Management with a Byte.com article by Rex Baldazo, but that article has not been offered into the summary judgment record. D.I. 140-1 at App. J. For claim 414, Dr. Kursh relies on purportedly prior art Citrix systems, but no evidence of such systems has been submitted on summary judgment. D.I. 140-1 at App. J. Mr. Fulton’s unsworn expert report is similarly incomplete. Even Appendix A to Mr. Fulton’s own patent has been omitted from the summary judgment record, despite the fact that Mr. Fulton expressly relies on this Appendix as disclosing certain limitations of claim 30. D.I. 140-18 at p. 10. Mr. Fulton’s report relies on “the CCITT Recommendation X.25 Orange Book judgment record to establish that these documents are actually prior art, or that they describe a prior art system. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 11 of 44 PageID #: 12369Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 2 of 5 PageID #: 48717 D. Del. Case No. 1:12-CV-01138 (SLR) Page |8 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE in 1976,” but this reference has not been submitted to the Court. D.I. 140-18 at 6-7, 12, 17, 28. Mr. Fulton’s report also relies on “the Internet Engineering Task Force (“IETF”) Request for Comment (“RFC”) 791 Internet Protocol (“IP”) from 1981.” D.I. 140-18 at 7, 12, 17, 28. This reference, too, has been omitted from the summary judgment record. For claim 34, Mr. Fulton combines his patent with the Blonder patent and the Lawlor patent. D.I. 140-18 at 14-15. As previously noted Blonder is not in the summary judgment record. Neither is Lawlor, even though Mr. Fulton also relies on Lawlor to argue that claim 414 is obvious. D.I. 140-18 at 27. Short corrective affidavits from JHA’ experts cannot fix these glaring omissions. JHA should also not be permitted to submit short corrective affidavits or declarations because doing so would cause substantial prejudice to JBTS. The problem arises because JHA has not made clear, either in its brief or elsewhere, on which portions of these lengthy expert reports it relies for the present summary judgment motion. JHA’s experts should have submitted affidavits or declarations addressing only the issues relevant to JHA’s summary judgment motion. Alternatively, JHA could have identified in its briefing the portions of the expert reports on which it relied. JBTS would then know exactly what factual contentions it needed to rebut in order to overcome summary judgment. JHA’s failure to submit such affidavits has left JBTS at a loss as to what portions of these lengthy expert reports JBTS must rebut on summary judgment. For example, Dr. Kursh’s report contains a lengthy discussion entitled “Summary History of Financial Industry Technology and Security With Respect to the ’003 Patent.” D.I. 140-1 at 31- 47. This discussion may or may not be relevant to JHA’s obviousness argument. Must JBTS rebut every factual misstatement in this discussion? Dr. Kursh also has a section of his report directed to 35 U.S.C. § 101. D.I. 140-1 at 29-30. Therein, Dr. Kursh identifies a very different “abstract idea” than that presented in JHA’s motion for summary judgment. Id. at 30. Is JHA Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 12 of 44 PageID #: 12370Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 13 of 5 PageID #: 48 18 D. Del. Case No. 1:12-CV-01138 (SLR) Page |9 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE relying on this portion of Dr. Kursh’s report? Must JHA rebut this testimony to survive summary judgment? Mr. Fulton’s report also contains a “Background” section which may or may not be relevant to JHA’s present motion. Mr. Fulton’s report asserts that claim 30 is obvious over his Fulton patent alone. D.I. 140-18 at 7. This argument is nowhere in JHA’s brief, but is it part of the summary judgment record? Must JBTS rebut Mr. Fulton’s opinions concerning enablement (which are incorrectly labelled as opinions concerning written description)? D.I. 140-18 at 31-34. On the present record, JBTS cannot know. “Judges are not like pigs, hunting for truffles buried in briefs.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006)(quoting United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991)). JHA should not be permitted to bury the evidence on which it relies for summary judgment like truffles hidden amongst hundreds of potentially relevant pages of unsworn expert reports. b. JHA’s New Arguments And New References Should Be Stricken JHA’s Motion also presents a new obviousness argument that was never previously presented. Specifically, JHA appears to argue for the first time in its motion that certain features of the Stanford Federal Credit Union (“SFCU”) system can serve as the “limitation or restriction” of asserted claims 30, 102 and their dependent claims. D.I. 139 at 6-7, 28. Neither JHA nor its experts have ever previously disclosed this theory. On the contrary, Dr. Kursh previously opined that the Cash Management system combined with certain “Internet Banking Publications” renders the asserted claims obvious. Mr. Fulton opined that his patent combined with the same “Internet Banking Publications” renders the claims obvious. Neither expert, however, has ever offered the opinion that anything could be combined with the SFCU system, much less that any feature of the SFCU system can serve as the claimed limitation or restriction. To be clear, one of the “Internet Banking Publications” relied on by JHA’s experts does discuss Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 13 of 44 PageID #: 12371Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 14 of 5 PageID #: 48 9 D. Del. Case No. 1:12-CV-01138 (SLR) Page |10 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE the SFCU system at a high level. D.I. 140-6. Other articles in this group of “Internet Banking Publications” describe numerous other systems. Id. JHA’s experts chose to rely on the publications for their obviousness combinations, and did not rely on the numerous systems described in those publications. The experts are thus limited to the disclosures contained in the publications on which they relied, and should not now be permitted to supplement these publications with deposition testimony and other evidence regarding the systems discussed therein. Notably, neither Dr. Kursh nor Mr. Fulton made any reference in their expert reports to Mr. Tuohey or his deposition testimony. JHA cannot now introduce Mr. Tuohey’s testimony to alter its obviousness argument on summary judgment, particularly when JHA’s persons of skill in the art failed to do so in their expert reports. Both the new argument and the newly-cited Tuohey testimony should be stricken from the record. Further, if JHA’s unsworn expert reports are somehow admitted into the summary judgment record, certain references contained therein should be stricken as new. For example, Mr. Fulton’s report references “the CCITT Recommendation X.25 Orange Book in 1976.” D.I. 140-18 at 6-7, 12, 17, 28. This reference was not previously disclosed in JHA’s invalidity contentions, and appeared for the first time in Mr. Fulton’s report. Mr. Fulton’s report also relies on “the Internet Engineering Task Force (“IETF”) Request for Comment (“RFC”) 791 Internet Protocol (“IP”) from 1981.” D.I. 140-18 at 7, 12, 17, 28. This reference also appeared for the first time in Mr. Fulton’s report. Dr. Kursh’s report contains brand new references, including a previously undisclosed Byte.com article by Rex Baldazo (D.I. 140-1, App. J at claim 414) and a previously undisclosed reference to Citrix software (Id.). Even if JHA’s unsworn expert reports are somehow converted into competent summary judgment evidence, all of these new references should nevertheless be stricken as new. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 14 of 44 PageID #: 12372Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 15 of 5 PageID #: 48 0 D. Del. Case No. 1:12-CV-01138 (SLR) Page |11 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 2. JHA’s Prior Art Combinations Lack More Than Just The Internet JHA argues that “[t]he only things in the asserted claims missing from Cash Management and Fulton were using the Internet for transmission.” D.I. 139 at 5-6. This is simply incorrect. In fact, the purportedly prior art Cash Management system did not have the “limitation or restriction” of at least claims 30, 102 and their dependent claims. As explained in JBTS’s brief in support of its Motion for Partial Summary Judgment of No Invalidity, JHA and its experts have identified the “stop payment instruction” of Cash Management as the only restriction or limitation of that system. See D.I. 143 at 32-33 (citing JHA’s Final Invalidity Contentions, Ex. H at 2 (JBTS-0257) and Dr. Kursh’s Report, App. J at 2 (JBTS-0519 - 0520)). Of course, JHA’s own infringement expert has testified that a stop payment instruction cannot serve as the claimed limitation or restriction. See D.I. 143 at 31-32 (citing Calman Depo, Sep. 16, 2014 Tr. at 170:22- 24; 191:7-14) (see JBTS-2018-2022). JBTS has moved for summary judgment on this issue because no reasonable jury could find by clear and convincing evidence that Cash Management satisfied the limitation or restriction of claims 30, 102 and their dependents where JHA’s own expert concedes that it did not. D.I. 143 at 27-34. Even if JBTS’s motion is not granted, Mr. Calman’s testimony at least raises a disputed question of fact preventing a grant of summary judgment on JHA’s motion. The purportedly prior art Cash Management system also lacked other important limitations of the claims. The Cash Management system relied on by JHA had no bill payment functionality. (Donald Smith, Sleepy Hollow Tr. Mar. 9, 2010 at 1010:3-10; see JBTS-2001- 2007.), which is the primary accused functionality of the present-day NetTeller Cash Management system. Old Cash Management lacked the ability to perform interbank transfers, i.e., transferring funds to an account at a different financial institution, because of security risks. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 15 of 44 PageID #: 12373Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 16 of 5 PageID #: 48 21 D. Del. Case No. 1:12-CV-01138 (SLR) Page |12 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE (Joe Nicholas Depo, May 2, 2014 Tr. at 92:10-93:6; see JBTS-2051-2060.) It allowed intrabank transfers, but even these could not be scheduled for the future or set to recur as in the accused functionality of the present-day system. (Joe Nicholas Depo, Mar. 6, 2014 Tr. at 164:10-21; see JBTS-2042-2050.) The purportedly prior art Cash Management system could not make tax payments. (Id., 172:22-173:2) Unlike the present-day system, the old Cash Management system lacked the ability to send alerts to a user, which are required for claims 31, 106, 317 and its dependents, and 414 and its dependents. (Donald Smith, Sleepy Hollow Tr. Mar. 9, 2010 at 1010:11-19; see JBTS-2001-2007) (“Q. No alerts at all? A. No.”); see also id. at 1012:9-18; see also (Joe Nicholas Depo, May 2, 2014 Tr. at 102:2-103:5; see JBTS-2051-2060). It lacked the ability to send electronic mail messages as required by claim 34. (Donald Smith, Sleepy Hollow Tr. Mar. 9, 2010 at 1012:19-22; see JBTS-2001-2007.) The ‘web’ transaction type which exists in the present-day version of NetTeller Cash Management did not exist in the pre-1996 version of Cash Management, so it did not process “Internet transactions” as required by claim 324. (Joe Nicholas Depo, May 2, 2014 Tr. at 98:20-99:6; 100:1-14; see JBTS-20051-2060.) Importantly, the pre-1996 version of Cash Management did not include multi-factor authentication, which is important to every asserted claim. (Id. at 99:7-15). The original Cash Management could not be used in a mobile environment, as that functionality was not added until around 2010. (Id. at 105:22-106:1.) Nor could it be used in a wireless environment, as required by asserted claims 343 and 416. (Id. at 106:19-20). JHA does not even argue that these missing limitations are found in the “Internet Banking Publications,” so their absence from Cash Management is fatal to JHA’s obviousness argument. Mr. Fulton’s patent also lacked important claim limitations beyond just communications over the Internet or World Wide Web. First and foremost, the Fulton patent does not disclose the Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 16 of 44 PageID #: 12374Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 17 of 5 PageID #: 48 22 D. Del. Case No. 1:12-CV-01138 (SLR) Page |13 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE limitation or restriction of claims 30, 102 and their dependent claims. Mr. Fulton’s report identifies two features which he argues disclose the claimed limitation or restriction: “the Stop Payment transaction” and “the Fulton PIN.” D.I. 140-18 at 8 (Claim 30); at 16 (Claim 102). Again, as noted in JBTS’s Motion for Partial Summary Judgment of No Invalidity, JHA’s expert Mr. Calman contends that neither PINs nor stop payment transactions can serve as the limitation or restriction of claims 30, 102 and their dependent claims. D.I. 143 at 30-32. JBTS’s expert, Mr. Cheng, has also explained why the stop payment of Fulton cannot serve as the claimed limitation or restriction (Cheng Decl. at ¶¶ 10-13; see JBTS-2624-2648), and why the Fulton PIN also cannot serve as the claimed limitation or restriction. (Id. at Cheng Decl. ¶¶ 14-16; see JBTS- 2624-2648). Again, even if JBTS’s motion for summary judgment is not granted, Mr. Calman’s testimony and Mr. Cheng’s testimony at least create a material dispute of fact preventing the Court from entering summary judgment that the Fulton patent renders the asserted claims obvious. Mr. Fulton’s patent lacks other limitations of the asserted claims as well. Mr. Fulton’s patented system did not send or receive electronic mail messages as recited in claim 34. (Fulton Depo., Sep., 2, 2014 at 212:1-4; see JBTS-2023-2034; Cheng Decl.at ¶ 7; see JBTS-2624-2648.) Nor does the Fulton patent disclose the “network computer” of claim 414 and its dependents. (Cheng Decl.at ¶ 20; see JBTS-2624-2648.) Mr. Fulton’s report relies on Lawlor for the network computer, but Lawlor is not part of the obviousness combination JHA argues on for summary judgment. (D.I. 140-18 at 15). JHA concedes that the Fulton patent also does not disclose the Internet transactions of claim 324, or the wireless communications device of claims 343 and 416. JHA does not even argue these elements can be found in the “Internet Banking Publications,” meaning their absence is fatal to JHA’s obviousness arguments. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 17 of 44 PageID #: 12375Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 18 of 5 PageID #: 48 23 D. Del. Case No. 1:12-CV-01138 (SLR) Page |14 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 3. Adding Communications Over the Internet and World Wide Web is Not Obvious Substituting the internet in place of the direct-dial system of Cash Management or the x.25 network of Mr. Fulton’s patent was far from obvious. Here, the record demonstrates that the old Cash Management system was a direct-dial system, involving a dial-up connection directly from a user’s computer to the bank computer. (Donald Smith, Sleepy Hollow Tr. Mar. 9, 2010 at 1011:6-18; see JBTS-2001-2007.) JHA’s Brief accurately describes it as “using a personal computer connected to a bank’s host computer using a modem-to-modem phone line.” D.I. 139 at 5. There is thus no communications network at all in the old Cash Management system. JHA offers no explanation of how the “Internet Banking Publications” would enable a person of skill in the art to modify such a direct-dial system to operate over the Internet. It would also have been difficult for a person of skill in the art to modify Mr. Fulton’s system to operate on the Internet. This is at least because the “communications device” of Mr. Fulton’s system, the AT&T SmartPhone 2100, was not capable of accessing the internet and in fact lacked the processing power necessary to operate on the internet. (Fulton Depo., Sep. 2, 2014 at 128:7-129:1; see JBTS-2023-2034; Cheng Decl. at ¶ 18; see JBTS-2624-2648.) Mr. Fulton’s system could not simply be plugged into the Internet as the alleged “communications device” would have to be entirely redesigned to do so. Nor could the Internet Protocol (IP) simply be substituted in place of the x.25 communications network as Mr. Fulton’s report suggests. This substitution omits the transport layers necessary for sending data over the Internet or World Wide Web and simply would not work. (Cheng Decl. at ¶ 19; see JBTS-2624-2648.) Mr. Fulton testified at his deposition that he had never tried to move an x.25 system onto the Internet, and he did not know whether a person of ordinary skill would have been capable of such an integration in 1996. (Fulton Depo., Sep. 2, 2014 at 174:16-175:4; 267:19-23; see JBTS- Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 18 of 44 PageID #: 12376Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 19 of 5 PageID #: 48 24 D. Del. Case No. 1:12-CV-01138 (SLR) Page |15 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 2023-2034.) Mr. Fulton even testified that he was not aware of any circumstance where the Internet replaced an x.25 protocol network. (Id. at 236:9-16; see JBTS-2023-2034.) JHA does not even acknowledge these obstacles to modifying Mr. Fulton’s patent to operate on the Internet, much less explain how a handful of newspaper and magazine articles would enable a person of skill in the art in 1996 to overcome them. Nor does JHA offer any reason why a person of skill would want to modify these systems. Direct-dial systems of this type do not invoke the same security concerns as communications over the Internet or World Wide Web. (Joe Nicholas Depo, Mar. 6, 2014 at 159:11-160:3; see JBTS-2042-2050.) Mr. Nicholas testified that dial-up systems existed in a time “before we were concerned about security.” (Joe Nicholas Depo. May 2, 2014 at 32:3-34:22; see JBTS2051-2060.) Accordingly, “just a user ID and password” were considered adequate security measures for dial-up systems. (Joe Nicholas Depo., Mar. 6, 2014 at 32:3-11; see JBTS-2042- 2050.) Similarly, the x.25 communications protocol disclosed in Mr. Fulton’s patent was a virtual circuit, point-to-point network with substantially fewer security concerns than Internet communications. (Fulton Depo., Sep. 2, 2014 at 176:10-21; see JBTS-2023-2034.) Mr. Fulton testified that there were no technical problems with x.25, that it was “a perfectly fine protocol.” (Id. at 167:16-25; see JBTS-2023-2034.) In light of this evidence, it is not clear why a person of skill in the art in 1996 would have been motivated to modify either Cash Management or the Fulton system to operate over the Internet or World Wide Web to create the transaction security apparatuses of the asserted claims. Instead of addressing this evidence, JHA summarily argues that “the use of the internet in 1996 was obvious as a matter of law.” D.I. 139 at 25. This is simply not correct. The Federal Circuit has never held that the use of the Internet was obvious, as a matter of law, in 1996, in all Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 19 of 44 PageID #: 12377Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 20 of 5 PageID #: 48 25 D. Del. Case No. 1:12-CV-01138 (SLR) Page |16 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE contexts and for all purposes. The holdings on which JHA relies are actually for narrower. For example, in Soverain the Court held that “a person of ordinary skill could have adapted the CompuServe order command to known browser capabilities when these capabilities became commonplace.” Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1340 (Fed. Cir. 2013), amended on rehearing by, 728 F.3d 1332 (Fed. Cir. 2013), cert. denied, 134 S.Ct. 910, 187 L.Ed.2d 779 (2014).This is a very specific holding, and the same is not true for either Cash Management or Mr. Fulton’s patented system. In fact, Mr. Fulton’s patented system was never deployed at all, was never adapted to operate on the Internet, and by 1996 the project had been abandoned. (Fulton Depo., Sep. 2, 2014 at 157:6-158:1; 161:3-13; see JBTS-2023-2034.) Jack Henry was not even trying to modify Cash Management to operate over the internet, instead working throughout 1996 on the direct-dial, modem-to-modem version of Cash Management. (Cheng Decl. at ¶ 21; see JBTS-2624-2648.) JHA claims it “had been working since 1995 to develop an Internet-based banking system” (D.I. 139 at 22, fn. 27). Importantly, though, Jack Henry was not using Cash Management in those efforts. Mr. Henley testified that the high-level planning for a Jack Henry online banking solution didn’t even begin until March 1997. (Henley Depo., May 15, 2014, 153:12-25; 154:10-156:25; See JBTS-2035-2039.) Henley Exhibit 9; see JBTS-2040-2041.) Mr. Nicholas testified that he was hired in May 1997 to begin the development of Jack Henry’s online banking solution. (Nicholas Depo., Mar. 6, 2014, 30:1-17; see JBTS-2042-2050.) He did not start integrating Cash Management functionality into an online banking system until later that year. Id., 26:25-27:15. These facts are better evidence of the difficulty of adapting Cash Management to Internet communications than Dr. Kursh’s hindsight analysis more than 18 years later. Indeed, for old Cash Management, there was no network at all, rendering Soverain’s holding regarding substituting the internet for another network entirely Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 20 of 44 PageID #: 12378Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 21 of 5 PageID #: 48 26 D. Del. Case No. 1:12-CV-01138 (SLR) Page |17 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE inapposite. Moreover, Soverain cites to Western Union Co. v. MoneyGram Payment Systems, 626 F.3d 1361 (Fed. Cir. 2010), but the patents in that case had a priority date of October 26, 1999, years after the priority date of the ’003 Patent. Id. at 1364. Similarly, the patent in the Muniauction case was filed May 29, 1998. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326 (Fed. Cir. 2008). There, the Court also engaged in an extensive survey of prior art before concluding that “the use of the internet and web browser technology to conduct electronic auctions was well-established at the time the ‘099 patent application was filed.” Id. Again, this is a very specific holding based on an extensive factual record developed at trial. The same cannot be said here. JHA argues otherwise, but its Brief quoting Muniauction omits an important part of the quote – “The record in this case demonstrates …” The Federal Circuit has never said that the use of “modern Internet and web browser technology” is obvious as a matter of law in all contexts at all times. JHA has done nothing to show that “the record in this case demonstrates” that it would have been obvious for a person of skill in the art to modify the old Cash Management system, or Mr. Fulton’s patented system, to communicate over the Internet. 4. Secondary Considerations Even if JHA’s asserted prior art combinations did disclose all limitations of the asserted claims, and even if these combinations were technologically feasible by persons skilled in the art in 1996, summary judgment of obviousness should still be denied. This is at least because JBTS has identified numerous secondary considerations of nonobviousness that JHA has not even attempted to rebut. For example, prior failures of others demonstrate the nonobviousness of the inventions. JHA claims that it began working on an internet-based banking solution in 1995 (D.I. 139 at 27, fn. 22), began working to make Cash Management functionality available on the Internet in 1997 (Henley Depo., May 15, 2014, 153:12-25; 154:10-156:25; See JBTS-2035- Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 21 of 44 PageID #: 12379Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 22 of 5 PageID #: 48 27 D. Del. Case No. 1:12-CV-01138 (SLR) Page |18 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 2039.) Henley Exhibit 9; see JBTS-2040-2041; Nicholas Depo., Mar. 6, 2014, 30:1-17; see JBTS-2042-2050), but failed to launch the actual product until Fall 1998. (Nicholas Depo., May 2, 2014, 90:15-91:13; see JBTS-2051-2060; see also D.I. 139 at 4-5, fn. 6 (conceding that NetTeller Cash Management was “developed by Jack Henry in 1998 and thereafter.”)). Mr. Fulton’s patented system was an even bigger failure, never getting out of the prototype stage. (Fulton Depo., Sep. 2, 2014, 157:6-158:1; see JBTS-2023-2034.) Another secondary consideration supporting nonobviousness is skepticism of others. Here, for example, Morgan Stanley published “The Internet Report” in 1996, which identified several risks that might “crush the internet.” (Cheng Decl. at ¶ 20-24; see JBTS 2624-2648., Morgan Stanley “Internet Report”; see JBTS-2069-2390.) The Lawlor patent, relied on by JHA’s experts, contains several columns of text explaining why Internet-based banking was a failure, and argued that the financial industry needed to look for an alternative manner of conducting remote banking. (Cheng Decl. at ¶ 24-25; see JBTS-2624-2648; Lawlor excerpt; see JBTS-2649-2650). Several witnesses in this case have testified that user IDs and passwords were sufficient security in priority art banking systems, undermining the motivation to implement JBTS’s layered security approach. (Cheng Decl. at ¶¶ 26-30; see JBTS-2624-2648; Tuohey Depo, 78:1-7; see JBTS-2065-2068; Nicholas Depo, May 2, 2014, 32:3-34:22; see JBTS-2051-2060) Even government banking regulators did not catch up to the layered security approach of JBTS’s asserted claims until many years later. (Cheng Decl. at ¶¶ 31-33; see JBTS-2624-2648; E-Banking IT Examination Handbook from FFIEC, see JBTS-2622-2623; August 2003; JHA-DE-00035306-000001-12; FFIEC Supplement to Authentication in an Internet Banking Environment; see JBTS-2609-2621; Financial Institution Letter from FDIC, FIL50-2011, © June 29, 2011; see JBTS-2608; FFIEC’s Information Security IT Examination Handbook, © July 2006; see JBTS-2405-2532; Payment Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 22 of 44 PageID #: 12380Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 3 of 5 PageID #: 48728 D. Del. Case No. 1:12-CV-01138 (SLR) Page |19 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Card Industry (PCI) Data Security Standard: Requirements and Security Assessment Procedures, Version 2.0 © Oct. 2010; see JBTS-2533-2607.) These facts demonstrate that JBTS’s inventions were ahead of their time. Finally, JBTS’s patented inventions have been extensively licensed, demonstrating the commercial success of the inventions. (Cheng Decl. at ¶¶ 34-40; see JBTS- 2624-2648.) JHA’s motion does not address any of these secondary considerations, even though the Federal Circuit has held that failure to consider secondary considerations is reversible error. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075 (Fed. Cir. 2012)(reversing district court for reaching conclusion of obviousness before considering objective indicia of nonobviousness). JHA’s Motion on obviousness can and should be denied for this reason alone. B. THE PATENT-IN-SUIT CONTAINS A WRITTEN DESCRIPTION OF THE ASSERTED CLAIMS 1. The Written Description Requirement Does Not Require Disclosure of Algorithms JHA’s Motion misstates the law of written description. It is correct that a patent must contain a written description of the invention. 35 U.S.C. § 112, ¶1. The written description requirement is separate and distinct from the enablement requirement. See Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2011). It ensures that “the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-1345 (Fed. Cir. 2005). The Federal Circuit has stated that the relevant inquiry- "possession as shown in the disclosure"- is an “objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 23 of 44 PageID #: 12381Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 24 of 5 PageID #: 48729 D. Del. Case No. 1:12-CV-01138 (SLR) Page |20 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE invented the invention claimed.” Ariad, 598 F. 3d at 1351. This inquiry is a question of fact: “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citation omitted). JHA ultimately must provide clear and convincing evidence that persons skilled in the art would not recognize in the disclosure of the ’003 Patent a description of the claimed invention. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (citing Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1072-1073 (Fed. Cir. 2005)). “[T]he hallmark of written description is disclosure.” Ariad, 598 F.3d at 1351. A disclosure satisfies the written description requirement when it “allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The written description does not necessarily require examples. Ariad, 598 F.3d at 1352. It does not necessarily require actual reduction to practice. Id.; Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012). Written description compliance does not require any recitation of known structure. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1367 (Fed. Cir. 2006). Nor does it require any particular form of disclosure. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). Here, JHA argues that the asserted claims of the ’003 Patent are invalid because the specification does not contain “an algorithm or software” for certain functions of the claimed processing device. D.I. 139 at p. 34; see also id. at 35 (the “specification lacks any teaching of a sufficient algorithm or software code to meet the written description requirement …”). The Federal Circuit has repeatedly rejected this argument, specifically holding that the written Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 24 of 44 PageID #: 12382Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 25 of 5 PageID #: 48730 D. Del. Case No. 1:12-CV-01138 (SLR) Page |21 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE description requirement does not require the disclosure of algorithms or software code. See, e.g., Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997); In re Hayes Microcomputer Products, 982 F.2d 1527, 1537-1538 (Fed. Cir. 1992). In Hayes Microcomputer, the Federal Circuit held that a description of the “function” of firmware was sufficient to comply with the written description requirement, and that the actual programming need not be disclosed: One skilled in the art would know how to program a microprocessor to perform the necessary steps described in the specification. Thus, an inventor is not required to describe every detail of his invention. An applicant's disclosure obligation varies according to the art to which the invention pertains. Disclosing a microprocessor capable of performing certain functions is sufficient to satisfy the requirement of section 112, first paragraph, when one skilled in the relevant art would understand what is intended and know how to carry it out. Id. at 1534-1535. The Federal Circuit reached a similar conclusion in Fonar Corp. v. Gen. Elec. Co., holding that “normally, writing code for … software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.... Thus, flow charts or source code listings are not a requirement for adequately disclosing the functions of software.” 107 F.3d at 1549. Accordingly, contrary to JHA’s argument, the specification of the ’003 Patent need not disclose any specific software for the claimed processing device in order to satisfy the written description requirement. 2. The Specification Discloses Algorithms Although not strictly necessary, the specification of the ’003 patent actually does disclose algorithms for performing the functions of the claimed processing device. Importantly, “an algorithm can be expressed in many forms, including flow charts, a series of specific steps, mathematical formula, prose and so on.” Triton Tech of Texas, LLC v. Nintendo of America, Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014). Here, as JHA’s motion concedes, Mr. Joao during his deposition directed JHA to at least four different figures and seven columns of text where Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 25 of 44 PageID #: 12383Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 26 of 5 PageID #: 487 1 D. Del. Case No. 1:12-CV-01138 (SLR) Page |22 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE various algorithms for the claimed processing device are disclosed. D.I. 139 at 35, Fn. 31; D.I. 140-11, Stitt Decl. Ex. 11. The cited columns of text contain numerous disclosures in prose of the algorithms for the claimed processing device. See, e.g., D.I. 1-1, col. 24:60-28:65 (explaining the steps of Figures 6A-6C). The referenced figures are flow charts of the exact type which have repeatedly been found by the Federal Circuit to sufficiently disclose algorithms for processing devices. See D.I. 1-1, figures 3A-C; 6A-C. At the very least, these portions of the specification undoubtedly disclose the functions of the processing device, which is sufficient under Federal Circuit precedent to satisfy the written description requirement. Incredibly, JHA’s Motion entirely ignores these extensive disclosures. Not once does JHA point to any text or figure in the specification and explain why a person skilled in the art would not recognize it as a description of the claimed processing device. JHA does criticize the specification for disclosing “widely known data processing and/or software routines, which are known to those skilled in the art.” D.I. 139 at p. 35 (citing col. 25:18-23). JHA admits that this disclosure serves to satisfy the enablement requirement for the claimed processing device, a concession JBTS hereby accepts. D.I. 139 at p. 35. But JHA’s contention that such a disclosure cannot serve to satisfy the written description requirement is simply incorrect. On the contrary, referring to prior art in satisfying the written description requirement is not only permissible, it is encouraged. That which is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986); see also Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005) (“The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution.”). Prior art may help bridge gaps in disclosure, as Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 26 of 44 PageID #: 12384Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 27 of 5 PageID #: 48732 D. Del. Case No. 1:12-CV-01138 (SLR) Page |23 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE written description compliance depends in part on the scope and content of the prior art, the maturity of the technical field, and the predictability of the technology at issue. Ariad, 598 F.3d at 1351. Accordingly, “a patentee can rely on information that is ‘well-known in the art’ to satisfy written description.” Streck, Inc., 665 F.3d at 1285. 3. JHA’s Failure To Offer Expert Testimony On Written Description Is Fatal JHA offers no testimony from the perspective of a person of ordinary skill in the art addressing the written description requirement. No such testimony is cited in JHA’s Motion, and none is included in JHA’s attached expert reports.3 As noted above, compliance with the written description requirement is analyzed from the perspective of the hypothetical person of ordinary skill in the art to which the claimed subject matter pertains. See In re Smith, 481 F.2d 910, 914 (C.C.P.A. 1973) (“Compliance with the first paragraph of § 112 is adjudged from the perspective of the person skilled in the relevant art.”); Ariad, 598 F. 3d at 1351 (written description is evaluated “from the perspective of a person of ordinary skill in the art.”). JHA does not offer any testimony from a person of ordinary skill in the art explaining, for example, how Figures 6A-C and the accompanying columns of text fail to satisfy the written description requirement. Absent testimony from a person of skill in the art, JHA cannot show by clear and convincing evidence that the asserted claims fail the written description requirement. In evaluating indefiniteness, the Federal Circuit has held several times that determining whether, for a specific function, the 3 Mr. Fulton’s report includes a section entitled “Written Description of the ’003 Patent,” but this section addresses whether claim 122 is enabled, repeatedly referring to “substantial” and “undue” experimentation. D.I. 140-18 at pp. 31-34. Appendix B to Mr. Fulton’s report further makes clear, in a section entitled “B. Enablement: Lack of Written Description,” that his opinions are directed to the enablement requirement. Dr. Kursh’s report contains a section entitled “Enablement (35 U.S.C. § 112, Nautilus),” which does not address the written description requirement. D.I. 140-1 at pp. 25-29. Notably, neither expert addresses either the legal standard for the written description requirement or whether any portion of the specification does or does not satisfy the requirement. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 27 of 44 PageID #: 12385Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 28 of 5 PageID #: 48733 D. Del. Case No. 1:12-CV-01138 (SLR) Page |24 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE description in the specification is adequate from the viewpoint of a person of ordinary skill in the field of the invention requires evidence from a qualified expert. See Telecordia Technologies, Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010); Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338-1339 (Fed. Cir. 2008); see also Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (“The defendants have directed us to no evidence that a programmer of ordinary skill in the field would not understand how to implement this function.”) These cases involve computer-implemented means-plus-function limitations, and thus arise in the context of 35 U.S.C. § 112, ¶ 6. They are nevertheless instructive. If expert testimony is required to determine whether a specification adequately discloses an algorithm for a computer implemented means-plus-function limitation under § 112, ¶ 6, similar testimony should be required to determine whether a specification meets the less exacting requirements of § 112 ¶ 1. JHA’s failure to present such testimony dooms its written description argument. 4. Mr. Joao’s Qualifications Are Irrelevant JHA’s real argument seems to be that Mr. Joao lacked the experience or qualifications necessary to provide an adequate written description of the inventions of the ’003 Patent. As an initial matter, this argument is factually incorrect. Mr. Joao actually testified at his deposition that he previously “programmed computers that were used on fighter jets” and would have been capable of programming a bank computer to perform the functions recited in is patent. (Joao Depo., Mar. 18, 2014 Tr. at 259:24 – 260:8. See JBTS-2010-2017.).4 Given that Mr. Joao could have actually written the relevant software, he was certainly capable of meeting the lower standard of providing an adequate written description of his claimed inventions. Even if Mr. Joao 4 Perhaps this is why JHA chose not to include Mr. Joao’s actual deposition testimony, instead submitting only the text and Figures to which Mr. Joao referred during his deposition. D.I. 140- 11. JBTS has submitted the entire relevant portion of the transcript for the Court’s consideration. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 28 of 44 PageID #: 12386Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 29 of 5 PageID #: 48734 D. Del. Case No. 1:12-CV-01138 (SLR) Page |25 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE had been incapable of writing such software, however, JHA’s argument is legally incorrect. Anyone who invents or discovers a new and useful process, machine, manufacture or composition of matter is qualified to be an inventor, regardless of their prior resume. 35 U.S.C. § 101. Neither the written description requirement nor any other patent statute imposes a minimum level of skill or qualification for inventors, and inventors need not have any particular skill in the field of their invention. To the contrary, the second sentence of 35 U.S.C. § 103(a) arguably prohibits a “minimum qualifications” requirement for inventorship. 35 U.S.C. § 103(a) (“Patentability shall not be negated by the manner in which the invention was made.”) JHA’s argument that Mr. Joao was incapable of inventing the asserted claims is thus factually incorrect and legally irrelevant. C. THE ASSERTED CLAIMS ARE DIRECTED TO PATENT ELIGIBLE SUBJECT MATTER 1. JHA’s Newly-Proposed “Abstract Ideas” Should Be Stricken Prior to filing its summary judgment motion, JHA had offered five different versions of the “abstract idea” to which the asserted apparatus claims are purportedly directed. JHA’s Final Invalidity Contentions contained three different “abstract ideas,” and its expert reports on invalidity contained two more. See Final Invalidity Contentions, July 29, 2014 at pp. 19-20 (See JBTS-001-0054); Kursh Report, D.I. 140-1 at pp. 9, 29-30. Relying on these disclosures, JBTS’s expert Mr. Cheng addressed all five proposed “abstract ideas” in his rebuttal report. See JBTS- 0638-0671.) There, he explained in detail why each proposed “abstract idea” was an inappropriate description of the asserted claims. Id. Again relying on JHA’s disclosures, JBTS’s counsel asked Dr. Kursh at his deposition about his proposed abstract ideas. Kursh Depo., Sep. 5, 2014 at 243:3-247:6. See JBTS-2061-2064. JBTS then filed a motion for summary judgment Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 29 of 44 PageID #: 12387Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 30 of 5 PageID #: 48735 D. Del. Case No. 1:12-CV-01138 (SLR) Page |26 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE that the asserted claims were not directed to any of JHA’s then-proposed “abstract ideas.” D.I. 143 at § VI.D. Unbeknownst to JBTS, JHA was abandoning its prior invalidity contention and secretly developing a new one. In its present motion, JHA makes a sixth attempt to identify the abstract idea to which the asserted claims are purportedly directed. Indeed, JHA now argues for the first time that the asserted claims are actually directed to one of two different abstract ideas. JHA even argues that some asserted claims may be directed to both of these newly-proposed abstract ideas. Its current proposal is thus really more of a menu of supposedly “abstract ideas” from which it may later select. This newly proposed menu of abstract ideas is being offered for the first time after the close of fact discovery, after JHA submitted its final invalidity contentions, after the parties exchanged expert reports, after experts have been deposed and after JBTS filed its motion for summary judgment. The prejudice to JBTS in allowing JHA’s new argument is obvious. Because of JHA’s shifting-sands approach, JBTS has not had the opportunity to depose either Mr. Fulton or Dr. Kursh on these new “abstract ideas.” JBTS’s expert has not had an opportunity to offer his opinions in response. Moreover, JBTS has lost the opportunity to address this new “abstract idea” in its motion for summary judgment. JHA should not be permitted to change its § 101 argument so fundamentally this late in the game. Instead, its new argument should be stricken. Moreover, by adopting this newly-proposed, modular, menu of “abstract ideas,” JHA has abandoned its five previously-proposed “abstract ideas.” The Court should thus grant JBTS’s motion for summary judgment that the asserted claims are not directed to any of those five abstract ideas, since the point is no longer disputed. If JHA’s newly-proposed “abstract idea” is stricken as untimely disclosed, JHA will no longer have a viable contention that the asserted Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 30 of 44 PageID #: 12388Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 31 of 5 PageID #: 48736 D. Del. Case No. 1:12-CV-01138 (SLR) Page |27 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE claims are directed to patent ineligible subject matter. The Court can thus grant JBTS’s motion in its entirety and find that the claims are not invalid for claiming patent-ineligible subject matter under 35 U.S.C. § 101. 2. The Asserted Claims Are Not Directed To JHA’s Sixth Proposed “Abstract Idea” Even if the Court does not strike JHA’s new contention as untimely, it should nevertheless find that the asserted claims are not directed to any of JHA’s newly-proposed “abstract ideas.” JHA’s proposal fails to accurately describe the claims. Even if it did, JHA’s proposed “ideas” are not “abstract” under the Supreme Court’s Alice test. First, JHA asserts that claims 30, 102 and 122 are directed to the “abstract idea” of “comparing a bank transaction (a check) to account rules or limits.” (D.I. 139 at 12.) JHA’s proposal does not accurately characterize claim 30. Claim 30 is not directed to all bank transactions, nor is it limited to checks. It is directed to “bank transaction[s] involv[ing] a withdrawal from a checking account or a cashing of a check.” D.I. 1-1, col. 47:22-24. JHA’s proposal similarly fails to accurately describe claims 102 and its dependent claim 122. Those claims are directed to “account[s] … utilized in transactions involving the purchase of good and services,” are not limited to bank transactions, and are certainly not limited to checks. D.I. 1-1, col. 55:12-14. More importantly, JHA’s proposal ignores what may be the most important element of these claims – that the “limitation or restriction” comes from the “communications device associated with an individual account holder.” D.I. 1-1 col. 47:27-30. The limitation or restriction is transmitted over the Internet or World Wide Web, automatically received by the receiver, automatically stored by the memory device, and utilized in processing the bank transaction or authorization request. D.I. 1-1 col. 47:19-43; col. 55:10-31. JHA’s proposal ignores that the account holder is the source of the “limitation or restriction,” and further ignores Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 31 of 44 PageID #: 12389Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 32 of 5 PageID #: 48737 D. Del. Case No. 1:12-CV-01138 (SLR) Page |28 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE that the account holder did not have to appear at the bank, or physically sign anything, or even speak to anyone at the bank, in order to apply the limitation or restriction. Instead, the limitation or restriction is sent over the Internet or World Wide Web and can thus be sent from anywhere, and is used in the account “automatically” without further human intervention. That is a very different concept than the kinds of “account rules or limits” discussed in JHA’s cited prior art. It is not merely using a computer to accelerate an ineligible mental process as JHA claims. D.I. 139 at 13. These claims use new and novel machines to give the account holder more control over their account than they had with prior art banking systems. JHA next argues that the “abstract idea” of the remaining asserted claims is “advising the account owner of the action or requesting approval.” D.I. 139 at 12. Again, JHA’s proposal fails to accurately describe the asserted claims. In fact, none of the asserted claims require “requesting approval” from an account holder. Nor do any of the asserted claims require “advising the account owner of the action.” Claims 31 and 106 recite a signal which “contains information regarding the banking transaction.” D.I. 1-1, col. 47:48-49; 55:42-43. Claim 317 and its dependent claims recite that the communication device “provides information … regarding the transaction.” D.I. 1-1, col. 74:27-29. Similarly, claim 414 and its dependent claims recite that “information regarding the banking transaction” is transmitted. D.I. 1-1, col. 83:35-37. Providing information regarding a transaction is not necessarily “advising the account owner of [an] action,” and is a far cry from “requesting approval” of the transaction. Those may satisfy the claim limitations, but they are certainly not required. Moreover, JHA’s proposal once again ignores that, in every relevant claim, the information regarding a transaction is sent over the Internet or World Wide Web to a communications device associated with an individual account holder. Again, this information is conveyed conveniently to the account holder, without having Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 32 of 44 PageID #: 12390Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 33 of 5 PageID #: 48738 D. Del. Case No. 1:12-CV-01138 (SLR) Page |29 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE to appear at the bank, without speaking to a bank employee, and without having to wait for a monthly statement to arrive in the mail. These claims are thus using new and novel machines to give account holders ready access to account information, access which was not available with prior art banking systems. JHA has attempted six different times now to identify an abstract idea to which the asserted claims are purportedly directed. That six different proposals were necessary is itself telling. JHA’s most recent attempt does not accurately characterize the limitations of the claims and ignores numerous important aspects of the claims which make the inventions advantageous over the prior art. JHA’s newly-proposed abstract idea should be rejected for these reasons. There is another reason JHA’s proposal should be rejected – it does not contain an “idea” that is “abstract.” Instead, both parts of JHA’s modular proposal recite actions – “comparing” and “advising” – which are not ideas at all. The actions of the asserted claims are performed by the claimed apparatuses, and are not in any way abstract. Notably, the Supreme Court has carved out three exceptions to the broad statutory categories of patent eligible subject matter, namely that “laws of nature, physical phenomena, and abstract ideas” may not be patented. Bilski v. Kappos, 561 U.S. 593, ___, 130 S.Ct. 3218, 3225, 177 L.Ed.2d 792 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). Even if JHA’s proposal accurately described the claims, and even if it stated an “idea” instead of an action, the stated “idea” here is not “abstract.” The actions of (i) comparing checks to account rules or limits and (ii) notifying account holders of the action taken are not akin to a law of nature, or a physical phenomenon, or an abstract idea of the type the Supreme Court has found unpatentable. To the extent JHA’s proposal even states idea, they are concrete and not abstract. Notably, under Federal Circuit law, the mere fact that the apparatuses of the asserted claims “generate” a “signal” is by itself enough Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 33 of 44 PageID #: 12391Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 4 of 5 PageID #: 48739 D. Del. Case No. 1:12-CV-01138 (SLR) Page |30 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE to demonstrate that the claims are directed to machines, not abstract ideas. In re Nuijten, 500 F.3d 1346, 1356 fn. 4 (2007) (“An apparatus that generates the signal is of course a machine.”)(emphasis original). JHA’s proposed “abstract ideas” must be rejected. 3. Even if Directed To An Abstract Idea, The Asserted Claims Would Still Be Patentable Even if the claims were somehow found to be directed to an abstract idea, they would nevertheless still be patentable. This is because, under step two of the Mayo framework, the limitations of the asserted claims transform the claim to such an extent that it nevertheless claims only subject matter that is patentable. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. __, 134 S.Ct. 2347, 2355, 189 L.Ed.2d 296 (2014). a. The Asserted Claims Require More Than A General Purpose Computer JHA argues that the asserted claims recite no more than a generic computer. D.I. 139 at 13. This is incorrect. There is nothing vague about the claims, each of which describes detailed requirements for a particular machine. Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1348-1349 (Fed. Cir. 2014) (“claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’” quoting Burr v. Duryee, 68 U.S. 531, 570, 1 Wall. 531, 17 L.Ed. 650 (1863)); In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009). Even where otherwise directed to an abstract idea, claims have nevertheless been found valid under 35 U.S.C. § 101 where they “explicitly require[d] the use of a particular machine.” SiRF Technology, Inc. v. International Trade Com’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Moreover, even claims directed to the abstract idea of “verifying transaction information” have been found to be patent-eligible where the claim transformed the abstract idea into something with “concrete effect in the field of electronic communications.” Card Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 34 of 44 PageID #: 12392Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 35 of 5 PageID #: 48740 D. Del. Case No. 1:12-CV-01138 (SLR) Page |31 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Verification Solutions, LLC v. Citigroup Inc., Case No. 1:13-cv-06339, 2014 WL 4922524, *5 (N.D. Ill. Sep. 29, 2014). Here, many of the asserted claims expressly recite very specific computers. Claim 317 and its dependent claims recite a “central transaction processing computer,” which the Court has construed as “a computer through which banking or other transactions are processed.” D.I. 124 at 9-10. JHA does not even argue that he many functions of the central transaction processing computer identified in the specification could be performed by any generic computer available in 1996. Claim 414 and its dependent claims recite a “network computer,” which under the Court’s claim construction is a category of devices which expressly excludes certain general purpose computers. D.I. 124 at 12 (“A ‘network computer’ as used, therefore, is distinguishable from a personal computer.”) Dependent claims 343 and 416 recite that the claimed communications device is a wireless device, which again is a specific category of devices and not just a general purpose computer. These claims undoubtedly disclose more than a general purpose computer. Even the computers of claims 30 and 102 are not “general purpose computers.” As JHA’s motion notes, there is more to these claims than a processing device, a memory device, a receiver and a transmitter. As JHA points out, the specification makes clear that the “processing device” and “memory device” of the asserted claims are part of a “central processing computer” programmed at least in part with known bank processing software. D.I. 139 at 21-23; D.I. 1-1, col. 25:17-24. JHA incorrectly argues that the identified software is generic. But this is hardly the kind of software one would expect to find on any generic computer in 1996. Nor would one expect any general purpose computer in 1996 to even have the processing power and memory necessary to operate bank processing software. Instead, the bank processing software alone demonstrates that the claimed apparatus is a special purpose, not general purpose, computer. Mr. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 35 of 44 PageID #: 12393Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 36 of 5 PageID #: 48741 D. Del. Case No. 1:12-CV-01138 (SLR) Page |32 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Fulton’s expert report further illustrates the point. There, he argues that “every computer in a transaction processing environment” would have certain structures of the asserted claims. D.I. 140-18 at ¶¶ 25-28; see also id. at ¶ 18 (describing computer systems “in a commercial transaction processing environment”). But computers “in a transaction processing environment” are not general purpose computers. They are necessarily special purpose computers, specially adapted to the transaction processing environment. JHA argues that the Planet Bingo case is analogous, in that the asserted claims “do not claim” the bank processing software. D.I. 139 at 22 (citing Planet Bingo, LLC v. VKGS LLC, 2014 WL 4195188 (Fed. Cir. 2014)). JHA contradicts its own argument, though, by later conceding that “[t]he logical operations of the ‘processing device,’” which are performed in part by the bank processing software identified in the specification, “are stated claim limitations.” D.I. 139 at 38. JHA’s later argument is correct – the bank processing software identified in the specification performs in part the claimed functions of the processing device, thus demonstrating that the claimed devices are special purpose computers. Finally, the asserted claims recite a number of technologies that were far from conventional in 1996. For example, it was not at all conventional in 1996 for a bank’s memory device to automatically accept a limitation or restriction directly from an account holder’s communications device, as recited in claims 30 and 102. Cheng Decl., JBTS MSJ, ¶¶ 49-50. D.I. 144-5, JBTS-0655 - 0656. Indeed it was far more common for a bank to define limitations and restrictions for all account holders. Id., ¶ 50. As another example, it was not at all conventional in 1996 for a bank’s computer to transmit information regarding a transaction to an account holder’s communications device as recited in claims 31, 34, 106, 317 and its dependents and 414 and its dependents. It was certainly not conventional in 1996 for a bank’s computer to Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 36 of 44 PageID #: 12394Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 37 of 5 PageID #: 487 2 D. Del. Case No. 1:12-CV-01138 (SLR) Page |33 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE communicate with an account holder’s communications device over the Internet or the World Wide Web as required by all asserted claims, or to process Internet transactions as required by claim 324. Nor was it conventional for a bank’s computer to send an electronic mail message as required by claim 34, or to communicate with a wireless device as required by claims 343 and 416. Id. at ¶¶ 50. b. The Asserted Claims Cannot Be Infringed By Mental Steps JHA argues that the asserted claims cover no more than mental steps previously performed by humans. To illustrate this, JHA offers as an example a conversation between Mr. Ashley, a bank teller, and Ms. Samuels, an account holder. This example entirely fails to prove that the asserted claims are directed to mental steps, primarily because this example would not infringe the asserted claims. For claims 30 and 102, when Ms. Samuels asks Mr. Ashley to stop payment on Check No. 235, that is not a “limitation or restriction” according to JHA’s own expert Mr. Calman. Calman Depo, Sep. 16, 2014 Tr. at 170:22-24; 191:7-14); See JBTS-2018- 2022.)Even if it were, the limitation has not been transmitted from a personal communications device associated with Ms. Ashley, has not been transmitted to a receiver on or over the Internet or World Wide Web, and has not been received automatically or stored automatically since Mr. Ashley hearing and memorizing the request is by definition human interaction. Nor does Mr. Ashley “generate” an electromagnetic “signal containing information for allowing or disallowing the banking transaction” as required by the Court’s claim construction. For claim 317, Mr. Ashley’s eyes do not input or enter transaction information into an apparatus. Mr. Ashley’s mind does not “generate” an electromagnetic “signal corresponding to the transaction,” and doesn’t do so “independently of the central transaction processing computer.” Mr. Ashley certainly does not “transmit” electromagnetic signals to “a communications device associated with” Ms. Samuels Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 37 of 44 PageID #: 12395Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 38 of 5 PageID #: 48743 D. Del. Case No. 1:12-CV-01138 (SLR) Page |34 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE on or over the Internet or World Wide Web. A person’s mind cannot, of course, send signals over the Internet to pagers, computers, televisions, watches, faxes and the like. Similarly, for claim 414, Mr. Ashley’s mind cannot “generate” an electromagnetic “signal containing information regarding a banking transaction,” cannot transmit that signal to a network computer in real time, and cannot transmit the information regarding the banking transaction to a communications device associated with Ms. Samuels on or over the Internet or World Wide Web. c. The Asserted Claims Do Not Preempt An Abstract Idea Even accepting JHA’s newly-proposed abstract ideas, and assuming the claims do not add enough to make them patentable, the claims do not entirely preempt the public from practicing that abstract idea, the primary concern of the Supreme Court’s Mayo test. Alice, 134 S.Ct. at 2354-2355. The question to be answered with respect to preemption is whether the claims provide substantial limitations so that the patent does not cover all of the abstract idea. Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013). “The second step in the § 101 analysis requires determining whether ‘additional substantive limitations ... narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.’” Card Verification Solutions, 2014 WL 4922524 at *5 (quoting Accenture Global Servs., 728 F.3d at 1341 (internal citations and quotation marks omitted)). The asserted claims clearly do not preempt the public from practicing JHA’s proposed abstract ideas. Here, JHA has attempted to broadly define the “abstract idea” to which the asserted claims are directed as “comparing a bank transaction (a check) to account rules or limits” and “advising the account owner of the action or requesting approval” of the transaction. But the broader the Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 38 of 44 PageID #: 12396Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 39 of 5 PageID #: 48744 D. Del. Case No. 1:12-CV-01138 (SLR) Page |35 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE abstract idea, the harder it is to prove that the claims entirely preempt the public from practicing the abstract idea. It is difficult to see how the claims of the ’003 Patent could entirely preempt the public from practicing JHA’s broad abstract ideas, either alone or certainly not in combination. Indeed, as JHA has pointed out, the general concepts of comparing bank transactions to rules or limits and advising account owners of actions on their account predates the application that resulted in the ’003 Patent. JHA’s broad formulation of the alleged “abstract idea” leads to the conclusion that there are numerous ways to provide banking transaction security without infringing the ’003 Patent. JHA’s own Mr. Ashley/Ms. Samuels scenario provides numerous examples of how the public could practice JHA’s “abstract ideas” without infringing the claims of the ’003 Patent. There are other simple ways to avoid infringing the asserted claims while still practicing JHA’s newly-proposed abstract ideas. For example, a bank could communicate with its account holders in person, by mail, or via live customer service representatives over the telephone without infringing. Banks could require that the claimed limitations or restrictions be entered by bank employees, rather than coming from an account holder’s communications device, and thereby avoid infringement. A bank could use direct-dial, modem-to-modem communications, or the then-conventional x.25 communications network, to communicate with its account holders rather than the Internet or World Wide Web. For some dependent claims, all that is required to avoid infringement is the use of a wired, and not wireless, device. In sum, there are many ways to implement JHA’s newly-proposed abstract ideas without infringing a wide variety of the asserted claims. It cannot be said, then that the asserted claims preempt the public from practicing the claimed invention. The asserted claims are therefore patentable under step two of the Alice test. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 39 of 44 PageID #: 12397Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 40 of 5 PageID #: 48745 D. Del. Case No. 1:12-CV-01138 (SLR) Page |36 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE 4. The Machine-Or-Transformation Test Is Inapplicable JHA’s Brief correctly notes that the machine or transformation test was used by the Supreme Court to determine whether process claims are patent-eligible. D.I. 139 at 9. JHA’s Brief also correctly notes that the asserted claims – in fact, all claims of the ’003 Patent – are apparatus claims. Apparatus claims are, by definition, directed to the statutory category of “machine” as set forth in 35 U.S.C. § 101. Step 1 of the machine-or-transformation test asks whether the claims are “tied to a particular machine or apparatus.” The asserted claims obviously and easily pass this test, since they expressly claim a machine. JHA appears to argue here that the limitations of the asserted claims recite no more than a generic computer. This is incorrect, for all the reasons set forth above in Section C.3.a, “The Asserted Claims Require More Than A General Purpose Computer.” There is no need to repeat those arguments here. D. JHA’s COLLATERAL ESTOPPEL ARGUMENT IS IMPROPER 1. JHA’s Affidavits on Collateral Estoppel Should be Stricken a. Mr. Fulton’s Affidavit Should be Stricken as Untimely Disclosed Mr. Fulton provides new testimony that was not disclosed in his Invalidity Expert Report served August 18, 2014. D.I. 140-13. Because he failed to disclose this testimony regarding the ‘725 patent and its claim terms, and the ’725 patent litigation in the Southern District of New York, and his opinion as to similarities to the language of the Asserted Claims of the ’003 Patent, his testimony should be stricken. For example, Mr. Fulton’s new declaration sets forth a comparison and analysis of this Court’s claim constructions in view of the claim constructions that issued during the ’725 Patent litigation. See D.I. 140-13, ¶¶ 16-27. Mr. Fulton provides additional evidence in the form of a chart in support of his affidavit. (D.I. 140-13 at pp. 11-25). However, this chart was never previously disclosed to Plaintiff, and the content of the chart was Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 40 of 44 PageID #: 12398Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 41 of 5 PageID #: 48746 D. Del. Case No. 1:12-CV-01138 (SLR) Page |37 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE not previously disclosed in fact or expert discovery. Because Mr. Fulton’s testimony, and the facts and basis for Mr. Fulton’s opinion as to the collateral estoppel effect of the ’725 Patent litigation on this case, were not previously disclosed, they must be stricken as improper and prejudicial to Plaintiff. Plaintiff did not have an opportunity to depose Mr. Fulton on these opinions. Plaintiff would suffer extreme prejudice if this new expert evidence were now admitted and considered by the Court. b. Mr. Henley’s Declaration Should Be Stricken As Improper Expert Testimony JHA also submits declaration testimony provided by Mr. Henley, whose testimony was provided to Plaintiff for the first time when JHA’s Motion was filed on September 29, 2014. Mr. Henley is not an expert in this case, was never disclosed as an expert, and denied giving expert testimony in the ‘725 Patent Litigation in discovery in this case, despite JHA disclosing Mr. Henley as an expert on the public record in 2010. See S.D. N.Y. D.I. 72; See JBTS-2008-2009; Henley Depo. May 5, 2014, 8:25-9:3; See JBTS-2040-2041. Despite never having been disclosed as an expert, Mr. Henley now offers opinions on the proper scope of the claims of both the ’003 and ’725 Patents. If JHA wanted to rely on Mr. Henley as an expert, it needed to disclose him long ago, and Mr. Henley needed to submit an appropriate expert report identifying his experience, qualifications, methodology used and the documents and other evidence he considered in forming his opinions. Further, Mr. Henley needed to sit for an expert deposition so that JBTS could examine him on these subjects. JHA has deprived JBTS of the opportunity to test Mr. Henley’s expert conclusions, and should thus not be permitted to submit expert testimony from him into the record now. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 41 of 44 PageID #: 12399Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 42 of 5 PageID #: 48747 D. Del. Case No. 1:12-CV-01138 (SLR) Page |38 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE c. Both Mr. Fulton’s and Mr. Henley’s Testimony Are Unnecessary The dispute on collateral estoppel is fundamentally a question of law, and requires a determination on the scope of the claims of both patents as construed by the Court. These are matters of law for the Court to decide, and for which expert testimony is unnecessary and improper. Accordingly, the affidavits of Mr. Henley (D.I. 140-12) and Mr. Fulton (D.I. 140-14) should be stricken from the record as unnecessary. 2. JHA’s Collateral Estoppel Argument Is An Improper Motion For Reconsideration Even if the Court were to permit the affidavits of Mr. Fulton and Mr. Henley to be admitted, JHA has not properly presented its argument on the issues of collateral estoppel. The parties and this Court previously briefed the issue of collateral estoppel, and the Court ruled that the ‘003 Patent was directed to patentably distinct inventions than the ’725 patent. (D.I. 124 at p. 20, fn. 34). JHA should thus have raised its defense on collateral estoppel in a motion for reconsideration. Indeed, JHA concedes as much in its Brief. D.I. 139 at p. 32, fn. 27. Motions for Reconsideration have a heightened standard, which JHA fails to address and cannot overcome. “Motions for reconsideration are the ‘functional equivalent’ of motions to alter or amend judgment under Federal Rule of Civil Procedure 59(e).”5 Daoud v. City of Wilmington, 946 F.Supp.2d 369, 372 (D. Del. 2013) (citing Jones v. Pittsburgh Nat’l Corp., 899 F.2d 1350, 1352 (3d Cir.1990)). “The standard for obtaining relief under Rule 59(e) is difficult to meet. The purpose of a motion for reconsideration is to “correct manifest errors of law or fact or to present newly discovered evidence.” Id. (citing Max’s Seafood Cafe ex rel. Lou–Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir.1999)). “A court should exercise its discretion to alter or 5 A motion to alter or amend a judgment must be filed no later than 28 days after the entry of the judgment. Fed. R. Civ. Proc. 59(e). Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 42 of 44 PageID #: 12400Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 43 of 5 PageID #: 48748 D. Del. Case No. 1:12-CV-01138 (SLR) Page |39 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE amend its judgment only if the movant demonstrates one of the following: (1) a change in the controlling law; (2) a need to correct a clear error of law or fact or to prevent manifest injustice; or (3) availability of new evidence not available when the judgment was granted.” See Id. JHA fails to present its collateral estoppel argument under the proper standard of law. Further, the time for filing a motion for reconsideration has long since passed, as any such motion should have been brought within twenty-eight days of entry of the judgment. Fed. R. Civ. Proc. 59(e). Not only is JHA’s argument regarding collateral estoppel not brought within the contexts of the proper legal framework of Rule 59(e), JHA does not meet its heightened burden for obtaining relief. V. CONCLUSION For all of the above and foregoing reasons, JHA’s Motion for Summary Judgment of Invalidity should be denied. Additionally, the arguments and evidence listed in JBTS’s concurrently-filed Motion to Strike should be stricken from the record. Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 43 of 44 PageID #: 12401Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 44 of 5 PageID #: 48749 D. Del. Case No. 1:12-CV-01138 (SLR) Page |40 PLAINTIFF JOAO BOCK TRANSACTION SYSTEMS, LLC’S BRIEF IN OPPOSITION TO JACK HENRY & ASSOCIATES, INC.’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY AND IN SUPPORT OF ITS MOTION TO STRIKE Dated: October 13, 2014 Attorneys for Plaintiff Joao Bock Transaction Systems, LLC /s/ Stamatios Stamoulis STAMOULIS & WEINBLATT LLC Stamatios Stamoulis #4606 stamoulis@swdelaw.com Richard C. Weinblatt #5080 weinblatt@swdelaw.com Two Fox Point Centre 6 Denny Road, Suite 307 Wilmington, Delaware 19809 Telephone: (302) 999-1540 HENINGER GARRISON DAVIS, LLC Jonathan R. Miller, Pro Hac Vice Email: jmiller@hgdlawfirm.com Joseph J. Gleason, Pro Hac Vice Email: jgleason@hgdlawfirm.com Jacqueline K. Burt, Pro Hac Vice Email: JBurt@hgdlawfirm.com 3621 Vinings Slope, Suite 4320 Atlanta, Georgia 30339 Telephone: (404) 996-0863, 0862, 0861 Steven W. Ritcheson, Pro Hac Vice Email: swritcheson@hgdlawfirm.com 9800 D Topanga Canyon Boulevard, #347 Chatsworth, California 91311 Telephone: (818) 882-1030 M. Blair Clinton, Pro Hac Vice Email: bclinton@hgdlawfirm.com 2224 1st Avenue North Birmingham, Alabama 35203 Telephone: (205) 327-9116 Maureen V. Abbey, Pro Hac Vice Email: maureen@hgdlawfirm.com 220 St. Paul Street Westfield, New Jersey 07090 Telephone: (908) 379-8475 Case 1:12-cv-01138-SLR Document 203 Filed 10/30/14 Page 44 of 44 PageID #: 12402Case 1:12-cv-01704-RGA Document 653-2 Filed 10/31/16 Page 5 of 5 PageID #: 48750 EXHIBIT M Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 1 of 37 PageID #: 48751 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. AT&T MOBILITY, LLC, and GOOGLE INC., Defendants. C.A. No. 12-1701-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. SPRINT NEXTEL CORP. and GOOGLE INC., Defendants. C.A. No. 12-1702-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. T-MOBILE USA INC. and GOOGLE INC., Defendants. C.A. No. 12-1703-RGA Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 2 of 37 PageID #: 48752 - 2 - CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. VERIZON COMMUNICATIONS, INC., CELLCO PARTNERSHIP, D.B.A. VERIZON WIRELESS, and GOOGLE INC., Defendants. C.A. No. 12-1704-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. AT&T MOBILITY, LLC; BLACKBERRY LIMITED, and BLACKBERRY CORP., Defendants. C.A. No. 12-1788-RGA DEFENDANTS’ INITIAL INVALIDITY CONTENTIONS ON THE ’970 PATENT I. INTRODUCTION Pursuant to the Court’s Scheduling Order, AT&T Mobility LLC, Sprint Nextel Corporation, T-Mobile USA Inc., Verizon Communications, Inc., Cellco Partnership d/b/a Verizon, Wireless, Google Inc., Blackberry Limited, and Blackberry Corp. (collectively “Defendants”), serve their Initial Invalidity Contentions with respect to Claims 14-19 (the “Asserted Claims”) of U.S. Patent No. 6,771,970 (“the ’970 Patent”). Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 3 of 37 PageID #: 48753 - 3 - Defendants assert that the Asserted Claims are invalid at least under 35 U.S.C. §§ 101, 102, 103, and 112. Defendants’ claim charts cite to particular teachings and disclosures of the prior art as applied to features of the Asserted Claims. However, persons having ordinary skill in the art may view an item of prior art generally in the context of other publications, literature, products, and understanding. Accordingly, the cited portions are only exemplary, and Defendants reserve the right to rely on portions of the prior art references that are not expressly cited in these Exhibits, and on other publications and expert testimony as aids in understanding and interpreting the teachings of the prior art. Defendants further reserve the right to rely on portions of the prior art references that are not expressly cited, other publications, and expert testimony to establish bases for combinations of certain cited references that render the Asserted Claims obvious. The references listed herein and in the accompanying claim charts may disclose the elements of the Asserted Claims explicitly and/or inherently. The prior art references may also be relied upon to show the state of the art in the relevant timeframe. The suggested obviousness combinations are provided in the alternative to Defendants’ anticipation contentions and are not to be construed to suggest that any reference is not itself anticipatory. Defendants incorporate by reference all other challenges to the validity of the Asserted Claims including, but not limited to, Defendants’ Answers and Initial Disclosures, and the prosecution of the ’970 Patent and all related patents. Defendants further incorporate by reference all admissions regarding the ’970 Patent including, but not limited to, admissions in the ’970 Patent’s specification, and the prosecution of the ’970 Patent and related patents. Defendants map these prior art references to the Asserted Claims based on CallWave’s apparent construction, to the extent understood, of the Asserted Claims as advanced in Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 4 of 37 PageID #: 48754 - 4 - CallWave’s Infringement Contentions. However, nothing stated in this document or accompanying charts should be treated as an admission or suggestion that Defendants agree with CallWave regarding either the scope of the Asserted Claims or the apparent claim constructions advanced in CallWave’s Infringement Contentions or elsewhere. In fact, Defendants specifically deny that CallWave’s apparent claim constructions are proper. Nothing in these Invalidity Contentions should be treated as an admission that any of Defendants’ accused instrumentalities meet any limitation of the Asserted Claims. Defendants deny infringing the Asserted Claims. To the extent that any prior art references identified by Defendants contain a claim element that is the same as or similar to an element in an accused instrumentality, based on a claim construction inferred from CallWave’s Infringement Contentions, inclusion of that reference in Defendants’ Invalidity Contentions is not a waiver by Defendants of any claim construction or non-infringement position. Depending on the Court’s construction of the Asserted Claims of the ’970 Patent and/or positions that CallWave or its expert witness(es) may take concerning claim interpretation, infringement, and/or invalidity issues, the asserted prior art references may be of greater or lesser relevance. Thus, no chart or position taken by Defendants should be construed as an admission or a waiver of any particular construction of any claim term. Defendants also reserve their right to amend these contentions. Defendants also reserve the right to challenge any of the claim terms under 35 U.S.C. § 112, including by arguing that they are indefinite, not supported by the written description, and/or not enabled. In addition, based on their investigation to date, Defendants produce documents currently in their possession, custody, or control related to these Invalidity Contentions. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 5 of 37 PageID #: 48755 - 5 - II. IDENTIFICATION OF PRIOR ART The prior art references listed below are charted in the accompanying claim charts. Prior art not included in this disclosure, whether known or unknown to Defendants, may become relevant. In particular, Defendants are currently unaware of the extent, if any, to which CallWave will contend that limitations of the Asserted Claims are not disclosed in the prior art identified by Defendants. To the extent that such an issue arises, Defendants reserve the right to identify additional teachings in the same references or in other references that anticipate or would have made the addition of the allegedly missing limitation to the system, device, or method obvious. The following prior art references, alone and/or in combination, anticipate and/or render obvious the Asserted Claims of the ’970 Patent. A. Prior Art Patents and Printed Publications The following prior art patents and printed publications, alone and/or in combination, anticipate and/or render obvious the Asserted Claims of the ’970 Patent. 1. U.S. Patent No. 7,764,231 (“Karr”) U.S. Patent No. 7,764,231 (“Karr”) issued on July 27, 2010, published on March 12, 1998 from an international application with a priority date of at least November 24, 1998, is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). 2. U.S. Patent No. 6,104,931 (“Havinis”) U.S. Patent No. 6,104,931 (“Havinis”) issued on August 15, 2000, from an application with a priority date of at least April 20, 1998, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 6 of 37 PageID #: 48756 - 6 - 3. U.S. Patent No. 6,999,779 (“Hashimoto”) U.S. Patent No. 6,999,779 (“Hashimoto”) was issued on February 14, 2006, and has a priority date of at least February 6, 1997, and is thus prior art at least under 35 U.S.C. § 102(e). 4. U.S. Patent No. 6,115,754 (“Landgren”) U.S. Patent No. 6,115,754 (“Landgren”) was issued on September 5, 2000, and has a priority date of at least December 29, 1997, and is thus prior art at least under 35 U.S.C. §102(e). 5. U.S. Patent No. 6,243,039 (“Elliot”) U.S. Patent No. 6,243,039 (“Elliot”) was issued on June 5, 2001, and has a priority date of at least April 21, 1998, and is thus prior art at least under 35 U.S.C. §102(e). 6. U.S. Patent No. 6,321,092 (“Fitch”) U.S. Patent No. 6321,092 (“Fitch”) was issued on November 20, 2001, and has a priority date of at least November 3, 1998, and is thus prior art at least under 35 U.S.C. §102(e). 7. U.S. Patent No. 6,838,998 (“Brown”) U.S. Patent No. 6,838,998 (“Brown”) issued on January 4, 2005 from an application with a priority date of at least February 5, 1999, and is thus prior art at least under 35 U.S.C. §§ 102(a) and (e). 8. U.S. Patent No. 6,169,497 (“Robert”) U.S. Patent No. 6,169,497 (“Robert”) issued on January 2, 2001 from an application with a priority date of at least December 16, 1994, and is thus prior art at least under 35 U.S.C. §§ 102(a) and (e). Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 7 of 37 PageID #: 48757 - 7 - 9. U.S. Patent No. 6,100,806 (“Gaukel”) U.S. Patent No. 6,100,806 (“Gaukel”) issued on August 8, 2000 from an application with a priority date of at least July 7, 1998, and is thus prior art at least under 35 U.S.C. §§ 102(a) and (e). 10. U.S. Patent No. 6,393,346 (“Keith”) U.S. Patent No. 6,393,346 (“Keith”) issued on May 21, 2002 from an application with a priority date of at least January 27, 1998, and is thus prior art at least under 35 U.S.C. §§ 102(a) and (e). 11. U.S. Patent No. 6,236,358 (“Durst”) U.S. Patent No. 6,236,358 (“Durst”) issued on May 22, 2001 from an application with a priority date of at least June 18, 1999, and is thus prior art at least under 35 U.S.C. §§ 102(a) and (e). 12. U.S. Patent No. 5,724,660 (“Kauser”) U.S. Patent No. 5,724,660 (“Kauser”) issued on March 3, 1998 from an application with a priority date of at least June 7, 1995, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). 13. U.S. Patent No. 5,515,043 (“Berard”) U.S. Patent No. 5,515,043 (“Berard”) issued on May 7, 1996 from an application with a priority date of at least August 17, 1994, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 8 of 37 PageID #: 48758 - 8 - 14. U.S. Patent No. 5,420,594 (“FitzGerald”) U.S. Patent No. 5,420,594 (“FitzGerald”) issued on May 30, 1995 from an application with a priority date of at least October 21, 1993, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). 15. U.S. Patent No. 5,602,739 (“Haagenstad”) U.S. Patent No. 5,602,739 (“Haagenstad”) issued on February 11, 1997 from an application with a priority date of at least June 9, 1993, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), 102(e). 16. U.S. Patent No. 6,456,852 (“Bar”) U.S. Patent No. 6,456,852 (“Bar”) issued on Sep. 24, 2002, from a U.S. application with a priority date of at least Jan. 7, 1997, and is thus prior art at least under 35 U.S.C. § 102(e). 17. U.S. Patent No. 7,089,107 (“Jones”) U.S. Patent No. 7,089,107 (“Jones”) was issued on Aug. 8, 2006 from a U.S. application with a priority date of at least Sep. 30, 1998, and is thus prior art at least under 35 U.S.C. § 102(e). 18. Japan Patent Appl. Pub. No. 11258325 (“Mitsuru”) Japan Patent Appl. Pub. No. 11258325 (“Mitsuru”) was published on September 24, 1999 from an application with a priority date of at least March 10, 1998, and is thus prior art at least under 35 U.S.C. § 102(a). Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 9 of 37 PageID #: 48759 - 9 - 19. WO 97/14054 (“Girerd”) International Application (“Girerd”) was published on April 17, 1997, from an application with a priority date of at least September 6, 1996, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). 20. WO 93/01576 (“Hakan”) International Application (“Hakan”) was published on January 21, 1993, from an application with a priority date of at least July 1, 1991, and is thus prior art at least under 35 U.S.C. §§ 102(a), 102(b), and 102(e). 21. Location-Aware Mobile Applications Based on Directory Services, Mobile Networks and Applications 3.2 (1998): 157-73 (“Location- Aware”) “Location-Aware Mobile Applications Based on Directory Services,” Mobile Networks and Applications 3.2 (1998): 157-73 (“Location-Aware”) was published on January 1, 1998 and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 22. Providing Universal Location Services Using a Wireless E911 Location Network (“E911”) Printed publication James M. Zagami, et al., “Providing Universal Location Services Using a Wireless E911 Location Network,” IEEE Communications Magazine, pp. 66-71 (April 1998) (“E911”) was published in April 1998 and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 23. DATAMAN project: Towards a Mosaic-like Location Dependant Information Service for Mobile Clients (“Dataman”) Printed publication Arup Acharya, et al., “DATAMAN project: Towards a Mosaic-like Location Dependant [sic] Information Service for Mobile Clients,” Journal of Mobile Computing Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 10 of 37 PageID #: 48760 - 10 - (1995) (“Dataman”) was published in 1995 and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 24. A Modular Location-Aware Service and Application Platform (“Pfeifer”) Printed publication Tom Pfeifer and Radu Popescu-Zeletin, “A Modular Location-Aware Service and Application Platform,” The Fourth IEEE Symposium on Computers and Communications, July 6-8, 1999 (“Pfeifer”) was published July 6-8, 1999 and is thus prior art at least under 35 U.S.C. § 102(a). 25. A System Architecture for Context-Aware Mobile Computing (“Schilit”) A System Architecture for Context-Aware Mobile Computing (“Schilit”) was published in 1995, and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 26. Cyberguide: A Mobile Context-Aware Tour Guide (“Cyberguide”) Cyberguide: A Mobile Context-Aware Tour Guide (“Cyberguide”) was published on Sep. 23, 1996, and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 27. Disseminating Active Map Information to Mobile Hosts (“Active Map Information”) Disseminating Active Map Information to Mobile Hosts (“Active Map Information”) was published in October 1994, and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 28. Supporting Location-Awareness in Open Distributed Systems (“Leonhardt”) Supporting Location-Awareness in Open Distributed Systems (“Leonhardt”) was published in May 1998, and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 11 of 37 PageID #: 48761 - 11 - 29. Providing Location Information in a Ubiquitous Computing Environment (“ParcTab”) Providing Location Information in a Ubiquitous Computing Environment (“ParcTab”) was published in Dec. 1993, and is thus prior art at least under 35 U.S.C. §§ 102(a) and 102(b). 30. Additional References Additional prior art references are discussed in Section IV. III. ANTICIPATION UNDER 35 U.S.C. § 102 Based on Defendants’ present understanding of the Asserted Claims of the ’970 Patent and the apparent constructions CallWave is asserting based on CallWave’s Infringement Contentions, the prior art references charted in Exhibits A-1 through A-29 show how the asserted prior art meets each element of the Asserted Claims. Chart Anticipating Reference A-1 U.S. Patent No. 7,764,231 (“Karr”) A-2 U.S. Patent No. 6,104,931 (“Havinis”) A-3 U.S. Patent No. 6,999,779 (“Hashimoto”) A-4 U.S. Patent No. 6,115,754 (“Landgren”) A-5 U.S. Patent No. 6,243,039 (“Elliot”) A-6 U.S. Patent No. 6,321,092 (“Fitch”) A-7 U.S. Patent No. 6,838,998 (“Brown”) A-8 U.S. Patent No. 6,169,497 (“Robert”) A-9 U.S. Patent No. 6,100,806 (“Gaukel”) A-10 U.S. Patent No. 6,393,346 (“Keith”) A-11 U.S. Patent No. 6,236,358 (“Durst”) A-12 U.S. Patent No. 5,724,660 (“Kauser”) A-13 U.S. Patent No. 5,515,043 (“Berard”) A-14 U.S. Patent No. 5,420,594 (“FitzGerald”) A-15 U.S. Patent No. 5,602,739 (“Haagenstad”) A-16 U.S. Patent No. 6,456,852 (“Bar”) A-17 U.S. Patent No. 7,089,107 (“Jones”) A-18 Japan Patent Appl. Pub. No. 11258325 (“Mitsuru”) A-19 WO 97/14054 (“Girerd”) A-20 WO 93/01576 (“Hakan”) A-21 Location-Aware Mobile Applications Based on Directory Services, Mobile Networks and Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 12 of 37 PageID #: 48762 - 12 - Applications 3.2 (1998): 157-73 (“Location- Aware”) A-22 Providing Universal Location Services using a Wireless E911 Location Network (“E911”) A-23 DATAMAN Project: Towards a Mosaic-like Location Dependent Information Service for Mobile Clients (“Dataman”) A-24 A Modular Location-Aware Service and Application Platform (“Pfeifer”) A-25 A System Architecture for Context-Aware Mobile Computing (“Schilit”) A-26 Cyberguide: A Mobile Context-Aware Tour Guide (“Cyberguide”) A-27 Disseminating Active Map Information to Mobile Hosts (“Active Map Information”) A-28 Supporting Location-Awareness in Open Distributed Systems (“Leonhardt”) A-29 Providing Location Information in a Ubiquitous Computing Environment (“ParcTab”) IV. OBVIOUSNESS UNDER 35 U.S.C. § 103 Based on Defendants’ present understanding of the Asserted Claims of the ’970 Patent, the prior art references listed in Sections II and III, above, standing alone and/or in combination with each other, render the Asserted Claims obvious. It would have been obvious to one of ordinary skill in the art to combine one or more of the prior art references listed above with each of the other references and/or nothing more than his or her own knowledge to arrive at the claimed invention as described in detail below and in the accompanying charts. Such combinations and/or modifications would have yielded results predictable by one of ordinary skill in the art drawing from nothing more than the prior art technology that existed at the time of the invention. Moreover, one of ordinary skill in the art would have been motivated to make such combinations and/or modifications due to at least market competition, product and service differentiation, and other market forces existing in a competitive marketplace. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 13 of 37 PageID #: 48763 - 13 - Defendants believe that no showing of a specific motivation to combine prior art is required to combine the references disclosed above and in the attached charts. Each combination of references would have produced no unexpected results, and each combination at most would simply represent a known alternative to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414-18 (2007) (rejecting the Federal Circuit’s “rigid” application of a requirement of teaching, suggestion, or motivation to combine and instead applying an “expansive and flexible” approach). A person of ordinary skill is “a person of creativity, not an automaton” and “in many cases a person of ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420-21. However, Defendants also provide additional motivations and reasons to combine the cited art. Multiple teachings, suggestions, motivations, and/or reasons to modify any of the references and/or to combine any two or more of the references come from many sources, including the prior art (specific and as a whole), common knowledge, common sense, predictability, expectations, industry trends, design incentives or need, market demand or pressure, market forces, obviousness to try, the nature of the problem faced, and/or knowledge possessed by a person of ordinary skill. In addition, it would have been obvious to try combining the prior art references identified above because there were only a finite number of predictable solutions and/or because known work in one field of endeavor prompted variations based on predictable design incentives and/or market forces either in the same field or a different one. Combining one or more of the prior art references identified above also would have been obvious because the combination represents the known potential options with a reasonable expectation of success. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 14 of 37 PageID #: 48764 - 14 - A. Obvious Substitutions of Features in Anticipatory References Exhibits A-1 through A-29 and B-1 through B-21 relate to location tracking systems. To the extent CallWave alleges that any such system does not explicitly disclose any features of the asserted claims, such features are readily found in other systems identified in Exhibits A-1 through A-29, as well as other references discussed below.2 It would have been obvious to utilize the disclosure in such other references at least because such addition is no more than the predictable use of prior-art elements according to their established function. The use of a plurality of remote tracking systems was well known in the prior art as illustrated in Exhibits A-1 through A-29and B-1 through B-2. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to include such functionality in other known location tracking systems at least because such addition is no more than the predictable use of prior-art elements according to their established function. For example, U.S. Patent No. 7,764,231 (“Karr”) published on March 12, 1998 from an international application, explains using various remote tracking systems such as GPS, cellular networks or other wireless methods to determine location of mobile devices: Related objectives for various embodiments of the present invention include providing a system and method that . . . can utilize a plurality of wireless location estimators based on different wireless location technologies (e.g., GPS location techniques, terrestrial base station signal timing techniques for triangulation and/or trilateration, wireless signal angle of arrival location techniques, techniques for determining a wireless location within a building, 1 Additional prior art references in Section IV (B) may be referenced to show the state and evolution of technology at the time of the alleged invention and may be relevant to the validity of the Asserted Claims depending on the claim construction, infringement, and other positions taken by CallWave. 2The analysis provided in Section IV (A) in some instances uses CallWave Communications, LLC’s (“CallWave”) proposed (or implied) claim constructions, which Defendants does not believe will be sustained by the Court. To the extent any of the prior art references should fail to disclose an element of any claims of the ’970 Patent, Defendants reserve the right to rely upon the knowledge of one skilled in the art, or any other disclosed prior art references, alone or in combination, whether produced by Defendants or by CallWave, to show the element and thereby invalidate those claims. Citations given in Section IV (A) below are merely representative of the respective elements and are not meant to be exhaustive. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 15 of 37 PageID #: 48765 - 15 - techniques for determining a mobile station location using wireless location data collected from the wireless coverage area for, e.g., location techniques using base station signal coverage areas, signal pattern matching location techniques and/or stochastic techniques), wherein each such estimator may be activated independently of one another, whenever suitable data is provided thereto and/or certain conditions, e.g. specific to the estimator are met. Karr at col. 8, ll. 37-51 (emphasis added); compare to ’970 Patent at 3:51-57 (“One of the location tracking systems may be, for example, a Motorola tracking location system such as systems based around Motorola’s MLU (Mobile Logic Unit). Other location tracking systems may be based around for example, the Ituran VLU (Vehicle Logic Unit) or PAL (Personal Alarm and Location) or Nexus Telelocation’s RMU (Remote Monitoring Unit) based system.”) and ’970 Patent at 1:12-21 (“Technologies such as GPS (Global Positioning System), EOTD (Enhanced Observed Time Difference), Cell ID, AMPS (Advanced Mobile Phone Service), GSM (Global System for Mobile Communication), CDPD (Cellular Digital Packet Data), and EDACS (Enhanced Digital Access Communication System) and MSAT (Mobile Satellite communications) allow a vehicle, mobile telephone or other mobile entity to be located.”).3 Further, U.S. Patent No. 5,602,739 (“Haagenstad”) discloses that a vehicle’s position may be determined by a number of manners and that, in certain instances, reception strength can determine what manner the vehicle’s location is determined. Specifically, Haagenstad states: The vehicle’s position may be determined in a number of manners. In most of these a signal 58 is sent from an external location transponder 18 to a location receiver 38 aboard the bus. In a preferred embodiment the Global Positioning System (GPS) is utilized. The GPS works by broadcasting high frequency signals from satellites. These signals are received on the ground and, from them, the position is calculated. These receivers, the construction of which are well known, are capable of calculating their position to within 100 meters anywhere on the globe. Other well known technologies may be used instead of the GPS system. Examples of these include location beacons that broadcast specific locations to a small-radius area through which the controlled vehicle passes, optical beacons that are similar to location beacons but use encoded infrared or visible light in place of RF, embedded inductive loops in the roadbed, Loran C, a ground based 3 Defendants do not concede that these statements provide Section 112 support for the Asserted Claims. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 16 of 37 PageID #: 48766 - 16 - system similar to GPS, dead reckoning, or inertial tracking. Preferably a combination of these systems may be used. For example, a GPS receiver may provide the primary location information with a dead reckoning system providing location information when poor reception prevents the GPS system from functioning. Haagenstad at 3:55 – 4:10 (emphasis added). As yet another example, U.S. Patent No. 6,477,581 (“Carpenter”) discloses a system for acquiring a geographic location of a portable data processor, e.g., a laptop or PDA. Carpenter explains that there are many techniques available for acquiring the geographic location of the portable data processor and that the technique selected for a particular application will depend on the resolution required by the particular application. Carpenter specifically states: The present invention is based upon the acquisition of the geographic location of a portable data processor. Many techniques are available for acquisition of the geographic location of a portable data processor. The technique selected for a particular application will depend upon the resolution required for the application and the amount of location sensing infrastructure which is justifiable for the particular application. For example, an extensive infrastructure exists which allows a portable data processor to determine its location on the face of the earth through global positioning satellite systems. However, if the location resolution required for a particular application is higher than available from a global positioning system, more refined methods of acquiring the portable data processor's location may be necessary. One technique for acquiring the geographic location of the portable data processor is by accepting user input specifying the location of the portable data processor. For example, a user may be prompted to input the location of the portable data processor or to select the portable data processor location from a list of possible locations. This system may have cost advantages. Depending on the resolution required for the location of the portable data processor, the acquisition of the location may be automated using an automated position sensing system such as the Global Positioning System or GPS. GPS cards are readily available for laptop or notebook computers and provide locations of the computer within about 10 feet for civilian applications with even greater resolution for military applications. In the event that higher resolution of the geographic location of the portable data processor is required, specific automated position sensing systems may be implemented at a particular location. Various methods of accurately determining the position or location of a portable data processor are known to those of skill in the art. Examples of these methods include radio frequency (RF) or infrared (IR) transmitters located at specific locations and an RF or IR receiver associated with Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 17 of 37 PageID #: 48767 - 17 - the portable data processor. In addition to acquiring the two-dimensional location of a portable data processor, the geographic location may also include the three dimensional location of the portable data processor, which would include an altitude or depth component. Thus, a user interface could be selected based upon the portable data processor being on a particular floor of a building, an altitude in the air or a depth below the sea. Carpenter at 6:46 – 7:23 (emphasis added). Similarly, the use of program storage device/computer program product with computer readable program code was known in the prior art as illustrated in Exhibits A-1 through A-29and B-1 through B-2. For example, to the extent a reference describes a mobile device being locatable by a plurality of remote tracking systems, but does not explicitly describe a program storage device/computer program product with computer readable program code to enable determination of locating a mobile device, numerous references describe such functionality and Karr discloses a program storage device/computer program product with computer readable program code embodied therein to enable determination of the location of mobile devices: A location application programming interface or L-API 14 (see Fig. 30, and including L-API-Loc_APP 135, L-API-MSC-136, and L-API-SCP 137 shown in Fig. 4), is required between the location center 142 (LC) and the mobile switch center (MSC) network element type, in order to send and receive various control, signals and data messages. The L-API 14 should be implemented using a preferably high capacity physical layer communications interface, such as IEEE standard 802.3 (10 baseT Ethernet), although other physical layer interfaces could be used, such as fiber optic ATM, frame relay etc. Karr at 28:12-22. As another example, a program storage device/computer program product with computer readable program code to enable determination of locating a mobile device was known. Program instructions that cause the gateway 250 to operate in a manner consistent with the present invention may be stored on CD ROM or other memory. Landgren at col. 8:10-15. Landgren describes a system and method that indicates the location of a mobile unit. Landgren at col. 3:7- 9; col. 3:56-57. It would have been obvious to one of ordinary skill in the art at the time of the Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 18 of 37 PageID #: 48768 - 18 - invention to include such functionality in other known location tracking systems at least because such addition is no more than the predictable use of prior-art elements according to their established function. The use of a browser, was also well known in the prior art as illustrated in Exhibits A-1 through A-29and B-1 through B-2. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to include such functionality in other known location tracking systems at least because such addition is no more than the predictable use of prior-art elements according to their established function. For example, International Application WO 97/14054 (“Girerd”) published on April 17, 1997, discloses at least one subscriber equipped with a browser: In this embodiment, the client computer 1 and the server 200 have been described as being connected to the Internet 5. However, computer 1 and server 200 may be connected to any computer network. Client computer 1 may use a web browser to interrogate server 200 as described above, other may use another method of computer communications. For example, upon receiving the connection from computer 1, server 200 may download an applet across Internet 5 to computer 1 which, when executed by computer 1, allows computer 1 to communicate with server 200. Such an applet will, in general, provide a graphical user interface for the user to interface with server 200. Girerd, Detailed Description, pp. 7-8 (emphasis added). A map database and map engine for manipulating said map database was also well known in the prior art as illustrated in Exhibits A-1 through A-29. For example, to the extent a reference describes a map database, but does not explicitly describe a map engine for manipulating said map database, numerous references describe such functionality and Karr discloses a map database and map engine for manipulating said map database: The computing and display provides a means for communicating the position of the target MS 140 on a map display to an operator of the MBS 148. Karr at 26:61-63. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 19 of 37 PageID #: 48769 - 19 - Each MBS 148, additionally, has a location display (denoted the MBS operator visual user interface 1558 in Fig. 11) where area maps that may be displayed together with location data. In particular, MS location data may be displayed on this display as a nested collection of areas, each smaller nested area being the most likely area within (any) encompassing area for locating a target MS 140. Note that the MBS controller algorithm below may be adapted to receive location center 142 data for displaying the locations of other MBSs 148 as well as target MSs 140. Karr at 108:37-46. As another example, a map database and map engine for manipulating said map database was known. An information providing unit 27 in the central system 10 retains map data 28 which contains the position data of the portable-telephone and PHS base stations 23 and 24. In a case where the map data 21 retained in the portable terminal 11 is insufficient to display the current position, the central system 10 sends the map data 28 to the portable terminal 11 so as permit to the display of the current position. Hashimoto at 4:18-25. The central system 10 can search map data for the current position, and the portable terminal 11 downloads the map data containing the current position from the central system. Hashimoto at 7:2-5. The current position is displayed in the map. Hashimoto at 7:6-8; 8:25-30; 10:19-35. It would have been obvious to one of ordinary skill in the art at the time of the invention to include such functionality in other known location tracking systems at least because such addition is no more than the predictable use of prior-art elements according to their established function. As yet another example, U.S. Patent No. 6,243,039 (“Elliot”) discloses a map database and map engine for manipulating said map database: Many commercial software programs are available for producing and manipulating graphics and images, including road map graphics images. Such graphical map images may be displayed within a web page when a Web browser runs a document such as an HTML document. The image element in the HTML page is generally used to incorporate inline graphics into an HTML document. The Graphics Interchange Format (GIF) for Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 20 of 37 PageID #: 48770 - 20 - inline images is supported by all current graphical Web browsers and is one example of a map source file which may be embedded in the HTML document as an image source. Elliot at 9:17-27. Determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform was known in the prior art as illustrated in Exhibits A-1 through A-29 and B-1 through B-2. To the extent a reference describes a plurality of remote tracking systems that are capable of locating a mobile platform, but does not explicitly describe determining one of the remote tracking systems, numerous references describe such functionality and it would have been obvious to one of ordinary skill in the art at the time of invention to determine for each mobile platform one of the plurality of remote tracking systems that is capable of locating a mobile platform. For example, Karr discloses determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform: [T]he location gateway embodiments of the present invention may activate one or more of a plurality of location estimators depending on, e.g., (a) the availability of particular types of wireless location data for locating the mobile station, and (b) the location estimators accessible by the location gateway. Karr at 10:65-11:3. Further, it would be common sense to one of ordinary skill in the art to determine which of the plurality remote tracking systems available is capable of locating a mobile platform and would lead to greater efficiency. For example, if the mobile platform is only capable of being located via a cellular network-based remote tracking system because it is only equipped with a cellular antenna, then it is common sense to determine which of the remote tracking systems are capable of locating the cellular antenna equipped mobile platform and to only utilize such remote tracking systems. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 21 of 37 PageID #: 48771 - 21 - One of ordinary skill in the art at the time of invention would have been motivated to make such a modification at least because it would introduce efficiencies into prior art remote tracking systems by only utilizing the remote tracking systems that are capable of locating a mobile platform, instead of inefficiently querying all of the remote tracking systems including remote tracking systems that are known to be incapable of locating the remote tracking system, and thereby reducing the cost of locating the mobile platform. Moreover, if remote tracking systems incapable of locating the mobile platform are queried, the remote tracking systems are likely to return erroneous location results and/or error messages, and thereby cause the location tracking system to operate inefficiently. Further, as described in Section IV(A)(1) above, both Haagenstad and Carpenter describe determining one of a number of remote tracking systems that is capable of locating a mobile platform. One of ordinary skill in the art at the time of invention would have been motivated to combine one or both of Haagenstad and Carpenter with a prior art location system that lacked the step of determining one of the remote tracking systems that is capable of locating a mobile platform to, for example, determine the remote tracking system that is the most effective and/or efficient given reception strength or that is required by a particular application. In addition, correlating the location of each mobile platform with a map database and transmitting a map having marked said mobile platform location(s) to said subscriber was well known in the prior art as illustrated in Exhibits A-1 through A-29. For example, to the extent a reference describes a map having marked said mobile platform location(s), but does not explicitly describe correlating the location of each mobile platform with a map database and transmitting the map, numerous references describe such functionality and Gaukel discloses correlating the location of each mobile platform with a map database and transmitting the map: Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 22 of 37 PageID #: 48772 - 22 - In the preferred embodiment, this graphics computer 46 may also be an IBM AS400. Applications graphics computer 46 processes the data from computer 48 to formulate displays in response thereto. After processing by graphics computer 46, the information is transmitted to a plurality of work stations 80a-c for display to the operators. As mentioned above, the purpose of applications graphics work stations 80a-c is to visually display the data received and in particular to identify any alerts resulting from noncompliance with prescribed limits. Gaukel at 17:56-65. The applications graphics computer processes the location data for a located mobile platform, formulates the location data as a position on a map, and transmits the map to an operator’s work station. It would have been obvious to one of ordinary skill in the art at the time of the invention to include such functionality in other known location tracking systems at least because such addition is no more than the predictable use of prior-art elements according to their established function. As yet another example, U.S. Patent No. 5,724,660 (“Kauser”) describes a method of determining the location of a mobile telephone, wherein “the actual geographic location of the mobile telephone can then be determined by plotting the estimated location area on a geographic map.” Kauser at 9:15-17. B. Additional References In addition to the prior art listed above, additional prior art references may be referenced to show the state and evolution of technology at the time of the alleged invention and may be relevant to the validity of the Asserted Claims depending on the claim construction, infringement, and other positions taken by CallWave. Exemplary additional references are included in Defendants’ production: Exhibit Reference B-1 U.S. Patent No. 6,477,581 (“Carpenter”) B-2 Ulf Leonhardt and Jeff Magee, “Multi-Sensor Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 23 of 37 PageID #: 48773 - 23 - Location Tracking,” MobiCom ’98 Proceedings of the 4th Annual ACM/IEE International Conference on Mobile Computing and Networking, pp. 203-214 (1998) (“Leonhardt”) V. INVALIDITY UNDER 35 U.S.C. § 112 Claim 18, and specifically elements referencing a “tracking unit,” is invalid: (a) as lacking written description, because it overreaches the scope of the inventor’s contribution to the field of art as described in the patent specification and fails to describe the alleged invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the alleged invention; and (b) as not enabled, because the specification fails to enable the full scope of the claims under CallWave’s apparent constructions. Further, the antecedent for “each” is unclear in claim 18. Based on the form of the other claims, it appears that it should refer to “remote tracking system.” On its face, though, the closest preceding noun is “tracking unit.” For purposes of these invalidity contentions, it is assumed that “each” refers to the tracking unit. Claim 18, and specifically elements referencing “map engine manipulating said map database,” is invalid as indefinite because the term “map engine” is insolubly as the ’970 patent does not provide a definition of the term, there is no art-accepted meaning for the term, and a person of ordinary skill in the art could reach different conclusions concerning the scope of the claim term. Moreover, to the extent understood, the phrase is also invalid as lacking written description, because it overreaches the scope of the inventor’s contribution to the field of art as described in the patent specification and fails to describe the alleged invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the alleged invention; and as not enabled, because the specification fails to enable the full scope of the claims under CallWave’s apparent constructions. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 24 of 37 PageID #: 48774 - 24 - Claims 14, 15, 16, 17, 18 and 19, and specifically elements referencing “determine the location of a respective mobile platform according to a property that is predetermined for each mobile platform,” are invalid as indefinite because the term “property that is predetermined for each mobile platform” is insolubly ambiguous as the ’970 patent does not provide a definition of the term, there is no art-accepted meaning for the term, and a person of ordinary skill in the art could reach different conclusions concerning the scope of the claim term. Moreover, to the extent understood, the phrase is also invalid as lacking written description, because it overreaches the scope of the inventor’s contribution to the field of art as described in the patent specification and fail to describe the alleged invention in sufficient detail that one skill in the art can clearly conclude that the inventor invented the alleged invention; and as not enabled, because the specification fails to enable the full scope of the claims under CallWave’s apparent constructions. Claims 14, 15, 16, 17 and 19, and specifically elements referencing “determining for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform,” are invalid: (a) as not enabled, because the specification fails to enable the full scope of the claims under CallWave’s apparent constructions; and (b) as indefinite, because the “determining” step is insolubly ambiguous as the ’970 patent does not provide a definition of the term, there is no art-accepted meaning for the term, and a person of ordinary skill in the art could reach different conclusions concerning the scope of the claim term. Specifically, the ’970 patent’s specification fails to describe or teach how “for each mobile platform one of the remote tracking systems that is capable of locating said mobile platform” is “determin[ed]” in a way sufficient to enable one of skill in the art to practice the claimed invention without undue experimentation. Claims 15, 17 and 18, and specifically elements referencing “correlating the Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 25 of 37 PageID #: 48775 - 25 - location of each mobile platform with a map database,” are invalid as lacking written description, because they overreach the scope of the inventor’s contribution to the field of art as described in the patent specification and fail to describe the alleged invention in sufficient detail that one skill in the art can clearly conclude that the inventor invented the alleged invention; and as not enabled, because the specification fails to enable the full scope of the claims under CallWave’s apparent constructions. Claims 14, 16 and 19, and specifically elements referencing “plurality of remote tracking systems,” are invalid as indefinite, because the term “plurality of remote tracking systems” is insolubly ambiguous as the ’970 patent does not provide a definition of the term, there is no art- accepted meaning for the term, and a person of ordinary skill in the art could reach different conclusions concerning the scope of the claim term. Discovery is ongoing and the Asserted Claims have not yet been construed. Defendants’ charts and other contentions should not be understood as a suggestion that the Defendants have adopted any particular claim construction for any claim term. Defendants specifically reserve the right to contest issues of claim construction and their relation to the invalidity of the ’970 Patent. Defendants make no admission as to the scope, definiteness, enablement, or satisfaction of the written description requirement of any claim or claim term. VI. INVALIDITY UNDER 35 U.S.C. § 101 Defendants contend that Claims 14 and 15 of the ’970 patent are methods for “determining the location of mobile platforms” which do not apply, involve, use, or advance the technological arts because they are non-patentable abstract idea mental processes where all of the recited steps for the claims can be performed in the mind of the user or by use of a pencil and paper. Allowing CallWave to obtain a monopoly on this abstract idea would effectively preempt the general concept of providing real-time location information to a third party. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 26 of 37 PageID #: 48776 - 26 - Additionally, Defendants contend that Claims 16, 17 and 19 are unpatentable computer program product and program storage claims that merely embody unpatentable abstract idea mental processes and impose no meaningful limits on the claims’ scope, nor play a significant part in permitting the claimed method to be performed. Likewise, Defendants contend that Claim 18 is unpatentable because it also fails to provide any meaningful limitation on the unpatentable method claim steps and that the system limitations claimed are merely generic computer components described in wholly functional terms. Furthermore, Defendants contend that Claims 16, 17 and 19 are not directed towards statutory subject matter because it is well known in the computer arts that “computer useable medium[s]” and “program storage device[s]” may encompass transitory signals, which are not a statutory category eligible for patenting. VII. PRIOR ART PRODUCTION Defendants have produced documents as required by the Court’s Scheduling Order. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 27 of 37 PageID #: 48777 - 27 - MORRIS, NICHOLS, ARSHT &TUNNELL LLP /s/ Krishnan Padmanabhan Jack B. Blumenfeld (#1014) Paul Saindon (#5110) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 jblumenfeld@mnat.com psaindon@mnat.com Attorneys for Defendant Google Inc. OF COUNSEL: James F. Hurst WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601-5600 (312) 558-5600 jhurst@winston.com Scott R. Samay Peter Lambrianakos Krishnan Padmanabhan WINSTON & STRAWN LLP 200 Park Avenue New York, NY 10166-4193 (212) 294-6700 ssamay@winston.com plambrianakos@winston.com kpadmanabhan@winston.com MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Stephen J. Kraftschik Karen Jacobs (#2881) Stephen J. Kraftschik (#5623) Eleanor G. Tennyson (#5812) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899-1347 (302) 658-9200 kjacobs@mnat.com skraftschik@mnat.com etennyson@mnat.com Attorneys for Sprint Nextel Corp. OF COUNSEL: Kirk R. Ruthenberg Mark L. Hogge Shailendra K. Maheshwari DENTONS US LLP 1301 K Street, N.W., Suite 600 Washington, DC 20005 Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 28 of 37 PageID #: 48778 - 28 - CONNOLLY GALLAGHER LLP /s/ Kirk R. Ruthenberg Arthur G. Connolly, III (#2667) The Brandywine Building 1000 West Street, Suite 1400 Wilmington, DE 19801 Tel: (302) 888-6318 Email: AConnolly@connollygallagher.com Attorneys For T-Mobile USA, Inc. OF COUNSEL: Kirk R. Ruthenberg (admitted Pro Hac Vice) kirk.ruthenberg@dentons.com Mark L. Hogge (admitted Pro Hac Vice) Email: mark.hogge@dentons.com Shailendra K. Maheshwari (admitted Pro Hac Vice) Email: shailendra.maheshwari@dentons.com DENTONS US LLP 1301 K Street, N.W., Suite 600 Washington, DC 20005 Tel: (202) 408-6400 Fax: (202) 408-6399 SEITZ ROSS ARONSTAM & MORITZ LLP /s/ Daniel A. Valenzuela Collins J. Seitz, Jr. (Bar No. 2237) Benjamin J. Schladweiler (Bar No. 4601) 100 S. West Street, Suite 400 Wilmington, DE 19801 (302) 576-1600 cseitz@seitzross.com bschladweiler@seitzross.com Counsel for Defendant AT&T Mobility LLC OF COUNSEL: Mark C. Nelson Steven M. Geiszler Daniel A. Valenzuela DENTONS US LLP 2000 McKinney Avenue Suite 1900 Dallas, TX 75201-1858 (214) 259-0900 mark.nelson@dentons.com steven.geiszler@dentons.com daniel.valenzuela@dentons.com Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 29 of 37 PageID #: 48779 - 29 - SEITZ ROSS ARONSTAM & MORITZ LLP /s/ Robert Scheffel Collins J. Seitz, Jr. (Bar No. 2237) Benjamin J. Schladweiler (Bar No. 4601) 100 S. West Street, Suite 400 Wilmington, DE 19801 (302) 576-1600 cseitz@seitzross.com bschladweiler@seitzross.com Counsel for Defendants Verizon Communications, Inc. and Cellco Partnership d/b/a Verizon Wireless Of Counsel: Kevin P. Anderson Karin A. Hessler Robert Scheffel Paul M. Kim WILEY REIN LLP 1776 K Street, N.W. Washington, D.C. 20006 (202) 719-7000 kanderson@wileyrein.com khessler@wileyrein.com rscheffel@wileyrein.com pkim@wileyrein.com MORGAN, LEWIS & BOCKIUS LLP /s/ Andrew C. Whitney Colm F. Connolly (Bar No. 3151) Jody C. Barillare (Bar No. 5107) cconnolly@morganlewis.com jbarillare@morganlewis.com The Nemours Building 1007 North Orange Street Suite 501 Wilmington, Delaware 19801 (302) 574-3000 Attorneys for Defendants AT&T Mobility LLC, Research In Motion Ltd., and Research In Motion Corp. Eric Kraeutler (Pa. I.D. No. 32189) John V. Gorman (Pa. I.D. No. 80631) Andrew C. Whitney (Pa. I.D. No. 201534) Squire J. Servance (Pa. I.D. No. 207623) Morgan, Lewis & Bockius LLP 1701 Market Street Philadelphia, PA 19103-2921 Telephone: 215.963.5000 Fax: 215.963.5001 ekraeutler@morganlewis.com jgorman@morganlewis.com awhitney@morganlewis.com sservance@morganlewis.com Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 30 of 37 PageID #: 48780 - 30 - CERTIFICATE OF SERVICE I HEREBY CERTIFY that on May 14, 2014, the foregoing INVALIDITY CONTENTIONS ON THE ’970 PATENT was served via e-mail on the following counsel of record. Edmond D. Johnson James G. McMillan, III PEPPER HAMILTON LLP Hercules Plaza, Suite 5100 1313 Market Street P.O. Box 1709 Wilmington, Delaware 19899-1709 johnsone@pepperlaw.com mcmillanj@pepperlaw.com Attorneys for Plaintiff William D. Belanger Noah V. Malgeri Lauren Reznick Christopher Boundy Leah R. McCoy Suparna Datta PEPPER HAMILTON LLP 125 High Street 19th Fl. High Street Tower Boston, MA 02110 belangerw@pepperlaw.com malgerin@pepperlaw.com reznickl@pepperlaw.com boundyc@pepperlaw.com mccoyl@pepperlaw.com dattas@pepperlaw.com Attorneys for Plaintiff /s/ Daniel A. Valenzuela Daniel A. Valenzuela Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 31 of 37 PageID #: 48781 EXHIBIT N Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 32 of 37 PageID #: 48782 1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. AT&T MOBILITY, LLC, and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1701-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. SPRINT NEXTEL CORP. and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1702-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. T-MOBILE USA INC., and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1703-RGA Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 33 of 37 PageID #: 48783 2 CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. VERIZON COMMUNICATIONS, INC., CELLCO PARTNERSHIP, D.B.A. VERIZON WIRELESS, and GOOGLE INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1704-RGA CALLWAVE COMMUNICATIONS, LLC, Plaintiff, v. AT&T MOBILITY, LLC, BLACKBERRY LTD, and BLACKBERRY CORP. Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 12-cv-1788-RGA BROADSOFT, INC., Plaintiff, v. CALLWAVE COMMUNICATIONS, LLC, Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) C.A. No. 13-711-RGA JURY TRIAL DEMANDED Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 34 of 37 PageID #: 48784 3 CALLWAVE COMMUNICATIONS, LLC INITIAL DISCLOSURES PURSUANT TO FED. R. CIV. P. 26(a)(1) Pursuant to Federal Rules of Civil Procedure, Plaintiff and Declaratory Defendant CallWave Communications, LLC (“CallWave”) makes the following disclosures. These disclosures are based on the information reasonably available to CallWave as of this date and do not purport to identify every witness, document, or tangible thing relevant to this case. CallWave reserves the right to supplement or amend these disclosures upon receipt of subsequent filings or submissions and/or further investigation and discovery in this case. I. IDENTIFICATION OF INDIVIDUALS LIKELY TO HAVE DISCOVERABLE INFORMATION CallWave presently believes that the following individuals are likely to have discoverable information in their possession, custody, or control. The name, title, and the subject matter of the information for which these individuals are identified are also provided. Richard Sanders Sole Manager of CallWave Communications, LLC May be contacted through Pepper Hamilton. Subject(s): CallWave’s business and patent portfolio. David Trandal Inventor on the ‘428, ‘901, ‘110, ‘188, ‘933, and ‘591 patents. May be contacted through Pepper Hamilton. Subject(s): The inventions claimed in the aforementioned patents. David Brahm Inventor on the ‘933, ‘188, and ‘428 patents May be contacted through Pepper Hamilton. Subject(s): The inventions claimed in the aforementioned patents. Robert Smith Inventor on the ‘428,‘901, ‘110, ‘188, and ‘591 patents May be contacted through Pepper Hamilton. Subject(s): The inventions claimed in the aforementioned patents. Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 35 of 37 PageID #: 48785 4 Jeffery Cavins Former executive of CallWave, Inc. May be contacted through Pepper Hamilton. Subject(s): The products and business of CallWave, Inc. David Hofstatter Inventor on the ‘901, ‘910, ‘110, ‘188, and ‘591 patents 1721 Las Canoas Road Santa Barbara, California 93105 Subject(s): The inventions claimed in the aforementioned patents. Leland Kirchoff Inventor listed on the ‘188, and ‘591 patents May be contacted through Pepper Hamilton. Subject(s): The inventions claimed in the aforementioned patents. Colin Kelley Inventor listed on the ‘188, and ‘591 patents May be contacted through Pepper Hamilton. Subject(s): The inventions claimed in the aforementioned patents. Meir Dan Inventor on the ‘970 patent May be contacted through Pepper Hamilton. Subject(s): The invention claimed in the aforementioned patent. Christopher Sacca Corporate Counsel for Google 1600 Amphitheater Parkway Mountain View, CA 94043 Subjects: Google’s knowledge of the CallWave patents; licensing terms; reasonable royalty. Mary Himinkool Business Development for Google 1600 Amphitheater Parkway Mountain View, CA 94043 Subjects: Google’s knowledge of the CallWave patents; licensing terms; reasonable royalty. John Greathouse Former employee of CallWave Inc. Subjects: Google’s knowledge of the CallWave patents; licensing terms; reasonable royalty. II. IDENTIFICATION OF RELEVANT DOCUMENTS Pursuant to Fed. R. Civ. P. 26(a)(1)(B) CallWave has at least the following documents in its possession custody or control: Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 36 of 37 PageID #: 48786 5 A. File histories of the patents-in-suit; B. Exclusive License Agreement with LocatioNet Systems, Inc. III. COMPUTATION OF DAMAGES Pursuant to Fed. R. Civ. P. 26(a)(1)(C) CallWave states that Defendants, and declaratory plaintiff Broadsoft, have infringed CallWave’s patents. CallWave is entitled to, at least, a reasonably royalty as a result of Defendants’ infringement. Additionally, CallWave is entitled to enhanced damages based on willful infringement by the Defendants and Broadsoft. IV. INSURANCE AGREEMENTS Pursuant to Fed. R. Civ. P. 26(a)(1)(D) CallWave states that it is unaware of any relevant insurance agreement. Dated: January 13, 2014 Respectfully submitted, /s/ James G. McMillan, III OF COUNSEL Noah V. Malgeri Benjamin M. Snitkoff Lauren Reznick (all admitted pro hac vice) Pepper Hamilton LLP 125 High Street 19th Fl. High Street Tower Boston, MA 02110 (617) 204-5100 Edmond D. Johnson (Del. Bar. No. 2257) James G. McMillan, III (Del. Bar. No. 3979) Pepper Hamilton LLP Hercules Plaza, Suite 5100 1313 Market Street P.O. Box 1709 Wilmington, Delaware 19899-1709 (302) 777-6539 johnsone@pepperlaw.com mcmillaj@pepperlaw.com Attorneys for Plaintiff CallWave Communications, LLC Case 1:12-cv-01704-RGA Document 653-3 Filed 10/31/16 Page 37 of 37 PageID #: 48787