Free Motion to Stay - District Court of California - California

Case 3:07-cv-03177-MMC

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Case 3:07-cv-03177-MMC

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MANATT, PHELPS & PHILLIPS, LLP ROBERT D. BECKER (Bar No. CA 160648) E-mail: [email protected] EUGENE L.HAHM (Bar No. CA 167596) E-mail: [email protected] SHAWN G. HANSEN (Bar No. 197033) E-mail: [email protected] 1001 Page Mill Road, Building 2 Palo Alto, CA 94304-1006 Telephone: (650) 812-1300 Facsimile: (650) 21 3-0260 Attorneys for Defendant and Counterclaimant VISTO CORPORATION UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RESEARCH IN MOTION LIMITED, Plaintiff and Counterdefendant,
VS.

I VISTO'S DISCLOSURE OF ASSERTED
Case No.: C-07-3 177 (MMC)

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VISTO CORPORATION, Defendant and Counterclaimant.

CLAIMS AND INFRINGEMENT CONTENTIONS UNDER PATENT LOCAL RULE 3-1 Confidential - Attorney's Eyes Only materials attached hereto as Exhibits A and B

AND RELATED COUNTERCLAIMS.

Pursuant to Patent Local Rule 3-1 of the Rules of Practice for Patent Cases before the Honorable Maxine M. Chesney, United States District Court for the Northern District of California, Defendant and Counterclaimant Visto Corporation ("Visto") submits the following Disclosure of Asserted Claims and Preliminary Infringement Contentions relevant to the patents at issue. This disclosure is based on information available to Visto as of the date hereof, and Visto reserves the right to amend this disclosure to the full extent consistent with Patent Local Rule 3-6 and the Court's Case Management and Docket Control Order dated October 9, 2007
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1.

Patent Local Rule 3-l(a): Asserted Claims

For purposes of Patent Local Rule 3-l(a) with respect to patents at issue, Visto asserts that Plaintiff and Counterdefendant Research In Motion Limited ("RIM") infringes the following patent claims directly, contributorily and/or by inducement: claims 1-6 of U.S. Patent 7,225,231 ("'231 Patent"); and claims 1-15 of U.S. Patent 7,228,383 ("'383 Patent") (collectively the "Asserted Claims").

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Patent Local Rule 3-l(b): Accused Instrumentality

For purposes of Patent Local Rule 3-l(b) with respect to the patents at issue, Visto asserts that each of the Asserted Claims is infringed by RIM'S wireless solution, which includes products and services that enable access to andlor synchronization of data in secul-e network environments, including but not limited to each version of the "BlackBerry Products," BlackBerry Enterprise Servers for MicrosoftB Exchange, IBMB Lotus@ Domino@, NovellO Groupwise@, and MDS Applications, Hosted BlackBerry Enterprise Server, BlackBerry Enterprise Server - Small Business Edition, BlackBerry Internet Service, BlackBerry Desktop Software, BlackBerry Mail Connector, BlackBerry Desktop Redirector, BlackBerry Web Mail, BlackBerry Router, BlackBerry Infrastructure, BlackBerry Relay Servers, BlackBerry Network Operations Centers (NOCs), and BlackBerry Smartphones and devices, including BlackBerry Connect and BlackBerry Built-In (collectively,the "Accused Instrumentalities"). Unless otherwise noted, Visto's Infringement Contentions for the '383 patent apply to each and every version and edition of the "Accused Instrumentalities" at least as of June 1,2001. Also, unless otherwise noted, Visto's Infringement Contentions for the '23 1 patent apply to each and every version and edition of the "Accused Instrumentalities" at least as of January 1, 2001. Visto notes that any documents or evidence cited in Visto's 3-l(c) claim charts are merely exemplary, and not indicative of the particular versions and editions which Visto has accused of infringing. Since the Accused Instrumentalities utilize common software modules, interfaces and protocols, the differences between the different edition and versions of the BlackBerry products as of the operative accused dates (unless otherwise noted) are not material to Visto's infringement allegations.

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Notwithstanding Visto's Infringement Contentions, Visto does not concede that any BlackBerry Product in existence before the filing, priority or invention date of the Visto patents-in-suit is prior art to Visto's patents. While discovery is ongoing, Visto may modify or supplement its provided by Infringement Contentions based on a review of source code or other docun~entation RIM.
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Patent Local Rule 3-l(c): Claim Charts

Visto's investigatioll and analysis of the Accused Instrume~italities based upon is information made publicly available by RIM and on Visto's own investigations. Visto's investigation and analysis is further based upon documents produced and deposition transcripts made available fi-om Visto Corporrrtio~z Reserrrch irz Motion Limited, rrnd Reset//-clzh Motior? v.
Corl.'ortlrinrz, Case No. 2-06-CV-181, in the United States District Court for the Eastern District

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of Texas before the Honorable T. John Ward. In accordance with Patent Local Rule 2-2, Visto has designated the attached claim charts as "Confidential
- Attorney's

Eyes Only. Consistent

with Patent Local Rule 3-6, Visto reserves the right to amend and/or supplement this disclosure for any of the following reasons, or as ordered by the Court: (i) Visto's positions regarding infringement of specific claims will depend on how

those claims are construed by the Court. Because claim construction has not yet occurred, Visto cannot take a final position on the bases for infringement of the Asserted Claims; and (ii) While Visto's investigation and analysis of RIM'S products is based upon

information made publicly available by RIM and on discovery in Visto v. RIM, as discussed above, additional discovery from RIM is necessary before Visto can take final positions on the bases for infringement of the Asserted Claims. For at least these reasons, Visto reserves the right to amend or supplement this disclosure as provided in Patent Local Rule 3-6(a). Appended hereto as Exhibit A, and incorporated herein in its entirety, is a preliminary chart identifying specifically where each element of claims 1-6 of the '231 Patent is found in the Accused Instrumentalities. Appended hereto as Exhibit B, and incorporated herein in its entirety,

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is a preliminary chart identifying specifically where each element of claims 1-15 of the '383 Patent is found in the Accused Instrumentalities. Unless otherwise indicated, the information provided that col-1-espondsto each claim element is considered to indicate that each claim element is found within the product, device, process, method, function or act of the Accused Instrumentalities.

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Patent Local Rule 3-l(d): Literal InfringemenUDoctrine of Equivalents

For purposes of Patent Local Rule 3-l(d) with respect to the patents at issue, each element of each Asserted Claim is considered to be literally present and present under the Doctrine of Equivalents within each of the Accused Instrumentalities. Consistent with Patent Local Rule 3-6, Visto reserves the right to amend andlor supplement this disclosure for any of the following reasons, or as ordered by the Court: (i) Visto's positions regarding infringement of specific claims will depend on how

those claims are construed by the Court. Because claim construction has not yet occurred, Visto cannot take a final position on the bases for infringement of the Asserted Claims; and (ii) While Visto's investigation and analysis of RIM'S products is based upon

information made publicly available by RIM and on discovery in Visto v. RIM, as discussed above, additional discovery from RIM is necessary before Visto can take final positions on the bases for infringement of the Asserted Claims. For at least these reasons, Visto reserves the right to amend or supplement this disclosure as provided in Patent Local Rule 3-6(a).

V.

Patent Local Rule 3-l(e): Priority Dates

Claims 1-6 of the '231 Patent are entitled to a priority date at least as early as July 30, 1997 as a continuation application, and to a priority date at least as early December 13, 1996 as a continuation in part application. Claims 1-15 of the '383 Patent are entitled to a priority date at least as early as June 1, 200 1.

VI.

Patent Local Rule 3-1(D: Identification of Instrumentalities Practicing the Claimed Invention

Each of Visto's wireless messaging and synchronization solutions, Visto Mobile, Visto

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Mobile Enterprise Server, Visto Mobile Personal Edition, Visto Mobile Access Solution and Visto MessageXpress, in conjunction with products and services of Visto's allied wireless operators, device manufacturers, and other affiliates, embody Visto's claimed inventions, incorporating or reflecting all of the Asserted Claims Dated: October 19, 2007 MANATT, PHELPS & PHILLIPS, LLP Robert D. Becker Eugene L. Hahm Shawn G. Hansen

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By: ~u~enet. Hahm Atronzeys for Defendant nrzd Coll~lterclninzorzr VISTO CORPORATION

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