Marc A. Cohn 

+1 202.942.5797 Direct 

marc.cohn@arnoldporter.com 

Arnold & Porter Kaye Scholer LLP 

601 Massachusetts Ave, NW | Washington, DC 20001-3743 | www.arnoldporter.com

US 168138919v2 

August 7, 2020 

VIA E-MAIL 

Jason Wejnert 

(Jason.Wejnert@spencepc.com) 

Spence PC 

515 N. State Street, 14th Floor 

Chicago, IL 60654 

Re: Nordic Interactive Technologies LLC v. Samsung Electronics Co., Ltd. et 

al, 6:20-cv-00064-ADA (W.D. Tex.) 

Dear Jason, 

We write in response to your August 5, 2020 letter, which responded to our July 

21, 2020 letter. 

First, though your response came nearly a month after Nordic served its 

infringement contentions and more than two weeks after our letter, if Nordic will extend 

the same reciprocal courtesy to us in the future if needed, we will not oppose an 

amendment of Nordic’s contentions. 

In particular, we would not oppose amended infringement contentions that add the 

new claim chart (Ex. E) and the specific statements below regarding the invention dates 

and production: 

 

 The asserted claims of the ’097 Patent have an invention date no later than 

October 31, 2002. 

 

 The asserted claims of the ’095 Patent have an invention date no later than August 

14, 1998. 

 

 Plaintiff is not in the possession, custody, or control of any documents further 

evidencing conception and/or reduction to practice of any asserted claims. 
Jason Wejnert 

August 7, 2020 

Page 2 

US 168138919v2

 

Please provide us your proposed amended infringement contentions (in clean and 

redline form) by Tuesday, August 11. 

 

Second, we continue to believe Nordic’s position on the priority date of the 

asserted claims of the ’097 Patent is frivolous. In particular, we disagree that the October 

31, 2002 application, which issued as U.S. Patent No. 6,909,721 (the “’721 Patent”), 

provides Section 112 support for any of the claims of the ’097 Patent, including asserted 

claims 19-24. 

For example, with respect to every independent claim (and therefore every 

claim1 ) of the ’097 Patent, we pointed out that there is no Section 112 support for the 

element “a discovered nearby device provides an indication that it may include 

middleware software” (the “Provides an Indication” element). In response, you cited 

only two passages of the ’721 Patent (6:40-4 and 7:9-15). Both passages, however, are 

substantially the same and provide only that the terminal “sends an acknowledgement 

response message” to the server. There is nothing in the ’721 Patent that says the 

“acknowledgement response message” is an indication at all, much less one that indicates 

that the terminal may include middleware.2 

When contrasted to the new matter added to the September 16, 2003 application, 

the difference is clear. For example, as cited in our letter, the new matter in the Summary 

of Invention of the 2003 application describes the Provides an Indication claim element 

expressly: 

The method comprises conducting an inquiry of the mobile ad hoc 

communications network to discover nearby devices. If the inquiry 

indicates that the nearby devices may include a middleware layer, the 

1

 You letter does not address the further issues we raised with claims 22-24 (e.g., that the 

’721 Patent does not disclose an inquiry response message or an inquiry result 

command). 

2

 The “acknowledgement response message” (“ARM”) simply acknowledges the 

message received from the server. (’721 Patent at 7:9-15). There is no description of the 

ARM being an indication of anything, and there are no other descriptions in the ’721 

Patent of the ARM other than the two you identified. And while the cited passage in 

column 7 also provides that the terminal sends a message (which appears to be different 

than the ARM) that includes a “local application directory” (7:14), the specification does 

not describe this message as indicating anything, and again much less indicating that the 

discovered device may include middleware. 
Jason Wejnert 

August 7, 2020 

Page 3 

US 168138919v2

method further comprises creating a connection to each of the nearby 

devices and confirming whether each of the nearby devices include the 

middleware layer. 

’097 Patent at col. 3:7-13 (emphasis added); see also col. 10:41-47, FIG. 5. Indeed, this 

requirement for an indication related to middleware as a precondition for a connection (and 

subsequent steps leading to a connection) was a significant focus of the new matter (e.g., 

necessitating that the 2003 application be filed as a continuation in part). 

In any event, we ask that Nordic reconsider its position, but if not, we will seek 

remedies at the appropriate time, including under 35 USC § 285. 

Best regards, 

Marc A. Cohn