‘ 

EXHIBIT 3

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 1 of 44
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IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

CADDO SYSTEMS, INC. AND 511 

TECHNOLOGIES, INC., 

Plaintiffs 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

v. 

NXP SEMICONDUCTORS N.V., NXP 

B.V., NXP USA, INC., 

Defendants. 

NO. 6:20-cv-244-ADA 

JURY TRIAL DEMANDED 

CADDO SYSTEMS, INC. AND 511 

TECHNOLOGIES, INC., 

Plaintiffs 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

v. 

MICROCHIP TECHNOLOGY 

INCORPORATED, 

Defendant. 

NO. 6:20-cv-245-ADA 

JURY TRIAL DEMANDED 

DEFENDANTS’ FINAL INVALIDITY CONTENTIONS 

Pursuant to the Stipulation for First Amended Agreed Scheduling Order submitted on 

December 29, 2020 (-244 Case Dkt. No. 29, -245 Case Dkt. No. 21) and the Stipulation for 

Second Amended Agreed Scheduling Order submitted on February 23, 2021 (-244 Case Dkt. No. 

33, -245 Case Dkt. No. 24), Defendants NXP Semiconductors N.V., NXP B.V., NXP USA, Inc. 

(collectively “NXP”) and Microchip Technology Incorporated (“Microchip”) (collectively 

“Defendants”) hereby serves their Final Invalidity Contentions (the “Invalidity Contentions”) for 

U.S. Patent Nos. 7,191,411; 7,216,301; 7,640,517; 7,725,836; 8,352,880; and 10,037,127 

(collectively, the “Asserted Patents”). 

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I. INTRODUCTORY STATEMENT 

Plaintiffs Caddo Systems, Inc. and 511 Technologies, Inc.’s (collectively, “Plaintiffs” or 

“Caddo”) Preliminary Infringement Contentions (the “Infringement Contentions”), served on 

September 17, 2020, are vague and incomplete, and do not provide the specificity necessary to 

allow Defendants to adequately respond. For example, the Court’s Order Governing Proceeding 

for Patent Cases required Plaintiff to “serve[] preliminary infringement contentions in the form 

of a chart setting forth where in the accused product(s) each element of the asserted claim(s) are 

found.” Caddo has failed to do so. Caddo’s Infringement Contentions provide inadequate 

explanation for its infringement allegations and fail to fairly apprise Defendants of Caddo’s 

infringement theories or what is alleged to infringe. For example, Caddo’s Infringement 

Contentions for at least the following elements are deficient: 

 “wherein pre-selecting a given active link triggers the display of sibling menu items on 

the level associated with said given active link” (’411 Patent, Claim 1; see also ’517 

Patent, Claim 1; ’836 Patent, Claims 1 and 8; ’880 Patent, Claim 10; ’127 Patent, Claims 

1 and 14) / “each said active link enabling the user to directly browse all items on any 

given level of the hierarchical information structure” (’301 Patent, Claims 1, 9; see 

also ’836 Patent, Claim 1; ’127 Patent, Claims 1 and 14); 

 “dynamically constructing an Active Path as a sequence of active links” (’301 Patent, 

Claims 1, 9; ’836 Patent, Claims 2 and 8; ’880 Patent, Claims 1 and 10; ’127 Patent, 

Claims 1, 14; see also ’411 Patent, Claim 1 (“automatically constructing ...”); 

 “dynamically constructing the Active Path when a pre-defined short-cut is executed” 

(’301 Patent, Claim 2; ’836 Patent, Claim 2; see also ’411 Patent, Claim 2, ’517 Patent, 

Claim 2) / “selection of a predefined shortcut dynamically constructs an active path” 

(’880 Patent, Claims 9 and 18; ’127 Patent, Claims 9 and 22); 

 “one said active link corresponding to each of the items selected ...” (’411 Patent, Claim 

1; ’301` Patent, Claims 1 and 9; ’517 Patent, Claim 1; ’836 Patent, Claim 1; ’839 Patent, 

Claim 8); and 

 “wherein pre-selecting a given active link triggers the display of sibling menu items on 

the level associated with said given active link without disturbing the displayed Active 

Path” (’411 Patent, Claim 1) / “browsing the hierarchical information structure by rolling 

over said graphic element using a pointing device, wherein browsing results in the 

display of sibling items or hierarchically subordinate items” (’301 Patent, Claim 9; see 

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also id., Claim 3; ’517 Patent, Claim 1; ’836 Patent, Claim 3; ’880 Patent, Claims 3 and 

12; ’127 Patent, Claims 3 and 16) 

Taking the “display of sibling menu items ...” limitation as an example, the materials cited by 

Caddo do not disclose how NXP and Microchip’s websites plausibly display sibling menu items. 

See Infringement Contentions Ex. A at 6-7. Taking the “dynamically constructing an Active 

Path as a sequence of active links” limitation as another example, the materials cited by Caddo 

do not disclose how the alleged Active Path is constructed “dynamically.” See Infringement 

Contentions Ex. B at 14. Similarly, Caddo’s Infringement Contentions do not explain how the 

alleged Active Path is constructed “dynamically” when a pre-defined short-cut is executed. Id. at 

7. In at least each of the instances identified above, Caddo fails to “set[] forth where in the 

accused product(s) each element of the asserted claim(s) are found.” Caddo’s failure to identify 

what it contends to be infringing in its Infringement Contentions has prejudiced Defendants’ 

ability to prepare these Invalidity Contentions. 

Defendants understand that Caddo has asserted the following claims which are 

collectively referred to herein as the “Asserted Claims”: 

Patent NXP Microchip 

7,191,411 (the ’411 patent) 1-4 1-4 and 6 

7,216,301 (the ’301 patent) 1-5 and 9 

7,640,517 (the ’517 patent) 1-3 and 5-6 1-6 

7,725,836 (the ’836 patent) 1-5 and 7-8 

8,352,880 (the ’880 patent) 1, 3-10, 12-20, and 22 1, 3-10, 12-20, and 22 

10,037,127 (the ’127 patent) 1, 3, 4, 6-11, 13-14, 16, 17, 

19-24, and 26 1, 3-11, 13-14, 16-24, and 26 

To the extent that these Invalidity Contentions rely on or otherwise embody particular 

constructions of terms or phrases in the Asserted Claims, Defendants are not proposing any such 

constructions as proper constructions of those terms or phrases. Various positions put forth in 

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this document are predicated on the Court’s Claim Construction Order issued on April 24, 2021 

(-244 Case Dkt. No. 41, -245 Case Dkt. No. 34) and/or on Caddo’s incorrect and overly broad 

interpretation of its patents and claims as evidenced by its Infringement Contentions. Those 

positions are not intended to and do not necessarily reflect Defendants’ interpretation of the true 

and proper scope of Caddo’s claims, and Defendants reserve the right to adopt claim 

construction positions that differ from or even conflict with various positions put forth in this 

document. Defendants offer these Invalidity Contentions in response to Caddo’s Infringement 

Contentions, notwithstanding the deficiencies therein, without prejudice to any position 

Defendants may ultimately take as to any claim construction issues. Thus, Defendants’ 

Invalidity Contentions should not be interpreted as suggesting that Caddo’s reading of the 

Asserted Claims is correct, that any of the Asserted Claims are not indefinite, or as an admission 

that any of Defendants’ products or technology infringe any claim of the Asserted Patents. 

Defendants specifically deny any such infringement. 

These Invalidity Contentions, including the attached exhibits, are subject to modification, 

amendment, and/or supplementation in the event that Caddo provides any information that it 

failed to provide in its Infringement Contentions or attempts to cure the deficiencies in its 

Infringement Contentions, including in response to Plaintiffs’ Final Infringement Contentions, 

any findings as to the priority or invention date of the Asserted Claims, positions that Plaintiffs 

or their expert witness(es) may take concerning claim construction, infringement, and/or 

invalidity issues, and/or in light of any additional claim construction rulings the Court may make 

concerning the Asserted Claims. Further, because discovery is not complete, Defendants reserve 

the right to revise, amend, and/or supplement the information provided herein, including 

identifying and relying on additional references, should Defendants’ further search and analysis 

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yield additional information or references, consistent with the applicable rules and the Federal 

Rules of Civil Procedure. 

The Invalidity Contentions herein are based on Defendants’ present knowledge, and, 

pursuant to the Stipulation for First Amended Agreed Scheduling Order submitted on December 

29, 2020 (-244 Case Dkt. No. 29, -245 Case Dkt. No. 21), Defendants reserve the right to amend 

these contentions if it identifies new material despite its reasonable efforts to prepare these 

contentions. Defendants’ investigation regarding invalidity of the Asserted Patents over prior art 

and regarding other grounds of invalidity, including those based on the public use and on-sale 

bars under 35 U.S.C. § 102(b), anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. 

§ 103, failure to comply with 35 U.S.C. § 112, derivation under 35 U.S.C. § 102(f), and prior 

invention under 35 U.S.C. § 102(g), is ongoing. There may be products that were known or in 

public use prior to the filing dates of the applications leading to the Asserted Patents, but 

Defendants must first obtain additional information regarding these products using available 

discovery tools. 

Moreover, 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 Plaintiffs will contend that limitations of the Asserted Claims are not disclosed 

in the prior art identified by Defendant, or will contend that any of the identified references does 

not qualify as prior art under § 102. The identification of any patents as prior art shall be deemed 

to include identification of any foreign counterpart patents. To the extent that such issues arise, 

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 apparatus or method obvious. 

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II. INVALIDITY OF THE ASSERTED PATENTS 

A. Invalidity Based on 35 U.S.C. § 101 

Each Asserted Claim is invalid for failing to recite patentable subject matter under 35 

U.S.C. § 101. 

In Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court 

established a two-part test for determining whether a claim recites patent-eligible subject matter. 

First, the court must determine whether the claims at issue are directed to any of the following 

patentable ineligible subject matter: laws of nature, natural phenomena, or abstract ideas. Id. at 

2355. Second, if the claims are directed to ineligible subject matter, the court must then consider 

the claim elements—both individually and as an ordered combination—to determine whether 

they add an “inventive concept.” Id. Merely claiming a generic “computer” to implement an 

abstract idea is not sufficient to transform the computer into a patent-eligible invention. Id. at 

2357-50. 

The Asserted Claims are drawn to an abstract idea. The claims are untethered to any 

specific implementation or environment because the patent does not materially limit the concepts 

and components that were commonplace in ordinary graphical user interfaces, software 

programs, and webpages. See, e.g., ’411 patent at 1:23-24 (referring to navigation systems as 

“convention[].”); 1:24-26 (“By far the most popular menu navigation system is the so-called 

collapsing menu system which, for example, is used by many traditional personal computer 

applications”); 1:34-36 (“In a collapsing menu system each level in the hierarchy is presented as 

a level in the pull-down menu.”); 1:48-50 (“The defining characteristic of such a conventional 

navigation system is that navigation is one-way, and always starts from the root level to an end 

node.”); 1:65-2:15 (referring to various “conventional path menu systems.”). The numerous 

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references in the following sections confirm that the concept of navigating a multi-level 

hierarchical collapsing menu, as well as providing shortcuts to the path navigated to more easily 

revisit that path, was well-known and conventional in the art long before the applications for the 

Asserted Patents were filed. This is similar to a hiker who leaves breadcrumbs or markers on a 

trail to denote the route taken so she can more easily retrace her steps. 

Nor do the elements of the claims—whether individually or as a whole—evidence any 

“inventive concept.” The elements merely describe well-known navigation techniques, such as 

collapsible menus, graphical user interfaces, and automatically constructing shortcuts reflecting 

the path navigated implemented using conventional and well-known hardware. See, e.g., ’411 

patent at 3:14-21 (“FIG. 3 is a block diagram of a computer 32 on which the software of the 

present invention operates. In the preferred embodiment, the main logic of the computer 32 is 

embodied by a general-purpose, programmable microprocessor 34, which in conventional 

practice will have an on-board memory cache (not shown) and which may be associated with one 

or more mathematics or other special-purpose coprocessors (not shown).”). Merely claiming a 

series of generic techniques to implement an abstract idea is not sufficient to transform the 

claims into a patent-eligible invention. 

Defendants’ investigation concerning invalidity of the Asserted Patents under Section 

101 is ongoing. For example, no claim terms have been construed, Plaintiffs have not provided 

adequate infringement contentions, and discovery is ongoing. Defendants thus reserve the right 

to supplement and/or amend their invalidity contentions with respect to Section 101. 

B. Invalidity Based on 35 U.S.C. §§ 102 and 103 

The references in Exhibits A and B as well as the system prior art discussed below 

disclose elements of the Asserted Claims explicitly and/or inherently. These references may also 

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be relied upon to show the state of the art at the relevant time and/or that elements of the 

Asserted Claims, or any Asserted Claim as a whole, would have been obvious to a person having 

ordinary skill in the art at the time of the alleged invention. Obviousness combinations are 

provided in the alternative to Defendants’ anticipation contentions and are not to be construed as 

suggesting that any reference included in the combinations is not by itself anticipatory. 

Defendants are unable to know the extent to which Plaintiff will contend that limitations 

of the Asserted Claims are not disclosed in the art identified by Defendants as anticipatory. If 

any such issue arises with respect to any such limitation, Defendants reserve the right to identify 

other references and combinations that may make obvious the addition of the allegedly missing 

limitation. 

The references discussed in Exhibits A and B as well as the system prior art discussed 

below are applied to the Asserted Claims. The fact that Defendants’ disclosures pertain only to 

the Asserted Claims should not be construed to suggest that any of the other claims of the 

Asserted Patents are valid. Should Plaintiffs be permitted to amend their infringement 

contentions to assert additional or alternative claims, or modify the bases for their contentions, 

Defendants reserve the right to modify, amend, or supplement these disclosures. 

Various references discussed in Exhibits A and B as well as the system prior art 

discussed below may be of greater or lesser relevance and different combinations of these 

references may be implicated depending on Plaintiffs’ proposed claim constructions. In view of 

Defendants’ uncertainty regarding how Plaintiffs will contend the claims apply, the discussion of 

the different references in Exhibits A and B and the system prior art discussed below may reflect 

alternative applications of the prior art against the Asserted Claims. A more detailed discussion 

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of Defendants’ Section 102 and/or 103 defenses will be set forth in Defendants’ expert report(s) 

on invalidity. 

Defendants provide pinpoint citations to exemplary portions of the prior art for the 

purpose of fairly disclosing the manner in which the prior art references meet the claim 

limitations. Such citations should not be construed to mean that other portions of the prior art 

references are not relevant to the invalidity of the claims. Defendants specifically reserve the 

right to rely on the entirety of any or all of the prior art references—whether charted or not 

charted—as a basis for asserting invalidity of the Asserted Claims and/or as necessary to 

supplement their invalidity contentions with additional citations and evidence. 

1. Admitted Prior Art 

The Asserted Patents admit that certain teachings, concepts, and claim elements were 

known in the prior art. For example, in the Background of the Invention, the specification 

admits that, “[c]onventionally one of two navigation systems [were] used to navigate through the 

various levels of a menu tree” and that “the most popular menu navigation system is the socalled collapsing menu system which, for example, is used by many traditional personal 

computer applications.” ’411 patent at 1:23-27. The Asserted Patents further admit that the pulldown menu illustrated in FIG. 1A and FIG. 1B was “conventional” when the priority patent 

application was filed. Id. at 1:37-53. So, too, for FIG. 2A and FIG. 2B. Id. at 1:65-2:2. 

The Asserted Patents admit that “conventional operating systems such as Microsoft 

Windows® provide short-cuts in the form of pre-defined function keys or icons” and that “[s]uch 

short-cuts enable[d] the user to directly access the desired function.” Id. at 1:54-57. The 

Asserted Patents further admit that in the prior art (e.g., Microsoft Windows) a “system of 

displaying the contents of each folder is provided to guide the user through the hierarchy.” Id. at 

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2:8-10; see generally id. at 2-15. The Asserted Patents also admit that in the prior art “the user is 

provided with the contents of the present folder and the path leading to the present folder.” Id. at 

2:11-13. Indeed, the Asserted Patents state that the alleged invention “may be used in 

conjunction with a conventional navigation system such as the above-described collapsing menu 

system or path.” Id. at 4:5-8; see also id. at 4:14-16 (“The Active Path 100 is dynamically 

assembled and 15 displayed as the user navigates using the conventional menu screens.”); 4:25-

27 (“The Active Path 100 is automatically constructed as the user navigates between the various 

levels 10 of the conventional collapsing menu system.”); 4:38-41; 5:47-52. With respect to FIG. 

4, the Asserted Patents admit that “the present invention [] is visually similar to the conventional 

(DOS) path menu system of FIG. 2.” Id. at 3:61-63. 

The Asserted Patent also admit that the alleged invention is implemented on conventional 

hardware. See, e.g., id. at 3:14-21 (“FIG. 3 is a block diagram of a computer 32 on which the 

software of the present invention operates. In the preferred embodiment, the main logic of the 

computer 32 is embodied by a general-purpose, programmable microprocessor 34, which in 

conventional practice will have an on-board memory cache (not shown) and which may be 

associated with one or more mathematics or other special-purpose coprocessors (not shown).” 

2. Anticipation by Patents and Printed Publications 

Based on Defendants’ understanding of Plaintiffs’ Infringement Contentions, at least one 

or more Asserted Claims are invalid as anticipated under 35 U.S.C. § 102 in view of the patent 

and printed publication prior art references listed below as indicated and discussed in Exhibit A, 

as well as any methods or systems which embody the concepts disclosed in those references. 

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Exhibit A is a series of charts, numbered A-1 through A-7, that identify specific examples of 

where each claim limitation is found in a particular reference.1

Table 1: List of Anticipatory Patents and Printed Publications 

Chart Reference 

A-1 “Media Browser: An Example of Metadata-Based Browsing” by Alison Lennon, 

Daniel Lloyd-Jones, Ernest Wan, Ken Yap, Michael Anderson, and Belinda Yee, 

Canon Information Systems Research Australia (CISRA) (“Lennon”), published 

January 2001. 

A-2 “CobWeb: Exploring the Need for Style Guidelines to Improve Communication 

on the World Wide Web,” Alison Joyner (“Joyner”), Honors Thesis, University 

of Tennessee, Knoxville, published Spring 2000. 

A-3 “Seven Steps to Easier Web Navigation,” by Constance Petersen (“Petersen”), 

published April 2000. Available at 

http://jepelet.free.fr/studies/MBA/design/s4/lectures/Seven%20Steps%20To%20

Easier%20Web%20Navigation.pdf. 

A-4 “Site-Seeing: A Visual Approach to Web Usability,” by Luke Wroblewski 

(“Wroblewski”), published by Hungry Minds in April 2002. 

A-5 U.S. Pat. No. 7,277,928 (“Lennon ’928”) was filed on December 21, 2001 and 

was issued on October 7, 2007. U.S. Pat. Pub. No. US 2002/0107973 

(“Lennon ’973”) was filed on Nov. 13, 2001 and was published on Aug. 8, 2002. 

A-6 U.S. Pat. No. 8,438,487 (“Lin-Hendel”) was filed on May 23, 2000 and was 

issued on May 7, 20137. 

A-7 U.S. Pat. Pub. No. US 2002/0105537 (“Orbanes 2002”) was filed on Feb. 14, 

2001 and was published on Aug. 8, 2002. U.S. Pat. Pub. No. US 2001/0045965 

(“Orbanes 2001”) was filed on Feb. 14, 2001 and was published on Nov. 29, 

2001. 

A-8 U.S. Pat. No. 6,301,583 (“Zellweger”) was filed on May 16, 1998 and issued on 

Octo. 9, 2001. 

Defendants specifically assert the references in the table above as anticipatory references 

under 35 U.S.C. §§ 102 (a), (b), and/or (e), but also assert that the invention of such systems 

and/or methods prior to the alleged invention date of the asserted claims may also constitute 

1 NXP does not rely on the references described in Exhibits A-2, A-3, and A-5 for anticipation 

and/or obviousness.

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prior art under 35 U.S.C. § 102(g), which will be confirmed as discovery progresses. In 

particular, the work by Luke Wroblewski is an invalidating prior invention under § 102(g)(2). 

Mr. Wroblewski did not abandon, suppress, or conceal his invention as evidenced by the fact that 

he published the Site-Seeing book about it. Upon information and belief, the manuscript for 

Chapter 2 of the Site-Seeing reference, which discloses the combination of a dynamic 

breadcrumb path with dropdown menus, was completed in April of 2002 and is thus prior art. 

3. Invalidity by System Art 

In addition to the patents and printed publications discussed above, a number of systems 

constitute prior art that invalidates at least one Asserted Claim of the Asserted Patents under 35 

U.S.C. §§ 102 (a), (b), and/or (g). In addition to the systems described in the A-Charts and BCharts, the system prior art includes, for example, the following websites and operating systems: 

www.ebay.com; www.tigerdirect.com; MacOS X; www.apple.com; www.lukew.com; 

www.yahoo.com; www.useit.com; www.egreetings.com; www.epicurious.com; 

www.google.com; www.amazon.com; www.bluenile.com. 

Yahoo! 

 On information and belief, Yahoo! was a widely-used web directory and search engine. 

Yahoo! Directory was first available to the public in the United States around 1994, more than 

one year before the alleged priority date of the Asserted Patents and qualifies as prior art under at 

least 35 U.S.C. § 102(b). 

 Around the early 2000s, Yahoo! contains a hierarchical directory enable users to browse 

different categories and find websites and webpages related to a topic they are interested in. 

Each category, such as “Entertainment,” contains multiple sub-categories. 

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(https://web.archive.org/web/20000510085158/http://www.yahoo.com/) 

 As the user clicks on the categories and sub-categories, Yahoo! constructs a breadcrumb 

trail showing the user the path that the user has taken. 

(https://web.archive.org/web/20000816170143/http://dir.yahoo.com/Entertainment/Music/Artists

/By_Genre/Rock_and_Pop/Classic_Rock/) 

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www.ebay.com 

On information and belief, www.eBay.com was a website first created around 1995. 

Circa 2002, eBay had been an e-commerce website facilitating consumer-to-consumer and 

business-to-consumer sales. The eBay website was accessible to the public in the United States 

more than one year before the alleged priority date of the Asserted Patents and qualifies as prior 

art under at least 35 U.S.C. § 102(b).

Around the early 2000s, eBay’s website contained a hierarchical information structure to 

enable users to browse items for sale based on categories and sub-categories. As the customer 

selects categories that he or she wants to browse, the website automatically constructs a 

breadcrumb trail, which is an active path with active links indicating the path that the customer 

takes to get to a particular item or location. For example, on the www.ebay.com homepage, as 

captured by Wayback Machine on May 20, 2001, a user can click the “Clothing & Accessories” 

category, and then choose “Infants Clothing”: 

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(https://web.archive.org/web/20010520020014/http://www.ebay.com/) 

(https://web.archive.org/web/20010603074025/http://pages.ebay.com/catindex/clothing.html) 

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Clicking on “Infant Clothing” will take the customer to a page that contains the active path “Top 

> Clothing & Accessories > Infants Clothing.” Under the “Infants Clothing” active link it 

displays the subordinate categories “General,” “3-6 months,” “0-3 months” and “6-12 months.” 

(https://web.archive.org/web/20010401011958/http://listings.ebay.com/aw/plistings/list/category

3082/index.html) 

www.egreetings.com 

On information and belief, based on publicly available materials, www.egreetings.com, a 

website enabling users to download e-greeting cards, was publicly available in the United States 

at least as early as 1998, making it prior art to the Asserted Patent under at least 35 U.S.C. 

§ 102(b). 

Around 2001-early 2002, www.egreetings.com provides a multi-level hierarchical index 

that allows users to navigate and select a location. 

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(https://web.archive.org/web/20011103005346/http://www.egreetings.com/) 

When the user clicks an item in the multi-level hierarchical index, the resulting page 

includes a breadcrumb trail showing the path that leads the user to the particular page. The 

sidebar on the left also shows the sibling and subordinate items of the selected link. 

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(https://web.archive.org/web/20011108044253/http://www.egreetings.com/category.pd?L0=61&

L1=502&L2=1047&L3=50750&L4=300462&L5=0) 

www.bluenile.com 

On information and belief, www.bluenile.com is an online jewelry retail website founded 

in 1999. www.bluenile.com was thus in public use more than one year prior to the alleged 

priority date of the Asserted Patent and is thus prior art under at least § 102(b). 

Around 2001-early 2002, www.bluenile.com contains hierarchical drop-down menus 

with multiple subordinate items. For example, the website contains categories such as “shop by 

product,” “shop by occasion,” and “shop by material” categories, each having a drop-down menu 

with various subordinate items. 

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(https://web.archive.org/web/20010802044813/http://www.bluenile.com/diam_channel.asp?track

=55) 

When a user selects an item from the drop down menu, for example, “Diamond” under 

“shop by material,” and on the next page, selects “diamond bands,” it takes the user to the 

“diamond bands” page. The page displays an active path, “home > Diamond Jewelry > Diamond 

Bands for Women. Below the active path, the page also shows the subordinate items under the 

“Diamond Bands for Women” category, “$1,000 & under,” “$1,000 - $2,500,” “2,500 & up.” 

The sidebar on the left displays sibling items for the “Diamond Bands for Women” category, i.e., 

other types of jewelries under the “diamond” category, such as “Stud Earrings,” “Earrings” and 

“Necklaces.” 

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(https://web.archive.org/web/20010802103346/http://www.bluenile.com/product_catalog.asp?na

v1=diam_jewelry.asp&catid=8&oid=204&track=c2m1&elem=hdr&mod=basic) 

www.epicurious.com 

 On information and belief, www.epicurious.com is a website that focuses on food and 

cooking-related topics, created by Conde Nast in 1995. www.epicurious.com was thus in public 

use more than one year prior to the alleged priority date of the Asserted Patent and is thus prior 

art under at least § 102(b). 

www.epicurious.com provides a “browse” function that allows the user to browse 

different categories and sub-categories of recipes. www.epicurious.com provides a multi-level 

hierarchical navigation system: 

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21 

See English et al., “Examining the Usability of Web Site Search,” published in 2002, at Fig. 3. 

When the user clicks a link, it takes the users to the corresponding page with a breadcrumb trail. 

Underneath the breadcrumb trail, the webpage also provides a list of subordinate (child) menu 

items so that the user can refine his or her search among a large amount of recipes in a category. 

For example, the below web page contains a breadcrumb trail “Browse > Pasta > Saute” and 

provides subordinate menu items such as “American” and “Greek.” 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 22 of 44
22 

English at Fig. 5. 

Additional Products and Reservation of Rights 

Additional products may also constitute invalidating prior art to the Asserted Patents 

under 35 U.S.C. § 102(a), (b), and/or (g). This includes, for example, products that competed 

with the aforementioned products in the relevant timeframe. 

Defendants’ investigation into additional products is ongoing. Discovery in this case is 

only commencing, and thus Defendants reserve the right to supplement this response to identify 

these, or other, products as its investigation continues. 

4. Obviousness 

Based on Defendants’ understanding of Plaintiffs’ Preliminary Infringement Contentions, 

Defendants believe that the patent and printed publication references discussed in Exhibit A, as 

well as the system art prior art references discussed above, each invalidate one or more of the 

Asserted Claims. However, if the finder of fact determines that some limitation of a given claim 

was not disclosed by an asserted reference, Defendants contend that the charted reference in 

combination with the knowledge and skill of a person of ordinary skill in the art at the time of 

the alleged invention and/or in combination with the disclosures of other prior art would have 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 23 of 44
23 

rendered all the Asserted Claims obvious. Exemplary reasons why this is the case are explained 

below. 

The prior art references evidence teachings, suggestions, motivations, and/or other 

reasons to combine them in ways that render obvious all of the Asserted Claims. Certain 

references within Exhibit B are grouped or categorized according to a particular claim limitation 

that is disclosed within each reference. References from within a group share similar reasons as 

to why it would have been well within the level of ordinary skill in the art and obvious to 

combine a reference with prior art listed in Exhibit A or with other references in Exhibit B. 

Thus, in addition to the specific combinations of prior art disclosed using claim charts, 

Defendants reserve the right to rely on any combination of prior art references disclosed in these 

contentions. 

In Exhibit B, different categories of prior art references are presented and a title is 

provided for each such category. The titles are provided for convenience only and do not 

constitute a binding characterization of what the references under that title disclose. The 

Supreme Court has held that the combination of familiar elements according to known methods 

is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. 

Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007). When a work is available in one field of endeavor, 

design incentives and other market forces can prompt variations of it, either in the same field or a 

different one. Id. at 1740. For the same reason, if a technique has been used to improve one 

device, and a person of ordinary skill in the art would recognize that it would improve similar 

devices in the same way, using the technique is obvious unless its actual application is beyond 

his or her skill. 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 24 of 44
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To determine whether there is an apparent reason to combine the known elements as set 

forth in the Asserted Claims, a court can look to interrelated teachings of multiple references; the 

effects of demands known to the design community or present in the marketplace; and the 

background knowledge possessed by a person having ordinary skill in the art. Id. at 1740-41. 

For example, obviousness can be demonstrated by showing that there existed at the time of 

invention a known problem for which there was an obvious solution encompassed by the patent’s 

claims. Id. at 1743. Any need or problem known in the field of endeavor at the time of 

invention and addressed by the patent can provide a reason for combining the elements in the 

manner claimed. Id. Common sense also teaches that familiar items may have obvious uses 

beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the 

teachings of multiple patents together like pieces of a puzzle. Id. 

Thus, the motivation to combine the teachings of the prior art is found in the references 

disclosed in Exhibits A and B, the system art discussed above, and in: (1) the nature of the 

problem being solved; (2) the express, implied and inherent teachings of the prior art; (3) the 

knowledge of persons of ordinary skill in the art; (4) the fact that the prior art is generally 

directed towards website and software design; and (5) the predictable results obtained in 

combining the different elements of the prior art. 

One of ordinary skill would have therefore been motivated to make the combinations 

and/or modifications due to the recognition at the time of the alleged invention of a need for, in 

the Asserted Patents’ words, to “provide a more efficient way of navigating hierarchical menu 

systems.” ’411 patent at 2:23-24. The ’411 Patent states that at the time of the alleged 

invention, collapsing menu systems had been common in website and computer software design. 

Id. at 1:24-30 (“By far the most popular menu navigation system is the so-called collapsing menu 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 25 of 44
25 

system which, for example, is used by many traditional computer applications. The 

distinguishing characteristics of this system are that the navigation always commences from the 

initial or root level and that the menu collapses or disappears after a selection is made.”). 

The ’411 Patent also recognizes that at the time of the alleged invention, a POSITA would have 

recognized the shortcoming of the collapsible hierarchical menu system, as it only provides 

navigation that is “one-way, and always start from the root level to an end-node.” ’411 Patent, 

1:50-51. Therefore, “[t]his method of navigation is buried several levels down from the root 

directory.” Id. at 1:51-53. 

At the time of the alleged invention, a POSITA would have known that adding a 

breadcrumb trail was a solution to the problem with the collapsible navigation menu that it is 

always one-way and always starts from the root level, because an breadcrumb trail serves as a 

position indicator and the user can backtrack to other levels of the hierarchy without starting 

from the root level again. For example, Doss, “Designing Effective Web Navigation,” published 

April 2002, describes that “[a] Breadcrumb Trail ... is an effective way to communicate to the 

user where they are within a sites hierarchy. Breadcrumbs provide a way for users to orient 

themselves by acting as a position indicator. They also provide a way for users to backtrack their 

movement within a site without having to rely on the browser’s ‘Back’ button.” Doss at 16-17. 

Similarly, Joyner, “CobWeb: Exploring the need for style guidelines to improve communication 

on the World Wide Web,” published in 2000, explains that “[e]ach page on a site would have a 

different breadcrumb trail that shows exactly where the user is in the hierarchy o f a site ... The 

trail allows the user to know where he is and where he can go.” Joyner at 11. As another 

example, Dovin (U.S. Pat. Pub. 2003/0018665), teaches “a dynamic client-side breadcrumbing 

method and system for improving navigation of a plurality of web pages within a Website” by 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 26 of 44
26 

“updating the stored breadcrumbs with the generated breadcrumb to form a breadcrumb 

navigation trail of breadcrumbs associated with navigation of the web pages at the Website.” 

Dovin, Abstract. Dovin discloses a “breadcrumb engine” 112 to accomplish this. Id., Fig. 1; see 

also, e.g., id., [0005] (“myriad web sites implement breadcrumb navigation within their websites. 

Breadcrumbs are HyperText Markup Language (i.e., HTML) links that are displayed atop of web 

pages of a Website that link users to web pages that the user navigated through while at the 

Website.”); [0008] (“the present invention [] provides a system and method for dynamically 

generating breadcrumbs for web pages.”); [0014]; [0017]. “DHTML and CSS for the World 

Wide Web, Second Edition” by Jason Teague is another example of the ubiquity of breadcrumbs. 

This text provide implementation level examples for coding breadcrumbs. See, e.g., pg. 415 

(“Creating a Breadcrumb Trail”) et seq. Exemplary code is shown below: 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 27 of 44
27 

Therefore, a POSITA would have been motivated to combine references disclosing breadcrumb 

trails with references disclosing a multi-level hierarchical menu to make the multi-level 

hierarchical menu more effective and user-friendly. 

Furthermore, at the time of the alleged invention, a POSITA would have been motivated 

to combine references disclosing breadcrumb trails with references disclosing lists of items on 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 28 of 44
28 

the sibling or subordinate levels, so that when the user pre-selects or selects an active link, the 

list of sibling items or subordinate items would display. As Luke Wroblewski explained in April 

2002 in the book “Site-Seeing: A Visual Approach to Web Usability,” breadcrumb trails have 

the shortcoming that “they provide little understanding of the scope of the entire site and offer no 

navigation choices beyond backtracking and returning home.” Wroblewski at 58. Wroblewski 

proposed a design that “breadcrumbs are combined with drop-down menus to not only provide 

users with an understanding of their current position, but also an awareness of all the possible 

paths they didn’t take.” Id. Therefore, a POSITA would have been motivated to add lists of 

sibling or subordinate items to breadcrumb trails so that the user can use breadcrumb trails to go 

to other parts of a website beyond backtracking to the previous levels. 

Additionally, some of the prior art references arise from common assignees or share one 

or more of the same authors or inventors. For example, Alison Lennon is the inventor of U.S. 

Pat. No. 7,277,928 (“Lennon ’928”), an inventor on U.S. Pat. Pub. No. US 2002/0107973 

(“Lennon ’973”) which was filed on Nov. 13, 2001 and was published on Aug. 8, 2002, as well 

as an author of “Media Browser: An Example of Metadata-Based Browsing.” The common 

subject matter, ownership, and/or inventors/authors evidence a motivation to combine these (and 

other) references. 

For at least the reasons described above and below in the examples provided, as well as 

in the attached claim charts, it would have been obvious to one of ordinary skill in the art to 

combine any of a number of prior art references, including any combination of those identified in 

Exhibits A and B and the system art prior art references discussed above to meet the limitations 

of the Asserted Claims. 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 29 of 44
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Furthermore, as discussed in Section II.B.1 above, the Asserted Patents admit that many 

aspects of the purported invention were well-known at the time of the alleged invention, 

including collapsible menu trees for navigating folders or applications, standard operating 

systems like Microsoft Windows, hierarchical information organization schemes, and shortcuts. 

Embodying these familiar concepts in conventional computers would yield predictable results, 

and accordingly the Asserted Claims are obvious under KSR. 

As set forth throughout Defendants’ Invalidity Contentions and accompanying claim 

charts, Defendants contends that all of the Asserted Claims are obvious, as well as each 

individual claim element. Exhibit B provides charts B-1 through B-4 which set forth additional 

evidence of obviousness for certain claim elements. Based on Defendants’ understanding of 

Plaintiffs’ Preliminary Infringement Contentions, each list in Exhibit B identifies specific 

pinpoint citations exemplifying where the particular limitation can be found in the prior art 

references within each list. For the reasons explained in Exhibit B, a person of ordinary skill in 

the art would have been motivated to combine the references in each chart in Exhibit B with any 

of the primary references listed in Exhibit A with respect to the limitation each chart addresses. 

The absence of any reference charted in Exhibit A from one or more charts of Exhibit B is not an 

admission that such reference does not disclose any claim limitation. 

Table 2: Additional Disclosure and Evidence of Obviousness 

Chart Description 

B-1 displaying sibling menu items 

B-2 pre-selecting a menu / rolling over a link 

B-3 active link truncation 

B-4 pre-defined shortcuts 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 30 of 44
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5. Additional Background References 

In addition to the anticipatory and obviousness references identified above, Defendants 

may also rely on the references in Table 3 below to establish the state of the art and the 

knowledge of a person of ordinary skill in the art at the time of the alleged inventions of the 

asserted claims. The basic concepts and components in the Asserted Claims were all wellknown to persons of ordinary skill in the art prior to the alleged priority date of the Asserted 

Patent as reflected in the references lists in Table 3. 

As the internet grew in the 1990s and early 2000s, there developed greater need for easy 

website navigation techniques. Collapsible drop-down menus, also sometimes referred to as a 

flyout menu or pull-down menu, were developed as early as 1986 such as the Macintosh 

computer operating system’s graphical user interface. By early 2000s, such menus had become 

standard on numerous popular websites such as www.rolex.com and the Jane Goodall Institute’s 

website. The benefits of collapsible menus contributed to the usability and popularity of these 

websites. 

For example, the Jane Goodall Institute’s website, www.janegoodall.org, included a 

collapsible drop-down menu that, when the user’s cursor hovers over an item, a drop-down menu 

appears, showing subordinate items associated with the hovered-over item: 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 31 of 44
31 

https://web.archive.org/web/20020328104004/http://www.janegoodall.org/, captured on Mar. 28, 

2002 (showing that when the cursor hovers over “Jane Goodall” on the menu, the subordinate 

items under the “Jane Goodall” category display on the page). 

 Similarly, www.rolex.com also contains a collapsible drop-down menu. The frontpage 

contains five images as items of the navigation menu. When the cursor is hovered over one of 

the images, a drop-down menu displays (e.g., the “Rolex and You” drop-down menu): 

https://web.archive.org/web/20010618170704/http://www.rolex.com/, captured on June 18, 

2001. 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 32 of 44
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 In addition to collapsing drop-down menus, at the time of the alleged invention, other 

multi-level hierarchical menus such as site maps had also been widely used in websites. For 

example, yahoo.com provided a multi-level hierarchical site map that allowed the user to browse 

different categories (e.g., “Ars & Humanities”) and sub-categories (e.g., “Literature”) of 

information: 

https://web.archive.org/web/20000510085158/http://www.yahoo.com/, captured on May 10, 

2000. 

So, too, with the use of so-called “breadcrumb” trails. As explained in Keith Instone 

article and presentation at the 3rd Annual Information Architecture Summit in March 2002, 

“[p]ath breadcrumbs, which are becoming more common with database-driven sites, show the 

particular path the user has taken within the site to the page.” See www.instone.org/breadcrumbs; 

http://www.instone.org/files/KEI-Breadcrumbs-IAS.pdf (“Location, Path & Attribute 

Breadcrumbs”). The article explains that “[t]he design intent of breadcrumbs is usually stated as 

twofold: to convey information to the user (about the site structure or the path they have taken), 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 33 of 44
33 

and to also give users a way to select links from the breadcrumb (in order to go ‘up’ in the site 

hierarchy or to re-trace their steps).” Id. Moreover, as explained by the article, path 

breadcrumbs were dynamically generated: 

Path breadcrumbs represent the original metaphor of the term and show the path 

the user has taken within the site to get to the current page. The same content from 

the site can be presented with different breadcrumbs because users can take 

different routes. With database-driven sites where the page can be dynamic and 

based on user-state information, path breadcrumbs are becoming more common. 

Id. (emphasis added). Mr. Instone provides several real-world examples of path breadcrumbs 

from epicurious.com and hot artists. Id. As illustrated in the slide below from Mr. Instone’s 

presentation, the breadcrumb is dynamically generated based on the path taken. Id. 

Conference attendees provided feedback on path breadcrumbs, stating, for example, that 

“Epicurious breadcrumbs were not confusing in a usability study we did.” Id. Mr. Instone 

advised that path breadcrumbs were especially well-suited for websites which provided more 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 34 of 44
34 

than one path by which to navigate to a webpage. Id. Thus, it would have been obvious to a 

POSITA to use dynamically generated path breadcrumbs as taught in Location, Path & Attribute 

Breadcrumbs on websites that provided multiple ways to land on a particular page, including 

websites disclosed in the primary references of Exhibit A. 

Similarly, the dynamic breadcrumb trail in epicurious.com is analyzed in English et al., 

“Examining the Usability of Web Site Search” (2002). English (2002) provides an example of 

breadcrumb trail in epicurious.com, “Browse > Pasta > Saute,” with child menu items 

underneath the breadcrumb trail that enables the user to refine the search and choose a subcategory such as “American” or “Greek”: 

English (2002) at Fig. 5. 

 Both the collapsible menu and the breadcrumb trail are also widely used in software 

designs. For example, Shum et al., “Liferay Portal 4 – Content Management System Guide,” 

published in 2000, shows both a collapsible (retractable) menu and a dynamic breadcrumb trail 

used in the Liferay Portal software system: 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 35 of 44
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Shum at 30. Thus, it would have been obvious to a POSITA to combine breadcrumb trails with 

collapsible drop-down menus, including websites disclosed in the primary references of Exhibit 

A. 

Table 3: List of Additional Background References 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 36 of 44
36 

Title or Pat. No. / Pub. No. 

Author / 

Publisher or 

Inventor 

Issue, 

Publication, 

or Filing 

Date 

Wayback Machine Capture of 

https://web.archive.org/web/20010618170704/http://www.ro

lex.com/

Captured on 

June 18, 

2001 

Wayback Machine Capture of 

https://web.archive.org/web/20020328104004/http://www.ja

negoodall.org/

Captured on 

Mar. 28, 

2002 

“Location, Path & Attribute Breadcrumbs,” available at 

www.instone.org/breadcrumbs; 

http://www.instone.org/files/KEI-Breadcrumbs-IAS.pdf

Instone March 2002 

“Examining the Usability of Web Site Search” English et al. 2002 

“Domino Tunneling Views: an IP.com Prior Art Database 

Technical Disclosure” Nov. 3, 2001 

“Liferay Portal 4 – Content Management System Guide” Shum et al. 2000 

Travelocity.com Around 1996 

“Effects of Contextual Navigation Aids on Browsing Diverse 

Web Systems” Park et al. April 2000 

“A Comprehension-Based Model of Web Navigation and Its 

Application to Web Usability Analysis” Kitajima et al. Jan. 2000 

“A Study of Three Browser History Mechanisms for Web 

Navigation” Nadeem et al. 2001 

“Inside Macintosh,” Vol. V Apple 

Computer, Inc. 1986 

“A Graphical Aid for Web Navigation” Ren Aug. 2000 

U.S. Patent No. 7,770,102 Wolff et al. June 6, 2000 

European Patent Application No. 0 947 921 A2 Guerrero Jun. 10, 1999 

U.S. Patent No. 5,801,702 Dolan et al. Sep. 1, 1998 

U.S. Patent No. 6,236,400 Guerrero May 22, 

2001 

U.S. Patent No. 6,240,410 Wical May 29, 

2001 

U.S. Patent No. 6,256,028 Sanford et al. Jul. 3, 2001 

U.S. Patent No. 6,462,762 Ku et al. Oct. 8, 2002 

U.S. Patent No. 6,597,377 MacPhail Jul. 22, 2003 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 37 of 44
37 

Title or Pat. No. / Pub. No. 

Author / 

Publisher or 

Inventor 

Issue, 

Publication, 

or Filing 

Date 

U.S. Patent No. 6,621,532 Mandt Sep. 16, 

2003 

U.S. Patent No. 6,633,316 Maddalozzo, 

Jr. et al. Oct. 14, 2003 

U.S. Patent No. 6,832,350 Bates et al. Dec. 14, 

2004 

U.S. Patent No. 6,990,638 Barksdale et al. Jan. 24, 2006 

U.S. Patent No. 8,438,487 Lin-Hendel May 7, 2013 

U.S. Patent No. 5,742,768 Gennaro Apr. 21, 

1998 

U.S. Patent Application Publication No. 2004/0075693 Moyer et al. Apr. 22, 

2004 

WO 01/16842 Clarke et al. Mar. 8, 2001 

RFC 1738 (RFC1738), Internet RFC/STD/FYI/BCP 

Archives Dec. 1994 

“Navigation Bars for Hierarchical Web Sites” Bowler et al: 2001 

“Quick Start to Using OpenStep Desktop” 

Sun 

Microsystems 

Inc. 

Sep. 1996 

“Fully Navigatable Breadcrumb Trails” 

International 

Business 

Machines 

Sep. 2002 

http://home.lu.lv/-mihails/ttl/P4_DynamicWeb/24-

WebSiteNav/BreadCrumbs/(implementation of the code 

disclosed in Teague Book Jason Cranford Teague, DHTML 

and CSS for World Wide Web at 344 (2d ed.) published 

2001 Chapter 24). 

 2001 

Discovery is ongoing, and Defendants’ prior art investigation and third-party discovery is 

therefore not yet complete. Defendants reserve the right to present additional items of prior art 

under 35 U.S.C. § 102(a), (b), (e) and/or (g), and/or 35 U.S.C. § 103 located during the course of 

discovery or further investigation, as well as update its 35 U.S.C. § 102(f) assertions. 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 38 of 44
38 

Defendants further reserve the right to assert invalidity under 35 U.S.C. § 102(c) or (d) to the 

extent that discovery or further investigation yield information forming the basis for such 

assertions. 

C. Invalidity Based on 35 U.S.C. § 112 

Defendants list below exemplary grounds upon which it contends that the Asserted 

Claims are invalid, under at least Plaintiffs’ apparent construction of the claims in its 

Infringement Contentions, for failure to meet one or more requirements of 35 U.S.C. § 112. This 

is particularly the case with respect to the apparent overbroad constructions that Plaintiff is 

applying to the Asserted Claims, which go beyond (and are not adequately described or enabled 

by) the purported inventions disclosed in the Asserted Patents. To the extent the Asserted 

Claims may eventually be construed so broadly as to cover the accused products, such a 

construction would render the Asserted Claims invalid for failure to meet the requirements of 35 

U.S.C. § 112. A more detailed discussion of Defendants’ written description, enablement, and 

indefiniteness defenses will be set forth in Defendants’ expert report(s) on invalidity and claim 

construction briefing. 

Defendants’ investigation concerning invalidity under 35 U.S.C. § 112 is ongoing. For 

example, the claim terms have not been construed, Plaintiff has not provided adequate 

infringement contentions, and discovery is ongoing. Thus, Defendants reserve the right to 

supplement and/or amend its invalidity contentions with respect to § 112. Such supplementation 

and/or amendments may include, but are not limited to, invalidity contentions based on 

indefiniteness, lack of written description, and/or lack of enablement should the claims be 

construed under 35 U.S.C. § 112(6). 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 39 of 44
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1. Written Description / Enablement 

Several Asserted Claims are invalid under 35 U.S.C. § 112(1) because they fail to 

provide an adequate written description of certain claim limitations such that one of ordinary 

skill in the art would recognize that the named inventor(s) had possession of those claim 

limitations and/or fails to enable one of ordinary skill in the art to practice the claimed invention 

without undue experimentation. These claims include at least the following, as well as all claims 

that depend from the particularly identified claims below: 

Under Caddo’s apparent interpretation of the claim term “pre-defined shortcuts” in its 

Infringement Contentions (see, e.g., Infringement Contentions Ex. A at 7-8), claim 2 of the ’411 

patent is invalid because the specification lacks adequate written description support for the full 

scope of the claim and fails to enable the full scope of the claim. Claim 2 of the ’301 patent, 

claim 2 of the ’517 patent, claim 2 of the ’306 patent, claim 2 of the ’836 patent, claims 2 and 18 

of the ’880 patent, and claims 9 and 22 of the ’127 patent contain similar language and are also 

invalid for substantially the same reasons. 

The claim phrase “displaying the Active Path as an alternative to the graphical user menu 

system” (emphasis added) in claim 1 of the ’411 patent and claim 1 of the ’517 patent render 

those claims invalid because the specification lacks adequate written description support for the 

full scope of the claim and fails to enable the full scope of the claim. 

Under Caddo’s apparent interpretation of the claim term “wherein pre-selecting a given 

active link triggers the display of sibling menu items on the level associated with said given 

active link without disturbing the displayed Active Path” in its Infringement Contentions (see, 

e.g., Infringement Contentions Ex. A at 6-7, claim 1 of the ’411 patent is invalid because the 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 40 of 44
40 

specification lacks adequate written description support for the full scope of the claim and fails 

to enable the full scope of the claim. 

2. Indefiniteness 

Several Asserted Claims are invalid under 35 U.S.C. § 112(2) because they fail to 

particularly point out and distinctly claim the subject matter which the named inventor(s) regard 

as the alleged invention. The claims, read in light of the specification and file history, “fail to 

inform, with reasonable certainty, those skilled in the art about the scope of the invention.” 

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). The indefinite claims 

include at least those identified below and their respective dependent claims: 

Claim 1 of the ’411 patent and claim 1 of the ’517 patent are invalid for lack of 

antecedent basis for the term “graphical user system,” and thus failing to inform, with reasonable 

certainty, those skilled in the art about the scope of the alleged invention. 

Under Caddo’s apparent interpretation of the claim term “each said active link enabling 

the user to directly browse all items on any given level of the hierarchical information structure 

including all hierarchically subordinate items without affecting the Active Path” in its 

Infringement Contentions (see, e.g., Infringement Contentions Ex. B at 5-6), claims 1 and 9 of 

the ’301 patent is invalid for failing to inform, with reasonable certainty, those skilled in the art 

about the scope of the alleged invention. Caddo’s interpretation excludes “including all 

hierarchically subordinate items,” and therefore disregards a distinct embodiment disclosed by 

the ’301 patent. See id. Claims 7 and 8 of the ’301 patent and claims 1 and 8 of the ’836 patent 

contain similar language and are also invalid for the same reason. 

The claim phrase “wherein pre-selecting a given active link triggers the display of sibling 

menu items on the level associated with said given active link without disturbing the displayed 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 41 of 44
41 

Active Path” (emphasis added) in claim 1 of the ’411 patent is invalid for failing to inform, with 

reasonable certainty, those skilled in the art about the scope of the alleged invention. Claim 1 of 

the ’517 patent, claim 10 of the ’880 patent, and claims 1 and 14 of the ’127 patent contain 

similar language and are also invalid for substantially the same reasons. 

Under Caddo’s apparent interpretation of the claim term “one said active link 

corresponding to each of the items selected” in its Infringement Contentions (see, e.g., 

Infringement Contentions Ex. A at 4-5), claim 1 of the ’411 patent is invalid for failing to 

inform, with reasonable certainty, those skilled in the art about the scope of the alleged 

invention. According to the disclosure of the Asserted Patents, an active link corresponds to a 

single selected item, not “each of the items selected” as the claim requires by its plain language. 

Even Caddo is confused by this claim limitation as it contends “[t]he ’411 Accused 

Instrumentalities’ active link corresponds to each of the items selected.” Id. (emphasis added). 

Claims 1 and 9 of the ’301 patent and claim 1 of the ’517 patent contain similar language and are 

also invalid for the same reason. 

Similarly, under Caddo’s apparent interpretation of the claim term “with one said active 

link corresponding to each of the hierarchical levels accessed by the user” in its Infringement 

Contentions (see, e.g., Infringement Contentions Ex. D at 3), claim 1 of the ’836 patent is invalid 

for failing to inform, with reasonable certainty, those skilled in the art about the scope of the 

alleged invention. According to the disclosure of the Asserted Patents, an active link 

corresponds to a single hierarchical level, not “each of the hierarchical levels accessed by the 

user” as the claim requires by its plain language. Even Caddo appears confused by this claim 

limitation as it contends that the Accused Instrumentalities have “one said active link 

corresponding to each of the hierarchical levels accessed by the user (e.g., the ’836 Accused 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 42 of 44
42 

Instrumentalities’ active path “Automotive—ADAS and Highly Automated Driving—

Automotive Radar Systems.” Id. (emphasis added). 

. 

Under Caddo’s apparent interpretation of the claim term “selecting from the one or more 

items displayed by one of the active links on the active path” in its Infringement Contentions 

(see, e.g., Infringement Contentions Ex. E at 5, 18), claims 1 and 10 of the ’880 patent is invalid 

for failing to inform, with reasonable certainty, those skilled in the art about the scope of the 

alleged invention. According to the disclosure of the ’880 patent, an active link corresponds to a 

previously selected item, therefore there cannot be “one or more items displayed by one of the 

active links.” Claims 1 and 14 of the ’127 patent contain similar language (“selecting the item 

from the one or more items displayed by one of the active links on the active path”) and are also 

invalid for the same reason. 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 43 of 44
43 

Dated: June 11, 2021 Respectfully submitted, 

/s/Travis Jensen 

Travis Jensen 

California Bar No. 259925 

ORRICK, HERRINGTON & SUTCLIFFE LLP

1000 Marsh Rd. 

Menlo Park, CA 94025 

Telephone: 650.614.7400 

Facsimile: 650.614.7401 

tjenson@orrick.com

ATTORNEY FOR MICROCHIP 

TECHNOLOGY INCORPORATED 

/s/ Barry K. Shelton_____ 

Barry K. Shelton 

bshelton@sheltoncoburn.com

Texas State Bar No. 24055029 

Bradley Coburn 

coburn@sheltoncoburn.com 

Texas State Bar No. 24036377 

SHELTON COBURN LLP 

311 RR 620, Suite 205 

Austin, TX 78734-4775 

Telephone: (512) 263-2165 

Facsimile: (512) 263-2166 

ATTORNEYS FOR DEFENDANTS NXP 

SEMICONDUCTORS N.V., NXP B.V. AND 

NXP USA, INC. 

CERTIFICATE OF SERVICE 

The undersigned certifies that on June 11, 2021, all counsel of record who are deemed to 

have consented to electronic service are being served with a copy of this document through the 

Court’s CM/ECF system under Local Rule CV-5. Any other counsel of record will be served by 

a facsimile transmission or first-class mail. 

/s/Travis Jensen 

Travis Jensen 

Case 6:20-cv-00245-ADA Document 65-3 Filed 12/14/21 Page 44 of 44