Case 1:23-cv-00324-ADA Document 351-3 Filed 12/18/24 Page 1 of 5
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`Joint Pretrial Order
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`Exhibit 3
`Carbyne’s Statement of
`Contentions
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`Case 1:23-cv-00324-ADA Document 351-3 Filed 12/18/24 Page 2 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`CARBYNE BIOMETRICS, LLC,
`Plaintiff, Case No. 1:23-cv-00324-ADA
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`V.
`APPLE INC.,
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`Defendant.
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`PLAINTIFF CARBYNE BIOMETRIC, LLC’S
`STATEMENT OF CONTENTIONS
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`Case 1:23-cv-00324-ADA Document 351-3 Filed 12/18/24 Page 3 of 5
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`By providing these contentions, Carbyne Biometrics, LLC (“Carbyne”) does not concede
`that any of the following issues are appropriate for trial (at all or to a jury). Carbyne does not waive
`any pending motions or any future motions Carbyne may file. Further, rulings on pending motions
`may render some of these issues moot.
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`Carbyne’s contentions in this case are detailed in its pleadings, discovery responses, expert
`reports, and other filings and submissions in this case, including Carbyne’s motions for partial
`summary judgment, Daubert motions, motions in limine, and any other pending motions, which
`are incorporated here by reference; the contentions below do not include every detail underlying
`each contention.
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`1. Carbyne denies each of Apple’s contentions.
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`2. Carbyne is the assignee of U.S. Patent Nos. 11,475,105 (“the *105 Patent”) and
`11,514,138 (“the *138 Patent”) both titled “Authentication Translation” (the 105 and ’138 Patents,
`together are the “Authentication Patents”). The priority date of the Authentication Patents is
`January 17, 2012.
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`3. Carbyne contends that Apple literally infringes directly or through inducement of its
`customers, claims 1, 9, 14, and 35 of the *105 Patent and claims 1, 7, 8, and 25 of the *138 Patent
`in violation of 35 U.S.C. § 271. These claims may also be referred to as the “Authentication
`Asserted Claims.” Carbyne incorporates by reference the expert reports of its expert Dr. Mark
`Jones.
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`4. Carbyne contends that Apple infringes each of the Asserted Claims including the
`Authentication Asserted Claims by making, using, selling, offering for sale, importing, and/or
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`distributing within the United States certain of Apple’s iPhones, iPads, Mac computers, together
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`with Apple Magic Keyboards, and Apple’s Vision Pro headset to access a website or application
`using Passkeys with Face ID, Touch ID, or Optic ID.
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`5. Carbyne denies that Apple has shown by clear and convincing evidence that the
`Authentication Asserted Claims are obvious over Apple’s asserted prior art.
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`6. Carbyne is the assignee of U.S. Patent Nos. 9,972,010 (the 010 Patent), 10,713,656
`(the 656 Patent), and 11,526,886 (the ’886 Patent), all titled “Method, Medium, and System for
`Reducing Fraud” (the 010, 656, and ’886 are the “Fraud Reduction Patents” and together the
`Authentication Patents and Fraud Reduction Patents are the “Asserted Patents”). The priority date
`of the Fraud Reduction Patents is 17, 2010.
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`7. Carbyne contends that Apple literally infringes directly or through inducement of its
`customers, claims 1, 6, and 9 of the 010 Patent, claims 1 and 8 of the 656 Patent, and claims 1,
`12, and 14 of the *886 Patent in violation of 35 U.S.C. § 271. These claims may also be referred
`to as the “Fraud Reduction Asserted Claims.” Carbyne incorporates by reference the expert reports
`of its expert Dr. Eric Cole.
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`8. Carbyne contends that Apple infringes each of the Asserted Claims including the
`Fraud Reduction Asserted Claims by making, using, selling, offering for sale, importing, and/or
`distributing within the United States certain of Apple’s iPhones, iPads, and Apple’s Vision Pro
`headsets that are configured to perform Apple Cash peer-to-peer transfers using Face ID or Optic
`ID.
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`0. Carbyne denies that Apple has shown by clear and convincing evidence that the
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`Fraud Reduction Asserted Claims are obvious over Apple’s asserted prior art.
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`Case 1:23-cv-00324-ADA Document 351-3 Filed 12/18/24 Page 5of 5
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`10. Carbyne contends that it is entitled to damages in the form of a reasonable royalty.
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`Carbyne incorporates by reference the expert reports of Mr. Justin Blok with respect to damages
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`and the report of survey expert Dr. Rebecca Reed-Arthurs.
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`11. Carbyne seeks the following relief:
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`a.
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`f.
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`Entry of judgment declaring that Apple infringes the Asserted Claims of each
`of the Asserted Patents;
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`An order awarding damages sufficient to compensate Carbyne for Apple’s
`infringement of the Asserted Patents, but in no event less than a reasonable
`royalty, including supplemental damages post-verdict, together with pre-
`judgment and post-judgment interest, and costs;
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`Entry of judgment declaring that this case is exceptional and awarding Carbyne
`its costs and reasonable attorney fees pursuant to 35 U.S.C. § 285;
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`An accounting for acts of infringement;
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`Such other equitable relief which may be requested and to which Carbyne is
`entitled; and
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`Such other relief as is deemed appropriate by this Court.
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`12. Carbyne contends that its damages for Apple’s infringement of each of the Asserted
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`Claims of the Asserted Patents are not barred or limited by 35 U.S.C. § 287 or any other legal or
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`equitable theory asserted by Apple.
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