Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 1 of 21
`
`
`
`Michael Liu Su (SBN 300590)
`michael.liu.su@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`Lionel M. Lavenue (pro hac vice to be filed)
`lionel.lavenue@finnegan.com
`Bradford C. Schulz (pro hac vice to be filed)
`bradford.schulz@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`Telephone:
`(571) 203-2700
`Facsimile:
`(202) 408-4400
`
`Attorneys for Plaintiff
`ZTE (USA) Inc.
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`ZTE (USA) INC.,
`
`
`Plaintiff,
`
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`AGIS HOLDINGS, INC., and ADVANCED
`GROUND INFORMATION SYSTEMS, INC.,
`
`Defendants.
`
`
`
`
`
` CASE NO. 18-cv-06185
`(Former Case No. 2:17-cv-00517-JRG) (E.D.
`Tex.)
`
`PLAINTIFF’S COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 2 of 21
`
`
`
`Plaintiff ZTE (USA) Inc. (“ZTE”), for its Complaint against Defendants AGIS Software
`Development LLC, AGIS Holdings, Inc. and Advanced Ground Information Systems, Inc.
`(collectively “AGIS”) seeking declaratory judgment of non-infringement, invalidity, and/or
`unenforceability as to U.S. Patent Nos. 8,213,970; 9,408,055; 9,445,251; 9,467,838; and 9,749,829
`(collectively, the “Patents-in-Suit”), hereby alleges as follows:
`NATURE OF ACTION
`This is an action arising under the patent laws of the United States, 35 U.S.C. § 1 et.
`1.
`seq. and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, seeking a declaratory judgment of:
`(i) non-infringement of the Patents-in-Suit; (ii) invalidity of the Patents-in-Suit; (iii) unenforceability
`of certain of the Patents-in-Suit due to inequitable conduct; and for such other relief as the Court
`deems just and proper.
`
`THE PARTIES
`Plaintiff ZTE (USA) Inc. is a corporation organized and existing under the laws of the
`2.
`state of New Jersey, with its principal place of business at 2425 N. Central Expressway, Suite 600,
`Richardson, Texas 75080 with an office located at 1900 McCarthy Blvd, Milpitas, California 95035.
`Upon information and belief, Defendant AGIS Software Development LLC is a
`3.
`limited liability company organized and existing under the laws of the State of Texas, and maintains
`its principal place of business at 100 W. Houston Street, Marshall, Texas 75670. Upon information
`and belief, AGIS Software Development LLC is wholly owned by AGIS Holdings, Inc.
`Upon information and belief, Defendant AGIS Holdings, Inc. is organized and
`4.
`existing under the laws of the State of Florida, and maintains its principal place of business at 92
`Lighthouse Drive, Jupiter, Florida 33469.
`Upon information and belief, Defendant Advanced Ground Information Systems, Inc.
`5.
`is organized and existing under the laws of the State of Florida, and maintains its principal place of
`business at 92 Lighthouse Drive, Jupiter, Florida 33469.
`JURISDICTION AND VENUE
`This Court has exclusive subject matter jurisdiction over this action pursuant to
`6.
`federal question jurisdiction, 28 U.S.C. §§ 1331 and 1338(a), the Declaratory Judgment Act, 28
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 3 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`U.S.C. §§ 2201-2202, and the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
`An actual and justiciable controversy exists between ZTE and AGIS as to the alleged
`7.
`infringement, validity, and enforceability of the claims of the Patents-in-Suit.
`This Court has subject matter jurisdiction over this action based on a real and
`8.
`immediate controversy between ZTE and AGIS regarding whether various ZTE’s mobile devices
`infringe the Patents-in-Suit, which AGIS purports to own, whether those AGIS patents are
`unenforceable, and whether AGIS is barred from asserting infringement of those patents. As
`described in more detail below, this controversy arises out of AGIS’s infringement assertions
`demands over ZTE’s products allegedly “pre-configured or adapted with map-based communication
`applications and/or features such as Google Maps, Android Device Manager, Find My Device,
`Google Messages, Android Messenger, google Hangouts, Google Plus, and Google Latitude among
`other relevant applications and/or features.” See case no. 2:17-cv-00517-JRG (Dkt. No. 32) (E.D.
`Tex.); see also Exs. A-E (Infringement Contentions).
`On information and belief, Defendants are subject to this Court’s specific and/or
`9.
`general personal jurisdiction, pursuant to due process and/or the California Long Arm Statute, due at
`least to (1) Defendants’ activities purposefully directed at residents of this forum, (2) the claims arise
`out of or relate to the Defendants’ activities with this forum, and (3) the assertion of personal
`jurisdiction is reasonable and fair.
`On information and belief, AGIS asserted one or more of the Patents-in-Suit against
`10.
`Apple Inc. in AGIS Software Development LLC v. Apple, Inc., case no. 2:17-cv-00516-JRG (E.D.
`Tex.). Additionally, on information and belief, Apple Inc. is a California incorporated company and
`AGIS conducted meaningful enforcement activities in California. On information and belief, AGIS
`retained counsel in California, traveled there, and deposed witnesses there.
`On information and belief, AGIS asserted one or more patents related to the Patent-
`11.
`in-Suit against Life360, Inc. in Advanced Ground Information Systems, Inc. v. Life360, Inc., case no.
`9:14-cv-80651-DMM (S.D. Fla.). Additionally, on information and belief, Life360 Inc. is a
`California incorporated company and AGIS conducted meaningful enforcement activities in
`California. On information and belief, AGIS retained counsel in California, traveled there, and
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`3
`CASE NO. 18-cv-06185
`
`
`
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 4 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`deposed witnesses there.
`On information and belief, AGIS asserted one or more patents against ZTE (USA),
`12.
`Inc. and ZTE (USA), Inc.’s sister company ZTE (TX) in AGIS Software Development LLC v. ZTE
`Corp. et al., case no. 2:17-cv-00517-JRG (E.D. Tex.) (the “Former Case”). Additionally, ZTE
`(TX)’s primary place of business is in California and AGIS conducted meaningful enforcement
`activities in California. For example, AGIS retained counsel in California, traveled there, and
`deposed witnesses there including at least a 30(b)(6) deposition of ZTE (USA), Inc. in Redwood
`Shores, California.
`On information and belief, twenty days before bringing an action against ZTE TX in
`13.
`the Eastern District of Texas, Defendant AGIS Holdings, Inc. formed and incorporated Defendant
`AGIS Software Development LLC in Texas. Of note, only two months prior, the sister company of
`AGIS Software Development LLC, Advanced Ground Information Systems, Inc., was litigating in
`the Southern District of Florida with patents from the same family as the Patents-in-Suit. Once the
`Florida matter was resolved, in a loss (with non-infringement and attorneys’ fees awarded against
`AGIS for almost $750,000 due to litigating “an exceptionally weak case”), AGIS then sought a new
`district. See Advanced Ground Information Systems, Inc. v. Life360, Inc. case no. 14-cv-80651 (Dkt.
`No. 200) (S.D. Fla.) (“While I stop short of finding of bad faith, . . . these claims seemed designed to
`extract settlement not based upon the merits of the claim but on the high cost of litigation.”).
`On information and belief, on June 21, 2017, AGIS filed the original Complaint (Dkt.
`14.
`No. 1 in 2:17-cv-00517) in the Former Case in the Eastern District of Texas, asserting four patents
`against ZTE (TX), Inc. and ZTE Corporation. On September 26, 2017, ZTE (TX) filed a Motion to
`Dismiss AGIS’s original Complaint for (1) failure to state a claim and (2) improper venue under 28
`U.S.C. § 1400, or in the alternative, to transfer under §1404. Dkt. No. 28. Rather than responding to
`ZTE (TX)’s motion, AGIS took advantage of Federal Rule of Civil Procedure 15(a)(1)(B) and
`amended its Complaint, without leave of Court, on October 17, 2017 (the “Amended Complaint”).
`Dkt. No. 32. In the Amended Complaint, which allowed AGIS to avoid responding to ZTE (TX)’s
`motion, AGIS added new legal theories of infringement, including a fifth patent, and added theories
`against the newly-added ZTE defendant, ZTE (USA), Inc.
`4
`
`
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 5 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`On information and belief, on November 21, 2017, ZTE moved to dismiss AGIS’s
`15.
`Amended Complaint under § 1400, or in the alternative, to transfer for convenience to the Northern
`District of California under § 1404. See Dkt. No. 38. In response, not only did AGIS contest that
`venue was proper for ZTE (USA), Inc., but AGIS also dismissed the relevance, location, and
`convenience of non-party Google in the Northern District of California. Dkt. No. 46 at 2, 24. AGIS
`eventually admitted Google’s importance in these matters when they subpoenaed Google, indicating
`that Google possesses relevant documents in the Northern District of California. See Dkt. No. 85 at
`7. On September 28, 2018, the Eastern District of Texas court found that “AGIS [] failed to meet its
`burden” and found that venue is improper as to ZTE (USA), Inc. in the Eastern District of Texas. Id.
`at 5-7. Rather than dismissing this case under § 1400, the Eastern District of Texas transferred the
`Former Case to the Northern District of California under § 1406. Id. The court specifically found
`that “[a] transfer, rather than dismissal, is also appropriate where the plaintiff is certain to ‘almost
`immediately’ refile the action in the proper venue and, as here, ‘discovery has already begun’ and
`the Parties have ‘already invested a considerable amount of time and money’ in the case.” Id. at 7.
`Additionally, in transferring to the Northern District of California and not another district, the court
`noted (A) that AGIS never proposed an alternative district to which this case should be transferred;
`and (B) that “transfer to the Northern District of California serves the interests of justice.” Id. (citing
`AGIS’s service of subpoenas on Google in the Northern District of California).
`On information and belief, AGIS circumvented the Eastern District of Texas’s
`16.
`transfer order (Dkt. No. 85) to the Northern District of California by filing a Notice of Voluntary
`Dismissal without Prejudice (Dkt. No. 86).
`On information and belief, in four actions against Android device manufactures HTC
`17.
`Corporation (2:17-cv-00514), Huawei Device USA Inc. et al. (2:17-cv-00513), LG Electronics, Inc.
`(2:17-cv-00515), and ZTE (USA), Inc. et al. (2:17-cv-00517), all in the Eastern District of Texas,
`AGIS asserted infringement contentions relying nearly exclusively on Android and Google
`application functionalities. Additionally, AGIS served several subpoenas on Google in the Northern
`District of California seeking information and proprietary information relating to Google Maps, Find
`My Device, and Device Manager. See Ex. F.
`
`
`
`
`
`5
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 6 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) because this is the
`18.
`district in which a substantial part of the events and allegations giving rise to the claims occurred, or
`a substantial part of property that is subject to this action is situated. See paragraphs 8 through 17.
`FACTUAL BACKGROUND
`The Patents-in-Suit
`U.S. Patent No. 8,213,970 (the “’970 patent”) is entitled, “Method of Utilizing Forced
`19.
`Alerts for Interactive Remote Communications” and, on its face, indicates an issue date of July 3,
`2012. A copy of the ’970 patent is attached as Ex. G. Upon information and belief, AGIS has a direct
`or indirect ownership interest in the ’970 patent.
`U.S. Patent No. 9,408,055 (the “’055 patent”) is entitled, “Method to Provide Ad Hoc
`20.
`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
`August, 2, 2016. A copy of the ’055 patent is attached as Ex. H. Upon information and belief, AGIS
`has a direct or indirect ownership interest in the ’055 patent.
`U.S. Patent No. 9,445,251 (the “’251 patent”) is entitled, “Method to Provide Ad Hoc
`21.
`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
`September 13, 2016. A copy of the ’251 patent is attached as Ex. I. Upon information and belief,
`AGIS has a direct or indirect ownership interest in the ’251 patent.
`U.S. Patent No. 9,467,838 (the “’838 patent”) is entitled, “Method to Provide Ad Hoc
`22.
`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
`October 11, 2016. A copy of the ’838 patent is attached as Ex. J. Upon information and belief, AGIS
`has a direct or indirect ownership interest in the ’838 patent.
`U.S. Patent No. 9,749,829 (the “’829 patent”) is entitled, “Method to Provide Ad Hoc
`23.
`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
`August 29, 2017. A copy of the ’829 patent is attached as Ex. K. Upon information and belief, AGIS
`has a direct or indirect ownership interest in the ’829 patent.
`AGIS’s Allegations
`The Amended Complaint alleges, at paragraph 21 that “Non-party Google, Inc.
`24.
`(‘Google’) licenses the Android operating system to third parties, including Defendants [ZTE], who
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`6
`CASE NO. 18-cv-06185
`
`
`
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 7 of 21
`
`
`
`design their own products that utilize the Android operating system. The Android operating system
`is the most widely used in smartphones and other mobile devices.” Ex. L at ¶ 21.
`
`25.
`
`The Amended Complaint alleges, at paragraph 22 that “Defendants manufacture, use,
`
`sell, offer for sale, and/or import into the United States electronic devices, such as Android based
`
`smartphones and tablets (including but not limited to the Tempo, Axon 7, Axon 7 mini, Blade V8
`
`Pro, ZMax Pro, and ZMax 2) (collectively, the ‘Accused Devices’), all of which are pre-configured
`
`or adapted with map-based communication applications and/or features such as Google Maps,
`
`Android Device Manager, Find My Device, Google Messages, Android Messenger, Google
`
`Hangouts, Google Plus, and Google Latitude, among other relevant applications and/or features. The
`
`Accused Devices include software, including but not limited to the above-listed applications and/or
`
`features as components of their operating systems. The Accused Devices include functionality that
`
`allows users to form groups with other users such that users may view each other’s locations on a
`
`map and engage in communication including text, voice, and multimedia-based communication.
`
`Additionally, the users may form groups that include their own devices in order to track their own
`
`lost or stolen devices as shown below.” Id. at ¶ 22.
`
`26.
`
`The Amended Complaint alleges, at paragraphs 23 through 31 that ZTE infringes
`
`the ’970 Patent. Id. at ¶¶ 23-31.
`
`27.
`
`The Amended Complaint alleges, at paragraphs 32 through 44 that ZTE infringes
`
`the ’055 Patent. Id. at ¶¶ 32-44.
`
`28.
`
`The Amended Complaint alleges, at paragraphs 45 through 57 that ZTE infringes
`
`the ’251 Patent. Id. at ¶¶ 45-57.
`
`29.
`
`The Amended Complaint alleges, at paragraphs 58 through 70 that ZTE infringes
`
`the ’838 Patent. Id. at ¶¶ 58-70.
`
`30.
`
`The Amended Complaint alleges, at paragraphs 71 through 83 that ZTE infringes
`
`the ’829 Patent. Id.at ¶¶ 71-83.
`
`31.
`
`AGIS’s Amended Complaint is a clear and unmistakable threat of litigation against
`
`ZTE.
`
`
`
`
`
`7
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 8 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`COUNT I
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,213,970)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`32.
`though fully set forth herein.
`An actual and justiciable controversy exists between ZTE and AGIS concerning the
`33.
`non-infringement of the ’970 patent.
`ZTE’s products, including at least the Accused Devices in the Former Case, have not
`34.
`infringed, and do not infringe, directly or indirectly, any valid and enforceable claim of the ’970
`patent, either literally or under the doctrine of equivalents.
`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
`35.
`not infringe, any valid and enforceable claim of the ’970 patent.
`COUNT II
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,408,055)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`36.
`though fully set forth herein.
`An actual and justiciable controversy exists between ZTE and AGIS concerning the
`37.
`non-infringement of the ’055 patent.
`ZTE products, including at least the Accused Devices, have not infringed, and do not
`38.
`infringe, directly or indirectly, any valid and enforceable claim of the ’055 patent, either literally or
`under the doctrine of equivalents.
`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
`39.
`not infringe, any valid and enforceable claim of the ’055 patent.
`COUNT III
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,445,251)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`40.
`though fully set forth herein.
`An actual and justiciable controversy exists between ZTE and AGIS concerning the
`41.
`non-infringement of the ’251 patent.
`
`
`
`
`
`8
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 9 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`ZTE products, including at least the Accused Devices, have not infringed, and do not
`42.
`infringe, directly or indirectly, any valid and enforceable claim of the ’251 patent, either literally or
`under the doctrine of equivalents.
`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
`43.
`not infringe, any valid and enforceable claim of the ’251 patent.
`COUNT IV
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,467,838)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`44.
`though fully set forth herein.
`An actual and justiciable controversy exists between ZTE and AGIS concerning the
`45.
`non-infringement of the ’838 patent.
`ZTE products, including at least the Accused Devices, have not infringed, and do not
`46.
`infringe, directly or indirectly, any valid and enforceable claim of the ’838 patent, either literally or
`under the doctrine of equivalents.
`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
`47.
`not infringe, any valid and enforceable claim of the ’838 patent.
`COUNT V
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,749,829)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`48.
`though fully set forth herein.
`An actual and justiciable controversy exists between ZTE and AGIS concerning the
`49.
`non-infringement of the ’829 patent.
`ZTE products, including at least the Accused Devices, have not infringed, and do not
`50.
`infringe, directly or indirectly, any valid and enforceable claim of the ’829 patent, either literally or
`under the doctrine of equivalents.
`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
`51.
`not infringe, any valid and enforceable claim of the ’829 patent.
`
`
`
`
`
`
`9
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 10 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`COUNT VI
`(Declaratory Judgment of Invalidity of U.S. Patent No. 8,213,970)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`52.
`though fully set forth herein.
`The claims of the ’970 patent are invalid and unenforceable under 35 U.S.C. § 101
`53.
`because the claims are directed to abstract ideas or other non-statutory subject matter.
`The claims of the ’970 patent are invalid and unenforceable under 35 U.S.C. § 102
`54.
`because the claims lack novelty, and are taught and suggested by the prior art. ZTE reserves the right
`to identify and rely upon prior art that may be discovered as discovery progresses in this action.
`The claims of the ’970 patent are invalid and unenforceable under 35 U.S.C. § 103
`55.
`because the claims are obvious in view of the prior art. ZTE adopts and incorporates by reference, as
`if set forth herein, each of the contentions, charts, prior art references, and other statements made or
`disclosed in its Invalidity Contentions pursuant to Eastern District of Texas Patent Rule 3.3. (“P.R.
`3-3”) served on March 15, 2018. ZTE further adopts and incorporates by reference, as if set forth
`herein, each of the contentions, charts, prior art references, and other statements made or disclosed in
`any post-grant proceedings involving the Patents-in-Suit, including any petition(s) for inter partes
`review.1 ZTE reserves the right to identify and rely upon prior art that may be discovered as
`discovery progresses in this action.
`The claims of the ’970 patent are invalid and unenforceable for failure to satisfy the
`56.
`conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of enablement,
`and claim indefiniteness.
`
`COUNT VII
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,408,055)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`57.
`though fully set forth herein.
`
`
`1 See Case Nos. IPR2018-00819, -01087, -01088, -01086, -01085, -00817, -01083, -01084, -
`01082, -01081, -00818, -01080, -00821, -01079, filed before the Patent Trial and Appeal Board of
`the United States Patent and Trademark Office (the “IPRs”).
`
`
`
`
`
`10
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 11 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`The claims of the ’055 patent are invalid and unenforceable under 35 U.S.C. § 101
`58.
`because the claims are directed to abstract ideas or other non-statutory subject matter.
`The claims of the ’055 patent are invalid and unenforceable under 35 U.S.C. § 102
`59.
`because the claims lack novelty, and are taught and suggested by the prior art. ZTE reserves the right
`to identify and rely upon prior art that may be discovered as discovery progresses in this action.
`The claims of the ’055 patent are invalid and unenforceable under 35 U.S.C. § 103
`60.
`because the claims are obvious in view of the prior art. ZTE adopts and incorporates by reference, as
`if set forth herein, each of the contentions, charts, prior art references, and other statements made or
`disclosed in its Invalidity Contentions pursuant to P.R. 3-3 served on March 15, 2018. ZTE further
`adopts and incorporates by reference, as if set forth herein, each of the contentions, charts, prior art
`references, and other statements made or disclosed in any post-grant proceedings involving the
`Patents-in-Suit, including any petition(s) for inter partes review including the IPRs. ZTE reserves
`the right to identify and rely upon prior art that may be discovered as discovery progresses in this
`action.
`
`The claims of the ’055 patent are invalid and unenforceable for failure to satisfy the
`61.
`conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of enablement,
`and claim indefiniteness.
`
`COUNT VIII
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,445,251)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`62.
`though fully set forth herein.
`The claims of the ’251 patent are invalid and unenforceable under 35 U.S.C. § 101
`63.
`because the claims are directed to abstract ideas or other non-statutory subject matter.
`The claims of the ’251 patent are invalid and unenforceable under 35 U.S.C. § 102
`64.
`because the claims lack novelty, and are taught and suggested by the prior art. ZTE reserves the right
`to identify and rely upon prior art that may be discovered as discovery progresses in this action.
`The claims of the ’251 patent are invalid and unenforceable under 35 U.S.C. § 103
`65.
`because the claims are obvious in view of the prior art. ZTE adopts and incorporates by reference, as
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`11
`CASE NO. 18-cv-06185
`
`
`
`
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 12 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`if set forth herein, each of the contentions, charts, prior art references, and other statements made or
`disclosed in its Invalidity Contentions pursuant to P.R. 3-3 served on March 15, 2018. ZTE further
`adopts and incorporates by reference, as if set forth herein, each of the contentions, charts, prior art
`references, and other statements made or disclosed in any post-grant proceedings involving the
`Patents-in-Suit, including any petition(s) for inter partes review including the IPRs. ZTE reserves
`the right to identify and rely upon prior art that may be discovered as discovery progresses in this
`action.
`
`The claims of the ’251 patent are invalid and unenforceable for failure to satisfy the
`66.
`conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of enablement,
`and claim indefiniteness.
`
`COUNT IX
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,467,838)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`67.
`though fully set forth herein.
`The claims of the ’838 patent are invalid and unenforceable under 35 U.S.C. § 101
`68.
`because the claims are directed to abstract ideas or other non-statutory subject matter.
`The claims of the ’838 patent are invalid and unenforceable under 35 U.S.C. § 102
`69.
`because the claims lack novelty, and are taught and suggested by the prior art. ZTE reserves the right
`to identify and rely upon prior art that may be discovered as discovery progresses in this action.
`The claims of the ’838 patent are invalid and unenforceable under 35 U.S.C. § 103
`70.
`because the claims are obvious in view of the prior art. ZTE adopts and incorporates by reference, as
`if set forth herein, each of the contentions, charts, prior art references, and other statements made or
`disclosed in its Invalidity Contentions pursuant to P.R. 3-3 served on March 15, 2018. ZTE further
`adopts and incorporates by reference, as if set forth herein, each of the contentions, charts, prior art
`references, and other statements made or disclosed in any post-grant proceedings involving the
`Patents-in-Suit, including any petition(s) for inter partes review including the IPRs. ZTE reserves
`the right to identify and rely upon prior art that may be discovered as discovery progresses in this
`action.
`
`
`
`
`
`12
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 13 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`The claims of the ’838 patent are invalid and unenforceable for failure to satisfy the
`71.
`conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of enablement,
`and claim indefiniteness.
`
`COUNT X
`(Declaratory Judgment of Invalidity of U.S. Patent No. 9,749,829)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`72.
`though fully set forth herein.
`The claims of the ’829 patent are invalid and unenforceable under 35 U.S.C. § 101
`73.
`because the claims are directed to abstract ideas or other non-statutory subject matter.
`The claims of the ’829 patent are invalid and unenforceable under 35 U.S.C. § 102
`74.
`because the claims lack novelty, and are taught and suggested by the prior art. ZTE reserves the right
`to identify and rely upon prior art that may be discovered as discovery progresses in this action.
`The claims of the ’829 patent are invalid and unenforceable under 35 U.S.C. § 103
`75.
`because the claims are obvious in view of the prior art. ZTE adopts and incorporates by reference, as
`if set forth herein, each of the contentions, charts, prior art references, and other statements made or
`disclosed in their Invalidity Contentions pursuant to P.R. 3-3 served on March 15, 2018. ZTE further
`adopts and incorporates by reference, as if set forth herein, each of the contentions, charts, prior art
`references, and other statements made or disclosed in any post-grant proceedings involving the
`Patents-in-Suit, including any petition(s) for inter partes review including the IPRs. ZTE reserves
`the right to identify and rely upon prior art that may be discovered as discovery progresses in this
`action.
`
`The claims of the ’829 patent are invalid and unenforceable for failure to satisfy the
`76.
`conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of enablement,
`and claim indefiniteness.
`
`COUNT XI
`(Declaratory Judgment of Unenforceability of the Patents-in-Suit Due to Inequitable Conduct)
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 30 above as
`77.
`though fully set forth herein.
`
`
`
`
`
`13
`
`PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
`
`

`

`Case 4:18-cv-06185-HSG Document 1 Filed 10/09/18 Page 14 of 21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`On information and belief, some or all of Defendants’ Patents-in-Suit are
`78.
`unenforceable because one or more of the equitable doctrines of waiver, acquiescence, laches,
`estoppel (including without limitation equitable estoppel and prosecution history estoppel), and/or
`unclean hands.
`Regarding unclean hands, AGIS attempted to enhance its position with respect to
`79.
`prior art and invalidity issues that are important to litigation matters if the impropriety of AGIS’s
`contentions is not corrected.
`During prosecution, AGIS repeatedly represented to the Patent Office that the post-
`80.
`America Invents Act (“AIA”), first-to-file provisions of the U.S. patent laws apply to the ’838
`patent, ’251 patent, ’055 patent, and ’829 patent. On information and belief, during the course of
`previous litigation matters, however, AGIS contradicts what it represented to the Patent Office and
`contended that the pre-AIA, first-to-invent provisions of the U.S. patent laws govern the ’838
`patent, ’251 patent, ’055 patent, and ’829 patent. AGIS refused to correct this inconsistency. The
`pre-AIA, first-to-invent provisions would provide AGIS with the ability to swear behind certain
`prior