Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 1 of 18
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`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
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`Lionel M. Lavenue (pro hac vice)
`lionel.lavenue@finnegan.com
`Bradford C. Schulz (pro hac vice)
`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
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`Attorneys for Plaintiff
`ZTE (USA) Inc.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`OAKLAND DIVISION
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`ZTE (USA) INC.,
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`Plaintiff,
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`v.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Defendant.
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`Case No. 4:18-cv-06185-HSG
`(Former Case No. 2:17-cv-00517-JRG)
`(E.D. Tex.)
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`PLAINTIFF’S SECOND AMENDED
`COMPLAINT FOR DECLARTORY
`JUDGMENT
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 2 of 18
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`Plaintiff ZTE (USA) Inc. (“ZTE”), files this Second Amended Complaint against Defendant
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`AGIS Software Development LLC (“AGIS”) seeking declaratory judgment of non-infringement,
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`and/or unenforceability as to U.S. Patent Nos. 8,213,970; 9,408,055; 9,445,251; 9,467,838; and
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`9,749,829 (collectively, the “Patents-in-Suit”). Additionally, ZTE hereby incorporates by reference
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`the Complaint filed against Defendant AGIS on October 9, 2018 and the First Amended Complaint
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`filed against Defendant AGIS on December 31, 2018. ZTE hereby alleges as follows:
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`NATURE OF ACTION
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`1.
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`This is an action arising under the patent laws of the United States, 35 U.S.C. § 1 et.
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`seq. and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, seeking a declaratory judgment of:
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`(i) non-infringement of the Patents-in-Suit; (ii) unenforceability of certain of the Patents-in-Suit due
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`to inequitable conduct; and for such other relief as the Court deems just and proper. Additionally,
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`ZTE further reserves the right to assert invalidity as an affirmative defense if AGIS asserts
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`infringement.
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`THE PARTIES
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`2.
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`Plaintiff ZTE (USA) Inc. is a corporation organized and existing under the laws of the
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`state of New Jersey, with its principal place of business at 2425 N. Central Expressway, Suite 600,
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`Richardson, Texas 75080 with an office located at 1900 McCarthy Blvd, Milpitas, California 95035.
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`3.
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`Upon information and belief, Defendant AGIS Software Development LLC is a
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`limited liability company organized and existing under the laws of the State of Texas, and maintains
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`its principal place of business at 100 W. Houston Street, Marshall, Texas 75670. Upon information
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`and belief, AGIS Software Development LLC is wholly owned by AGIS Holdings, Inc. Upon
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`information and belief, AGIS Holdings, Inc. is organized and existing under the laws of the State of
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`Florida, and maintains its principal place of business at 92 Lighthouse Drive, Jupiter, Florida 33469.
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`Upon information and belief, Advanced Ground Information Systems, Inc. is organized and existing
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`under the laws of the State of Florida, and maintains its principal place of business at 92 Lighthouse
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`Drive, Jupiter, Florida 33469.
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`JURISDICTION AND VENUE
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`4.
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`This Court has exclusive subject matter jurisdiction over this action pursuant to
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`1
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 3 of 18
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`federal question jurisdiction, 28 U.S.C. §§ 1331 and 1338(a), the Declaratory Judgment Act, 28
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`U.S.C. §§ 2201-2202, and the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
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`5.
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`An actual and justiciable controversy exists between ZTE and AGIS as to the alleged
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`infringement and enforceability of the claims of the Patents-in-Suit.
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`6.
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`This Court has subject matter jurisdiction over this action based on a real and
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`immediate controversy between ZTE and AGIS regarding whether various ZTE’s mobile devices
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`infringe the Patents-in-Suit, which AGIS purports to own, whether those AGIS patents are
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`unenforceable, and whether AGIS is barred from asserting infringement of those patents. As
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`described in more detail below, this controversy arises out of AGIS’s infringement assertions
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`demands over ZTE’s products allegedly “pre-configured or adapted with map-based communication
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`applications and/or features such as Google Maps, Android Device Manager, Find My Device,
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`Google Messages, Android Messenger, Google Hangouts, Google Plus, and Google Latitude among
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`other relevant applications and/or features.” See Case No. 2:17-cv-00517-JRG (Dkt. No. 32) (E.D.
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`Tex.); see also Dkt. No. 1-1 through 1-5 (Exs. A-E to Complaint (Infringement Contentions)).
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`7.
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`On information and belief, AGIS is subject to this Court’s specific and/or general
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`personal jurisdiction, pursuant to due process and/or the California Long Arm Statute, due at least to
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`(1) AGIS’s activities purposefully directed at residents of this forum, (2) the claims arise out of or
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`relate to the AGIS’s activities with this forum, and (3) the assertion of personal jurisdiction is
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`reasonable and fair.
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`8.
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`On information and belief, AGIS asserted one or more of the Patents-in-Suit against
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`Apple Inc. in AGIS Software Development LLC v. Apple, Inc., Case No. 2:17-cv-00516-JRG (E.D.
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`Tex.). Additionally, on information and belief, Apple Inc. is a California incorporated company and
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`AGIS conducted meaningful enforcement activities in California. On information and belief, AGIS
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`retained counsel in California, traveled there, and deposed witnesses there.
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`9.
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`On information and belief, AGIS asserted one or more patents related to the Patents-
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`in-Suit against Life360, Inc. in Advanced Ground Information Systems, Inc. v. Life360, Inc., Case
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`No. 9:14-cv-80651-DMM (S.D. Fla.). Additionally, on information and belief, Life360 Inc. is a
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`California incorporated company and AGIS conducted meaningful enforcement activities in
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 4 of 18
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`California. On information and belief, AGIS retained counsel in California, traveled there, and
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`deposed witnesses there.
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`10.
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`On information and belief, AGIS asserted one or more patents against ZTE (USA),
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`Inc. and ZTE (USA), Inc.’s sister company ZTE (TX) Inc. in AGIS Software Development LLC v.
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`ZTE Corp. et al., Case No. 2:17-cv-00517-JRG (E.D. Tex.) (the “Former Case”). Additionally, ZTE
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`(TX) Inc.’s primary place of business is in California and AGIS conducted meaningful enforcement
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`activities in California. For example, AGIS retained counsel in California, traveled there, and
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`deposed witnesses there including at least a 30(b)(6) deposition of ZTE (USA), Inc. in Redwood
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`Shores, California.
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`11.
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`On information and belief, twenty days before bringing an action against ZTE TX
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`Inc. in the Eastern District of Texas, AGIS Holdings, Inc. formed and incorporated Defendant AGIS
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`Software Development LLC in Texas. Of note, only two months prior, the sister company of AGIS
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`Software Development LLC, Advanced Ground Information Systems, Inc., was litigating in the
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`Southern District of Florida with patents from the same family as the Patents-in-Suit. Once the
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`Florida matter was resolved, in a loss (with non-infringement and attorneys’ fees awarded against
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`AGIS for almost $750,000 due to litigating “an exceptionally weak case”), AGIS then sought a new
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`district. See Advanced Ground Information Systems, Inc. v. Life360, Inc. Case No. 14-cv-80651
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`(Dkt. No. 200) (S.D. Fla.) (“While I stop short of finding of bad faith, . . . these claims seemed
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`designed to extract settlement not based upon the merits of the claim but on the high cost of
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`litigation.”).
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`12.
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`On information and belief, on June 21, 2017, AGIS filed the original Complaint (Dkt.
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`No. 1 in 2:17-cv-00517) in the Former Case in the Eastern District of Texas, asserting four patents
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`against ZTE (TX), Inc. and ZTE Corporation. On September 26, 2017, ZTE (TX) filed a Motion to
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`Dismiss AGIS’s original Complaint for (1) failure to state a claim and (2) improper venue under 28
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`U.S.C. § 1400, or in the alternative, to transfer under § 1404. Case No. 2:17-cv-00517-JRG, Dkt. No.
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`28 (E.D. Tex.). Rather than responding to ZTE (TX) Inc.’s motion, AGIS took advantage of Federal
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`Rule of Civil Procedure 15(a)(1)(B) and amended its Complaint, without leave of Court, on October
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`17, 2017 (the “Amended Complaint”). Case No. 2:17-cv-00517-JRG, Dkt. No. 32 (E.D. Tex.). In the
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 5 of 18
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`Amended Complaint, which allowed AGIS to avoid responding to ZTE (TX) Inc.’s motion, AGIS
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`added new legal theories of infringement, including a fifth patent, and added theories against the
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`newly-added ZTE defendant, ZTE (USA), Inc.
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`13.
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`On information and belief, on November 21, 2017, ZTE moved to dismiss AGIS’s
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`Amended Complaint under § 1400, or in the alternative, to transfer for convenience to the Northern
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`District of California under § 1404. See Case No. 2:17-cv-00517-JRG, Dkt. No. 38 (E.D. Tex.). In
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`response, not only did AGIS contest that venue was proper for ZTE (USA), Inc., but AGIS also
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`dismissed the relevance, location, and convenience of non-party Google in the Northern District of
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`California. Case No. 2:17-cv-00517-JRG, Dkt. No. 46 at 2, 24 (E.D. Tex.). AGIS eventually
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`admitted Google’s importance in these matters when they subpoenaed Google, indicating that
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`Google possesses relevant documents in the Northern District of California. See Case No. 2:17-cv-
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`00517-JRG, Dkt. No. 85 at 7 (E.D. Tex.). On September 28, 2018, the Eastern District of Texas
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`court found that “AGIS [] failed to meet its burden” and found that venue is improper as to ZTE
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`(USA), Inc. in the Eastern District of Texas. Id. at 5-7. Rather than dismissing this case under
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`§ 1400, the Eastern District of Texas transferred the Former Case to the Northern District of
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`California under § 1406. Id. The court specifically found that “[a] transfer, rather than dismissal, is
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`also appropriate where the plaintiff is certain to ‘almost immediately’ refile the action in the proper
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`venue and, as here, ‘discovery has already begun’ and the Parties have ‘already invested a
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`considerable amount of time and money’ in the case.” Id. at 7. Additionally, in transferring to the
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`Northern District of California and not another district, the court noted (A) that AGIS never
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`proposed an alternative district to which this case should be transferred; and (B) that “transfer to the
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`Northern District of California serves the interests of justice.” Id. (citing AGIS’s service of
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`subpoenas on Google in the Northern District of California).
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`14.
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`On information and belief, AGIS circumvented the Eastern District of Texas’s
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`transfer order (Case No. 2:17-cv-00517-JRG, Dkt. No. 85 (E.D. Tex.)) to the Northern District of
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`California by filing a Notice of Voluntary Dismissal without Prejudice (Case No. 2:17-cv-00517-
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`JRG, Dkt. No. 86 (E.D. Tex.)).
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`15.
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`On information and belief, in four actions against Android device manufactures HTC
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`4
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 6 of 18
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`Corporation (2:17-cv-00514), Huawei Device USA Inc. et al. (2:17-cv-00513), LG Electronics, Inc.
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`(2:17-cv-00515), and ZTE (USA), Inc. et al. (2:17-cv-00517), all in the Eastern District of Texas,
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`AGIS asserted infringement contentions relying nearly exclusively on Android and Google
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`application functionalities. Additionally, AGIS served several subpoenas on Google in the Northern
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`District of California seeking information and proprietary information relating to Google Maps, Find
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`My Device, and Device Manager. See Dkt. No. 1-6 (Ex. F to Complaint).
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`16.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) because this is the
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`district in which a substantial part of the events and allegations giving rise to the claims occurred, or
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`a substantial part of property that is subject to this action is situated. See paragraphs 4 through 16.
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`FACTUAL BACKGROUND
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`The Patents-in-Suit
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`17.
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`U.S. Patent No. 8,213,970 (the “’970 patent”) is entitled, “Method of Utilizing Forced
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`Alerts for Interactive Remote Communications” and, on its face, indicates an issue date of July 3,
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`2012. A copy of the ’970 patent is attached as Ex. G (Dkt. No. 1-7) to the Complaint. Upon
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`information and belief, AGIS has a direct or indirect ownership interest in the ’970 patent.
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`18.
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`U.S. Patent No. 9,408,055 (the “’055 patent”) is entitled, “Method to Provide Ad Hoc
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`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
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`August, 2, 2016. A copy of the ’055 patent is attached as Ex. H (Dkt. No. 1-8) to the Complaint.
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`Upon information and belief, AGIS has a direct or indirect ownership interest in the ’055 patent.
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`19.
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`U.S. Patent No. 9,445,251 (the “’251 patent”) is entitled, “Method to Provide Ad Hoc
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`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
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`September 13, 2016. A copy of the ’251 patent is attached as Ex. I (Dkt. No. 1-9) to the Complaint.
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`Upon information and belief, AGIS has a direct or indirect ownership interest in the ’251 patent.
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`20.
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`U.S. Patent No. 9,467,838 (the “’838 patent”) is entitled, “Method to Provide Ad Hoc
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`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
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`October 11, 2016. A copy of the ’838 patent is attached as Ex. J (Dkt. No. 1-10) to the Complaint.
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`Upon information and belief, AGIS has a direct or indirect ownership interest in the ’838 patent.
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`21.
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`U.S. Patent No. 9,749,829 (the “’829 patent”) is entitled, “Method to Provide Ad Hoc
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 7 of 18
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`and Password Protected Digital and Voice Networks” and, on its face, indicates an issue date of
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`August 29, 2017. A copy of the ’829 patent is attached as Ex. K (Dkt. No. 1-11) to the Complaint.
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`Upon information and belief, AGIS has a direct or indirect ownership interest in the ’829 patent.
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`AGIS’s Allegations
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`22.
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`AGIS’s Amended Complaint in the Eastern District of Texas alleges, at paragraph 21
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`that “Non-party Google, Inc. (‘Google’) licenses the Android operating system to third parties,
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`including Defendants [ZTE], who design their own products that utilize the Android operating
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`system. The Android operating system is the most widely used in smartphones and other mobile
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`devices.” Dkt. No. 1-12 (Ex. L to Complaint) at ¶ 21.
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`23.
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`AGIS’s Amended Complaint alleges, at paragraph 22 that “Defendants manufacture,
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`use, sell, offer for sale, and/or import into the United States electronic devices, such as Android
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`based smartphones and tablets (including but not limited to the Tempo, Axon 7, Axon 7 mini, Blade
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`V8 Pro, ZMax Pro, and ZMax 2) (collectively, the ‘Accused Devices’), all of which are pre-
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`configured or adapted with map-based communication applications and/or features such as Google
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`Maps, Android Device Manager, Find My Device, Google Messages, Android Messenger, Google
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`Hangouts, Google Plus, and Google Latitude, among other relevant applications and/or features. The
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`Accused Devices include software, including but not limited to the above-listed applications and/or
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`features as components of their operating systems. The Accused Devices include functionality that
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`allows users to form groups with other users such that users may view each other’s locations on a
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`map and engage in communication including text, voice, and multimedia-based communication.
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`Additionally, the users may form groups that include their own devices in order to track their own
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`lost or stolen devices as shown below.” Id. at ¶ 22.
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`24.
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`AGIS’s Amended Complaint alleges, at paragraphs 23 through 31 that ZTE infringes
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`the ’970 Patent. Id. at ¶¶ 23-31.
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`25.
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`AGIS’s Amended Complaint alleges, at paragraphs 32 through 44 that ZTE infringes
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`the ’055 Patent. Id. at ¶¶ 32-44.
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`26.
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`AGIS’s Amended Complaint alleges, at paragraphs 45 through 57 that ZTE infringes
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 8 of 18
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`the ’251 Patent. Id. at ¶¶ 45-57.
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`27.
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`AGIS’s Amended Complaint alleges, at paragraphs 58 through 70 that ZTE infringes
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`the ’838 Patent. Id. at ¶¶ 58-70.
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`28.
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`AGIS’s Amended Complaint alleges, at paragraphs 71 through 83 that ZTE infringes
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`the ’829 Patent. Id.at ¶¶ 71-83.
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`ZTE.
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`29.
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`30.
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`AGIS’s Amended Complaint is a clear and unmistakable threat of litigation against
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`Proceedings
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`On June 21, 2017, AGIS asserted one or more patents against ZTE (USA), Inc. and
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`ZTE (USA), Inc.’s sister company ZTE (TX) Inc. in the Former Case. See AGIS Software
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`Development LLC v. ZTE Corp. et al., Case No. 2:17-cv-00517-JRG (E.D. Tex.). On November 21,
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`2017, ZTE moved to dismiss AGIS’s Amended Complaint under § 1400, or in the alternative, to
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`transfer for convenience to the Northern District of California under § 1404. See Case No. 2:17-cv-
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`00517-JRG, Dkt. No. 38 (E.D. Tex.). On September 28, 2018, the Eastern District of Texas found
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`that “AGIS [] failed to meet its burden” and found that venue is improper as to ZTE (USA), Inc. in
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`the Eastern District of Texas. Case No. 2:17-cv-00517-JRG, Dkt. No. 85 at 5-7 (E.D. Tex.). Rather
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`than dismissing this case under § 1400, the Eastern District of Texas transferred the Former Case to
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`the Northern District of California under § 1406. Id.
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`31.
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`On information and belief, AGIS circumvented the Eastern District of Texas’s
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`transfer order (Case No. 2:17-cv-00517-JRG, Dkt. No. 85 (E.D. Tex.)) to the Northern District of
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`California by filing a Notice of Voluntary Dismissal without Prejudice (Case No. 2:17-cv-00517-
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`JRG, Dkt. No. 86 (E.D. Tex.)) on October 8, 2018. The next day, the Former Case was dismissed
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`and ZTE (USA), Inc. filed this declaratory judgment action in the Northern District of California.
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`32.
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`ZTE filed its First Amended Complaint on December 31, 2018 under FRCP 15(a)(2)1
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`1 ZTE now files its Second Amended Complaint, as an amendment filed as a matter of course
`under FRCP 15(a)(1), and pursuant to this Court’s Order, Dkt. 25, setting a deadline for amending
`pleadings of March 15, 2019. See Ramirez v. County of San Bernardino, 806 F.3d 1002 (9th Cir.
`2015).
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 9 of 18
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`with AGIS’s consent to remove AGIS, Inc. and AGIS Holdings as defendants. Additionally, ZTE
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`further filed motions under 35 U.S.C. § 315(c) requesting joinder of instituted IPR petitions
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`IPR2018-00819, IPR2018-01080, and IPR2018-01079, challenging the ’838, ’055, and ’970 patents
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`respectively. These joinder motions are proper under § 315(c), but to further eliminate any doubt, in
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`this Second Amended Complaint, ZTE removes the invalidity claims.
`
`COUNT I
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 8,213,970)
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`33.
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 32 above as
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`though fully set forth herein.
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`34.
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`An actual and justiciable controversy exists between ZTE and AGIS concerning the
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`non-infringement of the ’970 patent.
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`35.
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`ZTE’s products, including at least the Accused Devices in the Former Case, have not
`
`infringed, and do not infringe, directly or indirectly, any valid and enforceable claim of the ’970
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`patent, either literally or under the doctrine of equivalents.
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`36.
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`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
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`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)
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`37.
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 32 above as
`
`though fully set forth herein.
`
`38.
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`An actual and justiciable controversy exists between ZTE and AGIS concerning the
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`non-infringement of the ’055 patent.
`
`39.
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`ZTE products, including at least the Accused Devices, have not infringed, and do not
`
`infringe, directly or indirectly, any valid and enforceable claim of the ’055 patent, either literally or
`
`under the doctrine of equivalents.
`
`40.
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`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
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`not infringe, any valid and enforceable claim of the ’055 patent.
`
`
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 10 of 18
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`COUNT III
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,445,251)
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`41.
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 32 above as
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`though fully set forth herein.
`
`42.
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`An actual and justiciable controversy exists between ZTE and AGIS concerning the
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`non-infringement of the ’251 patent.
`
`43.
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`ZTE products, including at least the Accused Devices, have not infringed, and do not
`
`infringe, directly or indirectly, any valid and enforceable claim of the ’251 patent, either literally or
`
`under the doctrine of equivalents.
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`44.
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`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
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`not infringe, any valid and enforceable claim of the ’251 patent.
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`COUNT IV
`(Declaratory Judgment of Non-Infringement of U.S. Patent No. 9,467,838)
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`45.
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`ZTE incorporates by reference the allegations in Paragraphs 1 through 32 above as
`
`though fully set forth herein.
`
`46.
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`An actual and justiciable controversy exists between ZTE and AGIS concerning the
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`non-infringement of the ’838 patent.
`
`47.
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`ZTE products, including at least the Accused Devices, have not infringed, and do not
`
`infringe, directly or indirectly, any valid and enforceable claim of the ’838 patent, either literally or
`
`under the doctrine of equivalents.
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`48.
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`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
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`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)
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`49.
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 32 above as
`
`though fully set forth herein.
`
`50.
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`An actual and justiciable controversy exists between ZTE and AGIS concerning the
`
`non-infringement of the ’829 patent.
`
`
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`9
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 11 of 18
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`51.
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`ZTE products, including at least the Accused Devices, have not infringed, and do not
`
`infringe, directly or indirectly, any valid and enforceable claim of the ’829 patent, either literally or
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`under the doctrine of equivalents.
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`52.
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`ZTE is entitled to a judgment from this Court that ZTE has not infringed, and does
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`not infringe, any valid and enforceable claim of the ’829 patent.
`
`COUNT VI
`(Declaratory Judgment of Unenforceability of the Patents-in-Suit Due to Inequitable Conduct)
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`53.
`
`ZTE incorporates by reference the allegations in Paragraphs 1 through 32 above as
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`though fully set forth herein.
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`54.
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`On information and belief, some or all of AGIS’s Patents-in-Suit are unenforceable
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`because one or more of the equitable doctrines of waiver, acquiescence, laches, estoppel (including
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`without limitation equitable estoppel and prosecution history estoppel), and/or unclean hands.
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`55.
`
`Regarding unclean hands, AGIS attempted to enhance its position with respect to
`
`prior art and invalidity issues that are important to litigation matters if the impropriety of AGIS’s
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`contentions is not corrected.
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`56.
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`During prosecution, AGIS repeatedly represented to the Patent Office that the post-
`
`America Invents Act (“AIA”), first-to-file provisions of the U.S. patent laws apply to the ’838
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`patent, ’251 patent, ’055 patent, and ’829 patent. On information and belief, during the course of
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`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
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`pre-AIA, first-to-invent provisions would provide AGIS with the ability to swear behind certain
`
`prior art by establishing an invention date prior to the earliest-filed application in the common
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`priority chain of the ’838 patent, ’251 patent, ’055 patent, and ’829 patent. Any such swearing
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`behind is not available to AGIS under the post-AIA, first-to-file provisions of the patent laws. Thus,
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`as explained further below, AGIS’s contradictory contentions enhance their position regarding prior
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`art and invalidity issues that bear on this case.
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 12 of 18
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`Priority Claims
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`57.
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`The ’838 patent issued from U.S. Application No. 14/529,978 (the “’978
`
`Application”). The ’978 Application was filed on October 31, 2014. The ’978 Application claimed
`
`the benefit of priority, through a chain of applications, of U.S. Application No. 10/711,490 (the
`
`“’490 Application”), which was filed on September 21, 2004, and later issued as U.S. Patent No.
`
`7,031,728 (the “’728 patent”).
`
`58.
`
`The ’251 patent issued from U.S. Application No. 14/633,804 (the “’804
`
`Application”). The ’804 Application was filed on February 27, 2015. The ’804 Application claimed
`
`the benefit of priority of the ’978 Application and also claimed the benefit of priority, through a
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`chain of applications, of the ’490 Application.
`
`59.
`
`The ’829 patent issued from U.S. Application No. 14/633,764 (the “’764
`
`Application”). The ’764 Application was filed on February 27, 2015. The ’764 Application claimed
`
`the benefit of priority of the ’978 Application and also claimed the benefit of priority, through a
`
`chain of applications, of the ’490 Application.
`
`60.
`
`The ’055 patent issued from U.S. Application No. 14/695,233 (the “’233
`
`Application”). The ’233 Application was filed on April 24, 2015. The ’233 Application claimed the
`
`benefit of priority of the ’978 Application and also claimed the benefit of priority, through a chain of
`
`applications, of the ’490 Application.
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`Prosecution of the ’978 Application Leading to Issuance of the ’838 Patent
`
`61.
`
`During prosecution of the ’978 Application, the applicant submitted a corrected
`
`application data sheet (the “June 8 Corrected ADS”) on June 8, 2015. The June 8 Corrected ADS
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`claimed that the ’978 Application was subject to the pre-AIA, first-to-invent provisions of the patent
`
`laws. In particular, the June 8 Corrected ADS stated that the ’978 Application did not (1) claim
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`priority to or the benefit of an application filed before March 16, 2013 and (2) also contain, or
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`contained at any time, a claim to a claimed invention that has an effective filing date on or after
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`March 16, 2013. The June 8 Corrected ADS was signed by prosecuting attorney Daniel J. Burns.
`
`62.
`
`On August 19, 2015, the Patent Office issued a final rejection (the “August 19
`
`Rejection”) of the ’978 Application. The August 19 Rejection included, among other rejections, a
`
`
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`11
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`
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`rejection under 35 U.S.C. § 112 for claiming “subject matter which was not described in the
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`specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor
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`or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
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`possession of the claimed invention.” The Examiner explained that “[u]pon further review of the
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`Applicant’s original specification of file, [certain claim limitations] were not mentioned,
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`inconsistent, and/or not clearly described so as to be readily understood by one of ordinary skill in
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`the art.” As a result, the Examiner explained, “the introduction of the newly amended limitations that
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`were not supported and/or clearly described by the specification raises the issue of new matter.”
`
`63.
`
`The applicant submitted a second corrected application data sheet (the “October 30
`
`Corrected ADS”) on October 30, 2015 in the ’978 Application. The October 30 Corrected ADS
`
`claimed that the ’978 Application was subject to the post-AIA, first-to-file provisions of the patent
`
`laws. In particular, the October 30 Corrected ADS stated that the ’978 Application did (1) claim
`
`priority to or the benefit of an application filed before March 16, 2013 and (2) also contain, or
`
`contained at any time, a claim to a claimed invention that has an effective filing date on or after
`
`March 16, 2013. The October 30 Corrected ADS was signed by Mr. Burns.
`
`64.
`
`The applicant submitted a reply to the August 19 Rejection on December 18, 2015.
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`The Patent Office then issued a non-final rejection of the ’978 Application on February 2, 2016 (the
`
`“February 2 Rejection”), which stated that the ’978 Application was “being examined under the pre-
`
`AIA first to invent provisions” and included rejections under “pre-AIA 35 U.S.C. 103(a).”
`
`65.
`
`The applicant submitted a reply (the “April 25 Reply”) to the February 2 Rejection on
`
`April 25, 2016. In the April 25 Reply, the applicant “respectfully note[d] that the Corrected
`
`Application Data Sheet filed on October 30, 2015, indicates that the ‘application (1) claims priority
`
`to or the benefit of an application filed before March 16, 2013 and (2) also contains, or contained at
`
`any time, a claim to a claimed invention that has an effective filing date on or after march 16,
`
`2013.’” The applicant thus stated that “it is understood that the present application will be examined
`
`under the post-AIA, first-to-file provisions of the patent laws.” The April 25 Reply was signed by
`
`Mr. Burns.
`
`66.
`
`
`
`
`
`The Patent Office issued a final rejection of the ’978 Application on August 4, 2016
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`12
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`PLAINTIFF’S SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 18-cv-06185
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`Case 4:18-cv-06185-HSG Document 39 Filed 02/05/19 Page 14 of 18
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`(the “August 4 Rejection”). The applicant submitted a reply (the “August 12 Reply”) to the August 4
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`Rejection on August 12, 2016. In the August 12 Reply, the applicant cance