`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`AGIS SOFTWARE DEVELOPMENT
`LLC,
`
`Plaintiff,
`
`
`
`
`
`v.
`
`
`APPLE INC.,
`
`
`
`
`
`
` Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`Civil Action No. 2:17-CV-516-JRG
`
`JURY TRIAL DEMANDED
`
`
`§
`
`
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`Plaintiff AGIS Software Development LLC (“AGIS”) hereby makes the following
`
`infringement disclosures under the Patent Local Rules with respect to United States Patent Nos.
`
`9,467,838 (the “’838 Patent”), 9,445,251 (the “’251 Patent”), 9,408,055 (the “’055 Patent”), and
`
`8,213,970 (the “’970 Patent”) (collectively, “patents-in-suit”). AGIS’s investigation is ongoing and
`
`discovery has not yet commenced. Accordingly, these disclosures are based on information
`
`available to AGIS at this time. AGIS reserves the right to supplement this disclosure after further
`
`discovery from the defendants and non-parties, particularly documents and other discovery
`
`regarding the defendants’ accused products. AGIS also reserves the right to assert additional
`
`claims of the patents-in-suit, accuse different products, or find alternative literal and/or equivalent
`
`infringing elements in the defendant’s products.
`
`
`
`Apple Inc.
`Exhibit 1016
`Page 001
`
`
`
`
`
`I.
`
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`PURSUANT TO PATENT LOCAL RULE 3-1
`
`A.
`
`ASSERTED CLAIMS
`
`Defendant Apple Inc. (“Apple”) has infringed and continues to infringe at least the
`
`following claims of the patents-in-suit in connection with the Apple Accused Products set forth
`
`below:
`
` Claims 1-84 of the ’838 Patent;
`
` Claims 1-35 of the ’251 Patent;
`
` Claims 1-54 of the ’055 Patent; and
`
` Claims 1-9 of the ’970 Patent.
`
`AGIS reserves the right to seek leave of court to add, delete, substitute, or otherwise
`
`amend this list of asserted claims should further discovery, the Court’s claim construction, or
`
`other circumstances so merit.
`
`B.
`
`ACCUSED INSTRUMENTALITIES
`
`AGIS is currently aware that the Apple Accused Products (with back-panel model
`
`numbers identified where possible) infringe each of the patents-in-suit either alone or in concert
`
`with one or more other Accused Products:
`
`
`
`
`
`
`
`
`
`iPhone 4s (A1431, A1387)
`
`iPhone 5, (A1428, A1429, A1442)
`
`iPhone 5C (A1456, A1507, A1516, A1529, A1532)
`
`iPhone 5S (A1453, A1457, A1518, A1528, A1530, A1533)
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`2
`
`Apple Inc.
`Exhibit 1016
`Page 002
`
`
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`
`
`iPhone SE (A1723, A1662, A1724)
`
`iPhone 6 (A1549, A1586, A1589)
`
`iPhone 6 Plus (A1522, A1524, A1593)
`
`iPhone 6S (A1633, A1688, A1700)
`
`iPhone 6S Plus (A1634, A1687, A1699)
`
`iPhone 7 (A1660, A1778, A1779)
`
`iPhone 7 Plus (A1661, A1784, A1785)
`
`iPhone 8
`
`iPhone 8 Plus
`
`iPhone X
`
`iPad (A1219, A1337)
`
`iPad 2 (A1395, A1396. A1397)
`
`iPad 3rd generation (A1416, A1430, A1403)
`
`iPad 4th generation (A1458, A1459, A1460)
`
`iPad 5th generation (A1822, A1823)
`
`iPad mini (A1432, A1454, A1455)
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`iPad mini 2 (A1489, A1490, A1491)
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`iPad mini 3 (A1599, A1600)
`
`iPad mini 4 (A1538, A1550)
`
`iPad Air (A1474, A1475)
`
`iPad Air 2 (A1566, A1567)
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`3
`
`Apple Inc.
`Exhibit 1016
`Page 003
`
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`iPad Pro 12.9-inch (A1584, A1652)
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`iPad Pro 9.7-inch (A1673, A1674, A1675)
`
`iPad Pro 10.5-inch (A1701, A1709)
`
`iPad Pro 12.9-inch 2nd generation (A1670, A1671)
`
`iPod touch 4th generation (A1367)
`
`iPod touch 5th generation 16GB Mid 2013 (A1509)
`
`iPod touch 5th generation (A1509, A1421)
`
`iPod touch 6th generation (A1574)
`
` Apple Watch Series 1(A1801, A1802)
`
` Apple Watch Series 2 (A1757, A1758)
`
` Apple Watch Edition (A1816, A1817)
`
` Apple Watch Hermes (A1757, A1758)
`
` Apple Watch Nike+ (A1757, A1758)
`
` Apple Watch 1st generation (A1553, A1554)
`
` Apple Watch Sport (A1553, A1554),
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` Apple Watch Edition (A1553, A1554)
`
` Apple Watch Hermes (A1553, A1554)
`
` Apple Watch Series 3 (GPS+Cellular) (various upcoming models)
`
` Apple Watch Series 3 (GPS) (various upcoming models)
`
` Apple Servers including but not limited to iMessage servers, iCloud servers, Apple
`
`Maps servers, and FaceTime servers.
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`4
`
`Apple Inc.
`Exhibit 1016
`Page 004
`
`
`
`
`
` Apple Third-Party Servers
`
`
`
`
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`
`iOS 4
`
`iOS 5
`
`iOS 6
`
`iOS 7
`
`iOS 8
`
`iOS 9
`
`iOS 10
`
`iOS 11
`
` watchOS
`
` watchOS 2
`
` watchOS 3
`
` watchOS 4 (upcoming release on September 19, 2017)
`
` Find My iPhone app, network, servers, and services
`
` Find My Friends app, network, servers, and services
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`5
`
`Apple Inc.
`Exhibit 1016
`Page 005
`
`
`
`
`
`
`
`iCloud1 network, servers, and services
`
` Apple ID network, servers, and services
`
` Maps app, network, servers, and services
`
`
`
`iMessage app, network, servers, and services
`
` Messages app, network, servers, and services
`
` FaceTime app, network, servers, and services
`
`
`
`iOS Device Activation network, servers, and services
`
` SMS Text Forwarding network, servers, and services
`
`AGIS reserves the right to amend this list of accused instrumentalities, as well as other
`
`information contained in this document and the exhibits hereto, to incorporate new information
`
`learned during the course of discovery, including, but not limited to, the inclusion of newly
`
`released products or any other equivalent devices ascertained through discovery.
`
`C.
`
`CLAIM CHARTS
`
`Claim charts identifying a location of every element of every asserted claim of the patents-
`
`in-suit within Apple Accused Products are attached hereto as Exhibits A–D. AGIS believes that
`
`
`
`1 Until discovery provides the necessary information, references to iCloud services and/or servers
`
`refer to Apple’s iCloud and iTunes services and/or servers, in addition to any additional relevant
`
`sign-on, identification, and/or authentication services and/or servers which may be employed for
`
`the purposes of achieving the methods of the Asserted Claims and/or providing the systems of the
`
`Asserted Claims.
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`6
`
`Apple Inc.
`Exhibit 1016
`Page 006
`
`
`
`
`
`the citations in the claim charts are representative of all Accused Products. For example, where
`
`AGIS cites reference material or images representing an iPhone device, that citation is
`
`representative for all other such iPhones, iPods, iPads, Apple Watches or other iOS devices or
`
`watchOS devices including all prior and future versions unless otherwise noted. AGIS reserves
`
`the right to amend these claim charts as well as other information contained in this document and
`
`the exhibits hereto, to incorporate new information learned during the course of discovery,
`
`including, but not limited to, information that is not publically available or readily discernible
`
`without discovery. AGIS further reserves the right to amend these claim charts, as well as other
`
`information contained in this document and the exhibits attached hereto, pursuant to Patent Local
`
`Rules 3-1(g) and 3-6.
`
`D.
`
`LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS
`
`AGIS asserts that, under the proper construction of the asserted claims and their claim
`
`terms, the limitations of the asserted claims of the patents-in-suit are literally present in the
`
`accused infotainment systems as set forth in the claim charts attached hereto as Exhibits A–D.
`
`AGIS contends that any and all elements found not to be literally infringed are infringed under the
`
`doctrine of equivalents because the differences between the claimed inventions and the accused
`
`instrumentalities, if any, are insubstantial.
`
`AGIS also contends that Apple directly infringes the asserted claims by making, using,
`
`offering for sale, selling, and importing in to the United States the accused instrumentalities as
`
`well as indirectly infringe by contributing to and/or inducing others (e.g., Apple’s customers or its
`
`customers’ customers) to directly infringe those claims by making, using, offering for sale or
`
`selling the Apple Accused Products.
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`7
`
`Apple Inc.
`Exhibit 1016
`Page 007
`
`
`
`
`
`Pursuant to Patent Local Rule 3-6(a)(1), Apple reserves the right to amend its
`
`Infringement Contentions as to literal infringement or infringement under the doctrine of
`
`equivalents in light of the Court’s claim construction.
`
`E.
`
`PRIORITY DATES
`
`Under P.R. 3-1(e), each of the asserted claims of the patents-in-suit are entitled to a
`
`priority date of at least as early as September 21, 2004. AGIS reserves the right to establish an
`
`earlier date of invention based upon actions related to conception and reduction to practice of the
`
`claimed inventions.
`
`F.
`
`AGIS’S OWN PRODUCTS
`
`At the present time, AGIS does not intend to rely on the assertion that its own apparatuses,
`
`products, devices, processes, methods, acts, or other instrumentalities practice the claimed
`
`inventions. AGIS reserves the right to amend this statement to identify covered products as
`
`discovery progresses.
`
`II.
`
`PRODUCTION OF DOCUMENTS PURSUANT TO PATENT LOCAL RULE 3-2
`
`AGIS is producing or making available for inspection documents that are in AGIS’S
`
`possession, custody or control as set forth in Patent Local Rule 3-2. An AGIS 3-2 Production
`
`Index identifying these documents is attached hereto.
`
`This preliminary identification of documents is for convenience and is not an admission
`
`that each document falls within any exemplary categories in the Patent Local Rules, or that any
`
`document qualifies as prior art. AGIS is continuing with its investigation, particularly with
`
`respect to ESI. Thus, AGIS reserves its right to add to, delete from, or otherwise modify its
`
`disclosures in this section as its investigation proceeds.
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`8
`
`Apple Inc.
`Exhibit 1016
`Page 008
`
`
`
`
`
`Production of these documents is governed by Patent Local Rule 2-2, and, with the
`
`exception of documents produced pursuant to P.R. 3.2(c) and public documents listed in the
`
`infringement charts, are considered “Confidential – Outside Attorneys Eyes Only” and disclosure
`
`of the confidential document or information shall be limited to each party’s outside attorney(s) of
`
`record and the employees of such outside attorney(s).
`
`Dated: September 18, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`BROWN RUDNICK LLP
`
` /s/ Peter Lambrianakos
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email:plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`eiturralde@brownrudnick.com
`
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
`Facsimile: (212) 209-4801
`
`MCKOOL SMITH, P.C.
`Samuel F. Baxter
`Texas State Bar No. 01938000
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`9
`
`Apple Inc.
`Exhibit 1016
`Page 009
`
`
`
`
`
`
`
`
`
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`jtruelove@mckoolsmith.com
`
`MCKOOL SMITH, P.C.
`104 e. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone : (903) 923-9000
`Facsimile (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF,
`AGIS SOFTWARE DEVELOPMENT LLC
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`10
`
`Apple Inc.
`Exhibit 1016
`Page 010
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that on September 18, 2017 a true and correct copy of the above and
`
`foregoing document has been served by email on:
`
`John M. Desmarais
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`jdesmarais@desmaraisllp.com
`
`Ameet A. Modi
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`amodi@desmaraisllp.com
`
`Michael P. Stadnick
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`mstadnick@desmaraisllp.com
`
`Kerri-Ann Limbeek
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`klimbeek@desmaraisllp.com
`
`
`Brian Matty
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`bmatty@desmaraisllp.com
`
`Jeffrey Scott Seddon
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`jseddon@desmaraisllp.com
`
`Wesley L. White
`Desmarais LLP
`230 Park Ave.
`New York, NY 10169
`wwhite@desmaraisllp.com
`
`
`
`
`
`Attorneys of Record for Apple Inc.
`
`/s/ Peter Lambrianakos
`
`Peter Lambrianakos
`
`
`
`
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`11
`
`Apple Inc.
`Exhibit 1016
`Page 011
`
`
`
`
`
`
`
`3-2(a)
`
`
`
`
`3-2(b)
`
`
`
`3-2(c)
`
`
`AGIS 3-2 PRODUCTION INDEX
`
`Bates Start
`AGISTX_00007059
`
`Bates End
`AGISTX_00007071
`
`Bates Start
`AGISTX_00006047
`AGISTX_00007035
`
`Bates End
`AGISTX_00006191
`AGISTX_00007058
`
`Bates Start
`AGISTX_00000001_
`
`Bates End
`AGISTX_00006046
`
`
`Public Documents Listed in Infringement Charts
`
`
`Bates Start
`AGISTX_00006192
`AGISTX_00007072
`
`Bates End
`AGISTX_00007034
`AGISTX_00007105
`
`
`
`
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`
`12
`
`Apple Inc.
`Exhibit 1016
`Page 012
`
`
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