Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 1 of 131 PageID #: 5460
`
`Appendix 1 - Parties’ Proposed Constructions and Supporting Evidence
`
`Claim Term (Asserted Claim)
`
`1. “a data transmission means that
`facilitates the transmission of electronic
`files between said PDA/cell phones in
`different locations”
`
`(’970 Claim 1)
`
`Plaintiff AGIS’s Position and
`Supporting Evidence
`Governed by 35 U.S.C. § 112(6)
`
`Structure/Intrinsic Support
`
`See, e.g., ’970 Patent at 1:39-43; 2:36-43;
`4:1-36; Figs. 2, 3A, 3B, and 4. ’970 File
`History, Application 12/324,122, Claims,
`2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.1
`
`Extrinsic Support
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`
`Defendants’ Position and Supporting
`Evidence
`Governed by 35 U.S.C. § 112(6)
`
`Function: facilitating the transmission of
`electronic files between said PDA/cell phones
`in different locations
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`forth at ’970 Patent at 1:39-43; 2:36-43; 4:1-
`36; Figs. 2, 3A, 3B, and 4. ’970 File History,
`Application 12/324,122, Claims, 2008-11-26
`do not provide an algorithm that corresponds
`to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`1 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`1
`
`AGIS Software Development LLC
`IPR2018-01082 Ex. 2001
` 1
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 2 of 131 PageID #: 5461
`
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`of ordinary skill in the art at the time of the
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`Governed by 35 U.S.C. § 112(6)
`
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone2 to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`corresponding to the claimed function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6)
`
`2. “means for attaching a forced
`
`
`2 In addition, Defendants ZTE (USA), Inc.(“ZTA”) and ZTE (TX) Inc. (“ZTX”) intend to rely on a sworn declaration of Robert Akl to explain the technology,
`state of the art at the tiem of the invention, the level of ordinary skill in the relevant art, and the meaning of these claim elements to a person of ordinary skill in
`the art at the time of the alleged invention, including: (1) whether a person of ordinary skill in the art would understand the claim term to have a sufficiently
`definite meaning as the name for structure and (2) whether a person of ordinary skill in the art would understand the specification to disclose sufficient structure
`corresponding to the claimed function. Defendants ZTA and ZTE may also rely on Dr. Akl to respond to Plaintiff’s claim construction positions and any
`testimony of Plaintiff’s expert and witnesses.
`
`
`
`2
`
`2
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 3 of 131 PageID #: 5462
`
`message alert software packet to a
`voice or text message creating a forced
`message alert that is transmitted by said
`sender PDA/cell phone to the recipient
`PDA/cell phone, said forced message
`alert software packet containing a list
`of possible required responses”/
`“means for attaching a forced message
`alert software packet to a voice or text
`message creating a forced message
`alert that is transmitted by said sender
`PDA/cell phone to the recipient
`PDA/cell phone”
`
`(’970 Claim 1)
`
`
`Structure/Intrinsic Support
`
`See, e.g., Algorithm set forth in Fig 2, 3A,
`3B. 7:8-63. ’970 File History, Application
`12/324,122, Claims, 2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.3
`
`
`
`
`Extrinsic Support
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`
`
`Function: attaching a forced message alert
`software packet to a voice or text message
`creating a forced message alert that is
`transmitted by said sender PDA/cell phone to
`the recipient PDA/cell phone, said forced
`message alert software packet containing a
`list of possible required responses
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`forth at ’970 Patent at Fig 2, 3A, 3B. 7:8-63.
`’970 File History, Application 12/324,122,
`Claims, 2008-11-26 do not provide an
`algorithm that corresponds to the claimed
`function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`
`
`3 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`3
`
`
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 4 of 131 PageID #: 5463
`
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`of ordinary skill in the art at the time of the
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`
`3. “[means for. . .] requiring the forced
`message alert software on said
`recipient PDA/cell phone to transmit an
`automatic acknowledgment to the
`sender PDA/cell phone as soon as said
`forced message alert is received by the
`recipient PDA/cell phone”
`
`(’970 Claim 1)
`
`Plain Meaning
`
`AGIS reserves its right to challenge
`Defendants’ contention that this term
`should be governed by 35 U.S.C. § 112, ¶
`6. AGIS contends that the claim term
`provides sufficient structure.
`
`In the alternative, AGIS identifies the
`
`
`
`4
`
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`corresponding to the claimed function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6)
`
`Function: requiring the forced message alert
`software on said recipient PDA/cell phone to
`transmit an automatic acknowledgment to the
`sender PDA/cell phone as soon as said forced
`message alert is received by the recipient
`PDA/cell phone
`
`
`4
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 5 of 131 PageID #: 5464
`
`following structure/intrinsic support:
`See, e.g., ’970 Patent, Fig 4; 2:7-35; 8:16-
`62. ’970 File History, Application
`12/324,122, Claims, 2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.4
`
`
`
`Extrinsic Support
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`forth at 970 Patent, Fig 4; 2:7-35; 8:16-62.
`’970 File History, Application 12/324,122,
`Claims, 2008-11-26 do not provide an
`algorithm that corresponds to the claimed
`function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`
`
`4 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`5
`
`
`
`5
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 6 of 131 PageID #: 5465
`
`of ordinary skill in the art at the time of the
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`Governed by 35 U.S.C. § 112(6)
`
`Structure/Intrinsic Support
`
`See, e.g., Algorithm set forth in Figure 4
`and 8:16-57; See, e.g., Algorithm set forth
`in Figure 4 and 8:16-57; 11:1-21. ’970 File
`History, Application 12/324,122, Claims,
`2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`corresponding to the claimed function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`
`Governed by 35 U.S.C. § 112(6)
`
`Function: receiving and displaying a listing of
`which recipient PDA/cell phones have
`automatically acknowledged the forced
`message alert and which recipient PDA/cell
`phones have not automatically acknowledged
`the forced message alert
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`
`4. “means for requiring a required
`manual response from the response list
`by the recipient in order to clear
`recipient's response list from recipient's
`cell phone display”
`
`(’970 Claim 1)
`
`
`
`6
`
`6
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 7 of 131 PageID #: 5466
`
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.5
`
`
`
`Extrinsic Support
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`of ordinary skill in the art at the time of the
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`forth at ’970 Patent at Figure 4 and 8:16-57;
`11:1-21. ’970 File History, Application
`12/324,122, Claims, 2008-11-26 do not
`provide an algorithm that corresponds to the
`claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`
`
`5 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`7
`
`
`
`7
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 8 of 131 PageID #: 5467
`
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`
`Governed by 35 U.S.C. § 112(6)
`
`Structure/Intrinsic Support
`
`See, e.g., ’970 Patent at col. 4:12-46.6 ’970
`File History, Application 12/324,122,
`Claims, 2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.7
`
`
`
`Extrinsic Support
`
`corresponding to the claimed function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6)
`
`Function: receiving and displaying a listing of
`which recipient PDA/cell phones have
`automatically acknowledged the forced
`message alert and which recipient PDA/cell
`phones have not automatically acknowledged
`the forced message alert
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`
`5. “means for receiving and displaying
`a listing of which recipient PDA/cell
`phones have automatically
`acknowledged the forced message alert
`and which recipient PDA/cell phones
`have not automatically acknowledged
`the forced message alert”
`
`(’970 Claim 1)
`
`
`6 In the alternative, to the extent that Defendant may allege that this implementation is software-implemented, the structure for such display software is set forth
`in the algorithms in Figures 2, 3A, 3B, 6:38-7:4; 7:17-8:15.
`7 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`8
`
`
`
`8
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 9 of 131 PageID #: 5468
`
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`of ordinary skill in the art at the time of the
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`IPR2018-01085, IPR2018-01086,
`
`forth at ’970 Patent at col. Figures 2, 3A, 3B,
`6:38-7:4; 7:17-8:15 do not provide an
`algorithm that corresponds to the claimed
`function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`corresponding to the claimed function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`
`
`
`9
`
`9
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 10 of 131 PageID #: 5469
`
`6. “means for periodically resending
`said forced message alert to said
`recipient PDA/cell phones that have
`not automatically acknowledged the
`forced message alert”
`
`(’970 Claim 1)
`
`IPR2018-01087, and IPR2018-01088.
`
`Governed by 35 U.S.C. § 112(6)
`
`Structure/Intrinsic Support
`
`See, e.g., ’970 Patent at col. 4:12-46.8 ’970
`File History, Application 12/324,122,
`Claims, 2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.9
`
`
`
`Extrinsic Support
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`of ordinary skill in the art at the time of the
`
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6)
`
`Function: periodically resending said forced
`message alert to said recipient PDA/cell
`phones that have not automatically
`acknowledged the forced message alert
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`forth at ’970 Patent at Figures 2, 3A, 3B,
`6:38-7:4; 7:17-8:15 do not provide an
`algorithm that corresponds to the claimed
`function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`
`
`8 In the alternative, to the extent that Defendant may allege that this implementation is software-implemented, the structure for such display software is set forth
`in the algorithms in Figures 2, 3A, 3B, 6:38-7:4; 7:17-8:15.
`9 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`10
`
`
`
`10
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 11 of 131 PageID #: 5470
`
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`
`7. “means for receiving and displaying
`a listing of which recipient PDA/cell
`phones have transmitted a manual
`
`Governed by 35 U.S.C. § 112(6)
`
`Structure/Intrinsic Support
`
`
`
`11
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`corresponding to the claimed function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6)
`
`Function: receiving and displaying a listing of
`
`11
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 12 of 131 PageID #: 5471
`
`response to said forced message alert
`and details the response from each
`recipient PDA/cell phone that
`responded”
`
`(’970 Claim 1, 2)
`
`
`See, e.g., ’970 Patent at col. 4:12-46.10
`’970 File History, Application 12/324,122,
`Claims, 2008-11-26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.11
`
`
`Extrinsic Support
`
`Plaintiff intends to rely on a sworn
`declaration of Dr. Jaime G. Carbonell to
`explain the technology, state of the art at
`the time of the invention, the level of
`ordinary skill in the relevant art, and the
`meaning of this claim element to a person
`of ordinary skill in the art at the time of the
`alleged invention, including (1) whether a
`person of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`
`which recipient PDA/cell phones have
`automatically acknowledged the forced
`message alert and which recipient PDA/cell
`phones have not automatically acknowledged
`the forced message alert
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general purpose
`PDA or cell phone for implementing an
`undisclosed algorithm. The disclosures set
`forth at ’970 Patent at Figures 3A, 3B, 6:38-
`7:4; 7:17-8:15 do not provide an algorithm
`that corresponds to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of the
`invention, the level of ordinary skill in the
`
`
`10 In the alternative, to the extent that Defendant may allege that this implementation is software-implemented, the structure for such display software is set forth
`in the algorithms in Figures 3A, 3B, 6:38-7:4; 7:17-8:15.
`11 AGIS reserves the right, for purposes of establishing priority, to identify structure from all preceding applications in the priority chain which are incorporated
`by reference in their entirety, including U.S. patent application Ser. No. 11/612,830 filed on Dec. 19, 2006 which is a continuation-in-part of U.S. patent
`application Ser. No. 11/308,648 filed Apr. 17, 2006 which is a continuation-in-part of U.S. patent application Ser. No. 10/711,490 now U.S. Pat. No. 7,031,728.
`12
`
`
`
`12
`
`

`

`Case 2:17-cv-00513-JRG Document 149-1 Filed 06/15/18 Page 13 of 131 PageID #: 5472
`
`function. Plaintiff may also rely on Dr.
`Carbonell to respond to Defendants’ claim
`construction positions and any testimony of
`Defendants' expert and witnesses. Plaintiff
`also reserves the right to rely on positions
`and evidence relied upon by Defendants
`and its experts in the related IPR
`proceedings.
`
`AGIS may rely on papers and/or
`declarations filed in Inter Partes Review
`numbers IPR2018-00817, IPR2018-00818,
`IPR2018-00819, IPR2018-00821,
`IPR2018-01079, IPR2018-01080,
`IPR2018-01081, IPR2018-01082,
`IPR2018-01083, IPR2018-01084,
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`
`Governed by 35 U.S.C. § 112(6)
`
`Structure/Intrinsic Support
`
`See, e.g., Algorithm set forth in Figure 4
`and 8:16-57; 11:1-21. ’970 File History,
`Application 12/324,122, Claims, 2008-11-
`26.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`to identify additional structure(s), act(s), or
`
`13
`
`relevant art, and the meaning of this claim
`element to a person of ordinary skill in the art
`at the time of the alleged invention, including
`(1) whether a person of ordinary skill in the
`art would understand the claim term to have a
`sufficiently definite meaning as the name for
`structure and (2) whether a person of ordinary
`skill in the art would understand the
`specification to disclose sufficient structure
`corresponding to the claimed function.
`
`Defendants may also rely on D