Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 1 of 125 PageID #: 5650
`
`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)
`
`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
`
`Function: facilitating the transmission of
`electronic files between said PDA/cell phones
`in different locations
`
`Structure/Intrinsic Support
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Communication network server, ’970
`Patent at 1:39-43; 2:36-43; 4:1-36; Figs. 2,
`3A, 3B, and 4.
`
`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,
`
`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. 2003
`
`1
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 2 of 125 PageID #: 5651
`
`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
`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
`
`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.
`
`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 162-1 Filed 07/23/18 Page 3 of 125 PageID #: 5652
`
`2. “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, 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)
`
`and its experts in the related IPR
`proceedings.
`Governed by 35 U.S.C. § 112(6)
`
`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
`
`Structure/Intrinsic Support
`
`Algorithm set forth in Fig 2, 3A, 3B. 7:8-
`63.
`
`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,
`
`Governed by 35 U.S.C. § 112(6)
`
`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.
`
`
`
`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 162-1 Filed 07/23/18 Page 4 of 125 PageID #: 5653
`
`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
`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.
`Plain Meaning - not Governed by 35
`U.S.C. § 112(6)
`
`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)
`
`AGIS reserves its right to challenge
`Defendants’ contention that this term
`
`Function: requiring the forced message alert
`software on said recipient PDA/cell phone to
`transmit an automatic acknowledgment to the
`
`4
`
`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
`
`4
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 5 of 125 PageID #: 5654
`
`forced message alert is received by the
`recipient PDA/cell phone”
`
`should be governed by 35 U.S.C. § 112, ¶
`6. AGIS contends that the claim term
`provides sufficient structure.
`
`sender PDA/cell phone as soon as said forced
`message alert is received by the recipient
`PDA/cell phone
`
`(’970 Claim 1)
`
`In the alternative, AGIS identifies the
`following structure/intrinsic support
`corresponding to Defendants’ proposed
`function: ’970 Patent, Fig 4; 2:7-35; 8:16-
`62.
`
`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.
`
`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
`
`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 162-1 Filed 07/23/18 Page 6 of 125 PageID #: 5655
`
`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)
`
`Function: 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
`
`Structure/Intrinsic Support
`
`
`6
`
`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 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
`
`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
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 7 of 125 PageID #: 5656
`
`Algorithm set forth in Figure 4 and 8:37-
`57;
`
`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.5
`
`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.
`
`Extrinsic Support
`
`Intrinsic 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
`
`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 162-1 Filed 07/23/18 Page 8 of 125 PageID #: 5657
`
`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)
`
`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
`
`Structure/Intrinsic Support
`
`PDA/cell phone hardware including touch
`screen 16, and wireless transmitter or
`cellular modem. See, e.g., ’970 Patent at
`col. 4:12-46.
`
`AGIS notes that its investigation is
`ongoing and it expressly reserves the right
`
`8
`
`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
`forth at ’970 Patent at col. Figures 2, 3A, 3B,
`6:38-7:4; 7:17-8:15 do not provide an
`
`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)
`
`
`
`8
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 9 of 125 PageID #: 5658
`
`to identify additional structure(s), act(s), or
`material(s) corresponding to this term.6
`
`
`
`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.
`
`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.
`
`
`
`6 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.
`
`
`
`9
`
`9
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 10 of 125 PageID #: 5659
`
`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)
`
`
`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)
`
`Function: periodically resending said forced
`message alert to said recipient PDA/cell
`phones that have not automatically
`acknowledged the forced message alert
`
`Structure/Intrinsic Support
`
`PDA/cell phone hardware including WiFi
`connectivity or a cellular modem. ’970
`Patent at col. 4:12-46
`
`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
`
`
`
`
`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: 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
`
`
`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.
`
`
`
`10
`
`10
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 11 of 125 PageID #: 5660
`
`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.
`
`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,
`
`11
`
`
`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
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`
`
`
`11
`
`

`

`Case 2:17-cv-00513-JRG Document 162-1 Filed 07/23/18 Page 12 of 125 PageID #: 5661
`
`7. “means for receiving and displaying
`a listing of which recipient PDA/cell
`phones have transmitted a manual
`response to said forced message alert
`and details the response from each
`recipient PDA/cell phone that
`responded”
`
`(’970 Claim 1)
`
`IPR2018-01085, IPR2018-01086,
`IPR2018-01087, and IPR2018-01088.
`Governed by 35 U.S.C. § 112(6)
`
`Function: receiving and displaying a listing
`of which recipient PDA/cell phones have
`transmitted a manual response to said
`forced message alert and details the
`response from each recipient PDA/cell
`phone that responded
`
`Structure/Intrinsic Support
`
`PDA/cell phone hardware including touch
`screen 16, and wireless transmitter or
`cellular modem. See, e.g., ’970 Patent at
`col. 4:12-46.
`
`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.8
`
`
`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
`
`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
`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
`
`
`8 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 162-1 Filed 07/23/18 Page 13 of 125 PageID #: 5662
`
`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,
`IPR2018-01087, and IPR2018-01088.
`Plain Meaning
`
`AGIS reserves its right to challenge
`Defendants’ contention that this term
`
`13
`
`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