IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
` Plaintiff,
`
` v.
`
`ZTE CORPORATION, ZTE (USA) INC.,
`AND ZTE (TX), INC..,
`
` Defendants.
`
`
`
`
`
`
` Civil Action No. 2:17-cv-00517-JRG
` Lead case: 2:17-cv-00513-JRG
`
`ZTE (USA) INC., AND ZTE (TX), INC.’S PRELIMINARY ELECTION OF PRIOR ART
`REFERENCES
`Defendants ZTE (USA) Inc. and ZTE (TX), Inc. (“ZTE”)1 serves its Preliminary Election
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`of Prior Art References, as set forth below, pursuant to the Court’s First Amended Docket
`
`Control Order (Dkt. 115)2 and in view of Plaintiff AGIS Software Development, LLC’s
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`(“AGIS”) April 16, 2018 Preliminary Election of Asserted Claims. ZTE expressly reserves its
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`right to assert at or before trial that the patents-in-suit are invalid for additional reasons,
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`including (without limitation) under 35 U.S.C. §§ 101 and/or 112. ZTE further expressly
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`reserves its rights to assert additional prior art references uncovered during the course of fact
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`discovery (including, but not limited to, any references based upon discovery from third parties).
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`I.
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`U.S. Pat. No. 8,213,979
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`The asserted claims of U.S. Pat. No. 8,213,970 are invalid in view of the following prior
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`art references alone, in combination with certain references as identified in the exhibits to ZTE’s
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`March 15, 2018 invalidity contentions cited herein (Dkt. 94), and/or in combination with the
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`1 Defendant ZTE Corporation has not yet been served or otherwise appeared in this case.
`2 Unless otherwise indicated, case citations will refer to the lead case docket (2:17-cv-00513-
`JRG).
`
`IPR2019-00485, Exhibit 2004
`Patent Owner, AGIS Software Development
`Page 1
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`

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`knowledge of a person of ordinary skill in the art prior to the date of the alleged invention of the
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`asserted claims:
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`1. United States Patent Publication No. 2003/0217109, entitled “Method and
`Apparatus for Automatic Notification and Response” to Ordille (ZTE-AGIS-
`00026285 - 00026324), as demonstrated in Exhibit A-1 to ZTE’s March 15, 2018
`invalidity contentions and in any subsequent amendments thereto.
`2. United States Patent Application No. 08/0219416, entitled “Method and System
`for Obtaining Feedback from at Least One Recipient Via a Telecommunication
`Network” to Roujinsky (ZTE-AGIS-00026268 - 00026284), as demonstrated in
`Exhibit A-2 to ZTE’s March 15, 2018 invalidity contentions and in any
`subsequent amendments thereto.
`3. United States Patent No. 7,609,669, entitled “Voice Directed System and Method
`Configured for Assured Messaging to Multiple Recipients” to Sweeney (ZTE-
`AGIS-00027192 - 00027202), as demonstrated in Exhibit A-3 to ZTE’s March
`15, 2018 invalidity contentions and in any subsequent amendments thereto.
`4. United States Patent No. 7,386,589, entitled “Managed Messaging Platform with
`Message Response Aggregation” to Tanumihardja (ZTE-AGIS-00027137 -
`00027191), as demonstrated in Exhibit A-4 to ZTE’s March 15, 2018 invalidity
`contentions and in any subsequent amendments thereto.
`5. United States Patent No. 6,816,878, entitled “Alert Notification System” to
`Zimmers (ZTE-AGIS-00027089 - 00027136), as demonstrated in Exhibit A-5 to
`ZTE’s March 15, 2018 invalidity contentions and in any subsequent amendments
`thereto.
`6. United States Patent App. Pub. No. 2006/0218232, entitled “Method and System
`for Accommodating Mandatory Responses in Electronic Messaging” to Kubala
`(ZTE-AGIS-00027089 - 00027136), as demonstrated in Exhibit A-6 to ZTE’s
`March 15, 2018 invalidity contentions and in any subsequent amendments thereto.
`7. United States Patent No. 6,854,007, entitled “Method and System for Enhancing
`Reliability of Communication with Electronic Messages” to Hammond (ZTE-
`AGIS-00027089 - 00027136), as demonstrated in Exhibit A-6 to ZTE’s March
`15, 2018 invalidity contentions and in any subsequent amendments thereto.
`8. United States Patent No. 5,325,310, entitled “Method and System for Persistent
`Electronic Mail Reply Processing” to Johnson et al. (ZTE-AGIS-00027089 -
`00027136), as demonstrated in Exhibit A-7 to ZTE’s March 15, 2018 invalidity
`contentions and in any subsequent amendments thereto.
`9. United States Patent No. 5,742,905, entitled “Personal Communications
`Internetworking” to Pepe et al. (ZTE-AGIS-00027089 - 00027136), as
`demonstrated in Exhibit A-7 to ZTE’s March 15, 2018 invalidity contentions and
`in any subsequent amendments thereto.
`10. United States Patent No. 7,619,584, entitled “Messaging Including Active
`Response Feature” to Wolf. (ZTE-AGIS-00027089 - 00027136), as demonstrated
`in Exhibit A-8 to ZTE’s March 15, 2018 invalidity contentions and in any
`subsequent amendments thereto.
`
`2
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`

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`11. United States Patent No. 7,912,913, entitled “Facilitating Presentation and
`Monitoring of Electronic Mail Messages with Reply by Constraints” to Accapadi
`et al. (ZTE-AGIS-00027089 - 00027136), as demonstrated in Exhibit A-9 to
`ZTE’s March 15, 2018 invalidity contentions and in any subsequent amendments
`thereto.
`12. WO App. No. 2008/118878, entitled “Enhanced Messaging Features” to
`Swanburg et al. (ZTE-AGIS-00027089 - 00027136), as demonstrated in Exhibit
`A-10 to ZTE’s March 15, 2018 invalidity contentions and in any subsequent
`amendments thereto.
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`II.
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`Each of U.S. Pat. Nos. 9,408,055; 9,445,251; and 9,467,838
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`The asserted claims of U.S. Pat. Nos. 9,408,055; 9,445,251; and 9,467,838 are invalid in
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`
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`
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`view of the following prior art references alone, in combination with certain references as
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`identified in the exhibits to ZTE’s March 15, 2018 invalidity contentions cited herein, and/or in
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`combination with the knowledge of a person of ordinary skill in the art prior to the proper
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`priority date of the asserted claims:
`
`1. United States Patent Publication No. 2007/0281690, entitled “Displaying and
`Tagging Places of Interest on Location-Aware mobile Communication Devices in
`a Local Area Network” to Altman et al. (ZTE-AGIS-00027043 - 00027069), as
`demonstrated in Exhibit C-1, E-1, and G-1 to ZTE’s March 15, 2018 invalidity
`contentions and in any subsequent amendments thereto.
`2. United States Patent No. 7,330,112, entitled “Location-Aware Services” to Emigh
`et al. (ZTE-AGIS-00026891 - 000026914), as demonstrated in Exhibit C-2, E-2,
`and G-2 to ZTE’s March 15, 2018 invalidity contentions and in any subsequent
`amendments thereto.
`3. United States Patent No. 7,917,866, entitled “Method, System, and Graphical
`User Interface for Meeting-Spot-Related Online Communications” to Karam
`(ZTE-AGIS-00026955 - 000026977), as demonstrated in Exhibit C-3, E-3, and G-
`3 to ZTE’s March 15, 2018 invalidity contentions and in any subsequent
`amendments thereto.
`4. United States Patent Publication No. 2002/0115453, entitled “Method and System
`for Location Based Wireless Communication Services” to Poulin et al. (ZTE-
`AGIS-00026936 - 00026954), as demonstrated in Exhibit C-4, E-4, and G-4 to
`ZTE’s March 15, 2018 invalidity contentions and in any subsequent amendments
`thereto.
`5. United States Patent No. 6,867,733, entitled “Method and System for Plurality of
`Mobile Units to Locate One Another” to Sandhu et al. (ZTE-AGIS-00026878 -
`00026890), as demonstrated in Exhibit C-5, E-5, and G-5 to ZTE’s March 15,
`2018 invalidity contentions and in any subsequent amendments thereto.
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`3
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`

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`6. United States Patent No. 7,271,742, entitled “Method and Apparatus for Sending,
`Retrieving and Planning Location Relevant Information” to Sheha et al. (ZTE-
`AGIS-00026823 - 000026877), as demonstrated in Exhibit C-5, E-5, and G-5 to
`ZTE’s March 15, 2018 invalidity contentions and in any subsequent amendments
`thereto.
`7. United States Patent No. 7,450,003, entitled “User-Defined Private Maps” to
`Weber et al. (ZTE-AGIS-00026915 - 00026935), as demonstrated in Exhibit C-6,
`E-6, and G-6 to ZTE’s March 15, 2018 invalidity contentions and in any
`subsequent amendments thereto.
`8. The Active Campus System made available to the public no later than April 2003,
`(ZTE-AGIS-00026703 - 00026735), as demonstrated in Exhibit C-7, E-7, and G-7
`to ZTE’s March 15, 2018 invalidity contentions and in any subsequent
`amendments thereto.
`9. The AGIS’s LifeRing Product and its prototypes (the “AGIS system”) made
`available to the public by October 3, 2005, (ZTE-AGIS-00026765 - 00026781), as
`demonstrated in Exhibit C-8, E-8, and G-8 to ZTE’s March 15, 2018 invalidity
`contentions and in any subsequent amendments thereto.
`10. The APRS Protocol Reference 1.0 (“APRS 1.0”) and the Automatic
`Packet/Position Reporting System (“APRS System”) where APRS 1.0 was
`published on or before August 29, 2000 and the APRS system was made available
`to the public no later than September 21, 2004, (ZTE-AGIS-00026537 -
`00026668), as demonstrated in Exhibit C-9, E-9, and G-9 to ZTE’s March 15,
`2018 invalidity contentions and in any subsequent amendments thereto.
`11. The AT&T Find Friends system (the “AT&T system”) made available to the
`public by June 24, 2002, (ZTE-AGIS-00026497 - 00026497), as demonstrated in
`Exhibit C-10, E-10, and G-10 to ZTE’s March 15, 2018 invalidity contentions and
`in any subsequent amendments thereto.
`12. The BuddySpace system (the “BuddySpace system”) made available to the public
`by June 2002, (ZTE-AGIS-00026475 - 00026496), as demonstrated in Exhibit C-
`11, E-11, and G-11 to ZTE’s March 15, 2018 invalidity contentions and in any
`subsequent amendments thereto.
`13. The Force XXI Battle Command, Brigade and Below system (the “FBCB2
`system”) made available to the public by March 21, 2003, (ZTE-AGIS-00026325
`- 00026421), as demonstrated in Exhibit C-12, E-12, and G-12 to ZTE’s March
`15, 2018 invalidity contentions and in any subsequent amendments thereto.
`14. The Navizon system (the “Navizon system”) made available to the public by
`October 2005, (ZTE-AGIS-00026422 - 00026423), as demonstrated in Exhibit C-
`13, E-13, and G-13 to ZTE’s March 15, 2018 invalidity contentions and in any
`subsequent amendments thereto.
`15. United States Patent No. 6,366,782, entitled “Method and Apparatus for Allowing
`a User of a Display-Based Terminal to Communicate with Communication Units
`in a Communication System” to Fumarlol et al. (ZTE-AGIS-00026915 -
`00026935), as demonstrated in Exhibit C-14, E-14, and G-14 to ZTE’s March 15,
`2018 invalidity contentions and in any subsequent amendments thereto.
`16. United States Patent No6,868,333, entitled “Group Interaction System for
`Interaction with other Vehicles of a Group” to Melen. (ZTE-AGIS-00026915 -
`
`4
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`

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`00026935), as demonstrated in Exhibit C-16, E-16, and G-16 to ZTE’s March 15,
`2018 invalidity contentions and in any subsequent amendments thereto.
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`In addition, as ZTE explained in its March 15, 2018 Patent Rule 3-3 Invalidity
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`
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`Contentions, U.S. Pat. Nos. 9,408,055; 9,445,251; and 9,467,838; are entitled to a priority date
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`no earlier than October 31, 2014. ZTE expressly reserves its right to assert at trial that, under that
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`priority date, to the extent that any of the accused ZTE products are determined to infringe any
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`claim of any of those asserted patents, those accused Apple products would also render the
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`claims invalid under at least AIA 35 U.S.C. § 102(a)(1) because they were each in public use and
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`on sale or available for download before the effective filing date of those patents. ZTE further
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`reserves the right to assert at trial that, under that priority date, earlier AGIS patents and/or
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`applications, including (without limitation) U.S. Patent No. 7,630,724, would also render the
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`claims invalid under at least AIA 35 U.S.C. § 102(a)(1) because they were publicly available
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`before the effective filing date of the those asserted patents.
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`
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`Dated: April 30, 2018
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`Respectfully submitted,
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`
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`
`
`/s/ Bradford C. Schulz
`Bradford C. Schulz
`
`Lionel M. Lavenue (Lead)
` email: Lionel.Lavenue@finnegan.com
`Bradford C. Schulz (Back-up)
` email: Bradford.Schulz@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`
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`ATTORNEYS FOR DEFENDANTS
`ZTE (USA) Inc. and ZTE (TX), Inc.
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on April 30, 2018, a true and correct copy of the
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`foregoing was served to the parties’ counsel of record via e-mail pursuant to Local Rule CV-
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`5(d).
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`
`
`/s/ Bradford C. Schulz
`Bradford C. Schulz
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`7
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