Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 1 of 23 PageID #: 5428
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT
`LLC,
`
`
`Plaintiff,
`
`
`v.
`
`HUAWEI DEVICE USA INC., et al.,
`
`
`Defendants,
`
`AGIS SOFTWARE DEVELOPMENT
`LLC,
`
`
`Plaintiff,
`
`
`v.
`
`APPLE, INC.,
`
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
`
`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
`
`
`
`
`
`APPLE’S FIRST AMENDED ANSWER TO PLAINTIFF’S FIRST AMENDED
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Apple Inc. (“Apple”) answers Plaintiff’s First Amended Complaint for Patent
`
`Infringement (“Amended Complaint”) filed by AGIS Software Development LLC (“AGIS”) (D.I.
`
`32) as follows:
`
`THE PARTIES1
`
`1.
`
`Apple has insufficient knowledge or information to admit or deny the allegations
`
`in Amended Complaint paragraph 1 and on that basis denies all such allegations.
`
`
`
`
`1 For clarity and ease of reference, Apple repeats herein the section headers recited in AGIS’s
`Amended Complaint. To the extent any section header is construed to be a factual allegation,
`Apple denies any and all such allegations.
`
`

`

`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 2 of 23 PageID #: 5429
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`2.
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`Apple admits that it is a corporation organized and existing under the laws of
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`California and has a principal place of business at 1 Infinite Loop, Cupertino, California 95014.
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`Apple admits that it has retail stores at 2601 Preston Road, Frisco, Texas, and 6121 West Park
`
`Boulevard, Plano, Texas, as well as other locations in Texas. Apple admits that it offers and sells
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`its products and/or services, including those accused herein of infringement, to customers and
`
`potential customers located in Texas, including in the judicial Eastern District of Texas. Apple
`
`admits that it may be served with process through its registered agent for service in Texas: CT
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`Corporation System, 1999 Bryant Street, Suite 900, Dallas, Texas 75201. To the extent any factual
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`allegations remain in the Amended Complaint paragraph 2, Apple denies them.
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`JURISDICTION AND VENUE
`
`3.
`
`Apple admits that AGIS purports to bring an action for patent infringement. Apple
`
`states that the remaining allegations in the Amended Complaint paragraph 3 contain legal
`
`conclusions that require no answer. To the extent an answer is required, Apple denies that any
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`factual or legal basis exists for any of AGIS’s claims against Apple in this action, or that AGIS is
`
`entitled to any relief whatsoever from Apple or this Court. To the extent any factual allegations
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`remain in the Amended Complaint paragraph 3, Apple denies them.
`
`4.
`
`Apple admits that it has retail stores in the Eastern District of Texas. Apple admits
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`that it has transacted business in the Eastern District of Texas. Apple denies that it has committed
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`or induced acts of patent infringement in this judicial district or in any other district. Apple further
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`denies that venue is proper in this District, and further asserts that a District Court in the Northern
`
`District of California would be a clearly more convenient venue, and on that additional basis,
`
`denies the propriety of venue in this district. To the extent any factual allegations remain in the
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`Amended Complaint paragraph 4, Apple denies them.
`
`
`
`2
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 3 of 23 PageID #: 5430
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`5.
`
`Apple admits that it has conducted business in the Eastern District of Texas. Apple
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`denies that it has committed, induced, or contributed to acts of patent infringement in this judicial
`
`district or in any other district. Apple states that the remaining allegations in the Amended
`
`Complaint paragraph 5 contain legal conclusions that require no answer. To the extent an answer
`
`is required, Apple admits that it is subject to personal jurisdiction in this Court for the purposes of
`
`this action, but denies that any factual or legal basis exists for any of AGIS’s claims against Apple
`
`in this action, or that AGIS is entitled to any relief whatsoever from Apple or this Court. To the
`
`extent any factual allegations remain in the Amended Complaint paragraph 5, Apple denies them.
`
`PATENTS-IN-SUIT
`
`6.
`
`Apple admits that according to the records of the U.S. Patent and Trademark Office
`
`(“USPTO”), on July 3, 2012, the USPTO issued United States Patent No. 8,213,970 (the “’970
`
`patent”), but denies that the ’970 patent was duly and legally issued. Apple admits that the ’970
`
`patent is entitled “Method of Utilizing Forced Alerts for Interactive Remote Communications.”
`
`Apple admits that, on information and belief, Exhibit A to the Amended Complaint appears to be
`
`a copy of the ’970 patent.
`
`7.
`
`Apple admits that according to the records of the USPTO, on August 2, 2016, the
`
`USPTO issued United States Patent No. 9,408,055 (the “’055 patent”), but denies that the ’055
`
`patent was duly and legally issued. Apple admits that the ’055 patent is entitled “Method to
`
`Provide Ad Hoc and Password Protected Digital and Voice Networks.” Apple admits that, on
`
`information and belief, Exhibit B to the Amended Complaint appears to be a copy of the ’055
`
`patent.
`
`8.
`
`Apple admits that according to the records of the USPTO, on September 13, 2016,
`
`the USPTO issued United States Patent No. 9,445,251 (the “’251 patent”), but denies that the ’251
`
`
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 4 of 23 PageID #: 5431
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`patent was duly and legally issued. Apple admits that the ’251 patent is entitled “Method to
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`Provide Ad Hoc and Password Protected Digital and Voice Networks.” Apple admits that, on
`
`information and belief, Exhibit C to the Amended Complaint appears to be a copy of the ’251
`
`patent.
`
`9.
`
`Apple admits that according to the records of the USPTO, on October 11, 2016, the
`
`USPTO issued United States Patent No. 9,467,838 (the “’838 patent”), but denies that the ’838
`
`patent was duly and legally issued. Apple admits that the ’838 patent is entitled “Method to
`
`Provide Ad Hoc and Password Protected Digital and Voice Networks.” Apple admits that, on
`
`information and belief, Exhibit D to the Amended Complaint appears to be a copy of the ’838
`
`patent.
`
`10.
`
`Apple admits that according to the records of the USPTO, on August 29, 2017, the
`
`USPTO issued U.S. Patent No. 9,749,829 (the “’829 Patent”), but denies that the ’829 patent was
`
`duly and legally issued. Apple admits that the ’829 patent is entitled “Method to Provide Ad Hoc
`
`and Password Protected Digital and Voice Networks.” Apple admits that, on information and
`
`belief, Exhibit E to the Amended Complaint appears to be a copy of the ’829 patent.
`
`FACTUAL ALLEGATIONS
`
`11.
`
`Apple has insufficient knowledge or information to admit or deny the allegations
`
`in Amended Complaint paragraph 11 and on that basis denies all such allegations.
`
`12.
`
`Apple has insufficient knowledge or information to admit or deny the allegations
`
`in Amended Complaint paragraph 12 and on that basis denies all such allegations.
`
`13.
`
`Apple has insufficient knowledge or information to admit or deny the factual
`
`allegations in Amended Complaint paragraph 13 and on that basis denies all such allegations.
`
`
`
`4
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 5 of 23 PageID #: 5432
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`14.
`
`Apple has insufficient knowledge or information to admit or deny the factual
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`allegations in Amended Complaint paragraph 14 and on that basis denies all such allegations.
`
`15.
`
`Apple admits that it has manufactured, used, sold, offered for sale, and/or imported
`
`into the United States iPhone versions 4, 4s, 5, 5s, SE, 6s, 6s+, 7, 7+, 7 Red, 8, X, and SE, iPad
`
`versions 1 through 3, iPad Air versions 1 and 2, iPad Mini versions 1 through 4, and iPad Pro 9.7,
`
`10.5, and 12.9, and Apple Watch versions Series 1, Series 2, Series 3, Nike+, and Hermes
`
`(collectively, the “Accused Devices”). Apple denies the remaining factual allegations of the first
`
`sentence of Amended Complaint paragraph 15. Apple admits that it currently makes available
`
`the Apple Maps, Find My iPhone, Find My Friends, and iMessage apps as components of certain
`
`of its iOS operating systems software and as downloads on Apple’s App Store. Apple denies the
`
`remaining allegations of Amended Complaint paragraph 15.
`
`16.
`
`Amended Complaint paragraph 16 contains legal conclusions to which no response
`
`is required, at least to the extent Amended Complaint paragraph 16 alleges that the Accused
`
`Devices meet the limitations recited in the claims of the Patents-In-Suit. To the extent a response
`
`is deemed to be required, Apple denies the allegations of Amended Complaint paragraph 16.
`
`COUNT I
`(Infringement of the ’970 Patent)
`
`17.
`
`Apple incorporates by reference its responses to Amended Complaint paragraphs
`
`1-16 as if fully set forth herein.
`
`18.
`
`Apple admits that it has not entered into a license with AGIS concerning the ’970
`
`patent. Apple denies any remaining factual allegations of Amended Complaint paragraph 18.
`
`19.
`
`20.
`
`21.
`
`
`
`Apple denies the allegations of Amended Complaint paragraph 19.
`
`Apple denies the allegations of Amended Complaint paragraph 20.
`
`Apple denies the allegations of Amended Complaint paragraph 21.
`
`5
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 6 of 23 PageID #: 5433
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`22.
`
`Apple admits that its website includes certain instructions concerning its Find My
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`iPhone app. Apple denies the remaining allegations of Amended Complaint paragraph 22.
`
`23.
`
`24.
`
`25.
`
`Apple denies the allegations of Amended Complaint paragraph 23.
`
`Apple denies the allegations of Amended Complaint paragraph 24.
`
`Apple denies the allegations of Amended Complaint paragraph 25.
`
`COUNT II
`(Infringement of the ’055 Patent)
`
`26.
`
`Apple incorporates by reference its responses to Amended Complaint paragraphs
`
`1-25 as if fully set forth herein.
`
`27.
`
`Apple admits that it has not entered into a license with AGIS concerning the ’055
`
`patent. Apple denies any remaining factual allegations of Amended Complaint paragraph 27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`Apple denies the allegations of Amended Complaint paragraph 28.
`
`Apple denies the allegations of Amended Complaint paragraph 29.
`
`Apple denies the allegations of Amended Complaint paragraph 30.
`
`Apple admits that its website includes instructions concerning its Find My Friends
`
`app. Apple denies the remaining allegations of Amended Complaint paragraph 31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`39.
`
`Apple denies the allegations of Amended Complaint paragraph 32.
`
`Apple denies the allegations of Amended Complaint paragraph 33.
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`Apple denies the allegations of Amended Complaint paragraph 34.
`
`Apple denies the allegations of Amended Complaint paragraph 35.
`
`Apple denies the allegations of Amended Complaint paragraph 36.
`
`Apple denies the allegations of Amended Complaint paragraph 37.
`
`Apple denies the allegations of Amended Complaint paragraph 38.
`
`Apple denies the allegations of Amended Complaint paragraph 39.
`
`
`
`6
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 7 of 23 PageID #: 5434
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`COUNT III
`(Infringement of the ’251 Patent)
`
`40.
`
`Apple incorporates by reference its responses to Amended Complaint paragraphs
`
`1-39 as if fully set forth herein.
`
`41.
`
`Apple admits that it has not entered into a license with AGIS concerning the ’055
`
`patent. Apple denies any remaining factual allegations of Amended Complaint paragraph 41.
`
`42.
`
`43.
`
`44.
`
`45.
`
`Apple denies the allegations of Amended Complaint paragraph 42.
`
`Apple denies the allegations of Amended Complaint paragraph 43.
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`Apple denies the allegations of Amended Complaint paragraph 44.
`
`Apple admits that its website includes instructions concerning its Find My Friends
`
`app. Apple denies the remaining allegations of Amended Complaint paragraph 45.
`
`46.
`
`47.
`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`53.
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`Apple denies the allegations of Amended Complaint paragraph 46.
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`Apple denies the allegations of Amended Complaint paragraph 47.
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`Apple denies the allegations of Amended Complaint paragraph 48.
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`Apple denies the allegations of Amended Complaint paragraph 49.
`
`Apple denies the allegations of Amended Complaint paragraph 50.
`
`Apple denies the allegations of Amended Complaint paragraph 51.
`
`Apple denies the allegations of Amended Complaint paragraph 52.
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`Apple denies the allegations of Amended Complaint paragraph 53.
`
`COUNT IV
`(Infringement of the ’838 Patent)
`
`54.
`
`Apple incorporates by reference its responses to Amended Complaint paragraphs
`
`1-53 as if fully set forth herein.
`
`55.
`
`Apple admits that it has not entered into a license with AGIS concerning the ’838
`
`patent. Apple denies any remaining factual allegations of Amended Complaint paragraph 55.
`
`
`
`7
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 8 of 23 PageID #: 5435
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`56.
`
`57.
`
`58.
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`59.
`
`Apple denies the allegations of Amended Complaint paragraph 56.
`
`Apple denies the allegations of Amended Complaint paragraph 57.
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`Apple denies the allegations of Amended Complaint paragraph 58.
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`Apple admits that its website includes instructions concerning its Find My Friends
`
`app. Apple denies the remaining allegations of Amended Complaint paragraph 59.
`
`60.
`
`61.
`
`62.
`
`63.
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`64.
`
`65.
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`66.
`
`67.
`
`Apple denies the allegations of Amended Complaint paragraph 60.
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`Apple denies the allegations of Amended Complaint paragraph 61.
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`Apple denies the allegations of Amended Complaint paragraph 62.
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`Apple denies the allegations of Amended Complaint paragraph 63.
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`Apple denies the allegations of Amended Complaint paragraph 64.
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`Apple denies the allegations of Amended Complaint paragraph 65.
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`Apple denies the allegations of Amended Complaint paragraph 66.
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`Apple denies the allegations of Amended Complaint paragraph 67.
`
`COUNT V
`(Infringement of the ’829 Patent)
`
`68.
`
`Apple incorporates by reference its responses to Amended Complaint paragraphs
`
`1-67 as if fully set forth herein.
`
`69.
`
`Apple admits that it has not entered into a license with AGIS concerning the ’829
`
`patent. Apple denies any remaining factual allegations of Amended Complaint paragraph 69.
`
`70.
`
`71.
`
`72.
`
`73.
`
`Apple denies the allegations of Amended Complaint paragraph 70.
`
`Apple denies the allegations of Amended Complaint paragraph 71.
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`Apple denies the allegations of Amended Complaint paragraph 72.
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`Apple admits that its website includes instructions concerning its Find My Friends
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`app. Apple denies the remaining allegations of Amended Complaint paragraph 73.
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`
`
`8
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 9 of 23 PageID #: 5436
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`74.
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`75.
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`76.
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`77.
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`78.
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`79.
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`80.
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`81.
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`Apple denies the allegations of Amended Complaint paragraph 74.
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`Apple denies the allegations of Amended Complaint paragraph 75.
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`Apple denies the allegations of Amended Complaint paragraph 76.
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`Apple denies the allegations of Amended Complaint paragraph 77.
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`Apple denies the allegations of Amended Complaint paragraph 78.
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`Apple denies the allegations of Amended Complaint paragraph 79.
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`Apple denies the allegations of Amended Complaint paragraph 80.
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`Apple denies the allegations of Amended Complaint paragraph 81.
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`DEMAND FOR JURY TRIAL
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`
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`Apple hereby demands a jury for all issues so triable.
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`PRAYER FOR RELIEF
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`Apple denies that AGIS is entitled to any relief, either as prayed for in its Amended
`
`Complaint or otherwise.
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`GENERAL DENIAL
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`Apple further denies each and every allegation contained in the Amended Complaint to
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`which Apple has not specifically admitted, denied, or otherwise responded to herein.
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`APPLE’S DEFENSES
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`Apple asserts the following defenses in response to the allegations of the Amended
`
`Complaint, undertaking the burden of proof only as to those defenses deemed affirmative defenses
`
`by law, regardless of how such defenses are denominated herein. Apple reserves the right to assert
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`any additional defenses as they become known during the course of this action.
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`9
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 10 of 23 PageID #: 5437
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`First Defense – Patent Invalidity
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`AGIS’s purported claims for infringement of the ’970 patent are barred because the claims
`
`of the ’970 patent are invalid for failure to comply with the requirements of Title 35, United States
`
`Code, including at least §§ 101, 102, 103, and 112.
`
`AGIS’s purported claims for infringement of the ’055 patent are barred because the claims
`
`of the ’055 patent are invalid for failure to comply with the requirements of Title 35, United States
`
`Code, including at least §§ 101, 102, 103, and 112.
`
`AGIS’s purported claims for infringement of the ’251 patent are barred because the claims
`
`of the ’251 patent are invalid for failure to comply with the requirements of Title 35, United States
`
`Code, including at least §§ 101, 102, 103, and 112.
`
`AGIS’s purported claims for infringement of the ’838 patent are barred because the claims
`
`of the ’838 patent are invalid for failure to comply with the requirements of Title 35, United States
`
`Code, including at least §§ 101, 102, 103, and 112.
`
`AGIS’s purported claims for infringement of the ’829 patent are barred because the claims
`
`of the ’829 patent are invalid for failure to comply with the requirements of Title 35, United States
`
`Code, including at least §§ 101, 102, 103, and 112.
`
`Second Defense – Non-Infringement
`
`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
`
`inducement, any valid and enforceable claim of the ’970 patent.
`
`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
`
`inducement, any valid and enforceable claim of the ’055 patent.
`
`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
`
`inducement, any valid and enforceable claim of the ’251 patent.
`
`
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`10
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`

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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 11 of 23 PageID #: 5438
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`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
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`inducement, any valid and enforceable claim of the ’838 patent.
`
`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
`
`inducement, any valid and enforceable claim of the ’829 patent.
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`Third Defense – Prosecution History Estoppel and Disclaimer
`
`The relief sought by AGIS is barred, in whole or in part, under the doctrines of prosecution
`
`history estoppel and prosecution disclaimer due to amendments and/or statements made during
`
`prosecution related to the ’970 patent and/or in the specification and claims of the ’970 patent.
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`The relief sought by AGIS is barred, in whole or in part, under the doctrines of prosecution
`
`history estoppel and prosecution disclaimer due to amendments and/or statements made during
`
`prosecution related to the ’055 patent and/or in the specification and claims of the ’055 patent.
`
`The relief sought by AGIS is barred, in whole or in part, under the doctrines of prosecution
`
`history estoppel and prosecution disclaimer due to amendments and/or statements made during
`
`prosecution related to the ’251 patent and/or in the specification and claims of the ’251 patent.
`
`The relief sought by AGIS is barred, in whole or in part, under the doctrines of prosecution
`
`history estoppel and prosecution disclaimer due to amendments and/or statements made during
`
`prosecution related to the ’838 patent and/or in the specification and claims of the ’838 patent.
`
`The relief sought by AGIS is barred, in whole or in part, under the doctrines of prosecution
`
`history estoppel and prosecution disclaimer due to amendments and/or statements made during
`
`prosecution related to the ’829 patent and/or in the specification and claims of the ’829 patent.
`
`Fourth Defense – Prosecution Laches
`
`The ’970 patent is unenforceable due to prosecution laches.
`
`The ’055 patent is unenforceable due to prosecution laches.
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`
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`11
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 12 of 23 PageID #: 5439
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`The ’251 patent is unenforceable due to prosecution laches.
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`The ’838 patent is unenforceable due to prosecution laches.
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`The ’829 patent is unenforceable due to prosecution laches.
`
`Fifth Defense – Equitable Doctrines
`
`On information and belief, some or all of AGIS’s claims are barred by one or more of the
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`equitable doctrines of waiver, acquiescence, laches, estoppel (including without limitation
`
`equitable estoppel and prosecution history estoppel), and/or unclean hands.
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`Regarding unclean hands, in this litigation AGIS is attempting to enhance its position
`
`with respect to prior art and invalidity issues that are important to this litigation if the
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`impropriety of AGIS’s contentions is not corrected.
`
`During prosecution, AGIS repeatedly represented to the Patent Office that the post-AIA,
`
`first-to-file provisions of the U.S. patent laws apply to the ’838 patent, ’251 patent, ’055 patent,
`
`and ’829 patent. During the course of this litigation, however, AGIS contradicts what it
`
`represented to the Patent Office and contends in discovery responses that the pre-AIA, first-to-
`
`invent provisions of the U.S. patent laws govern the ’838 patent, ’251 patent, ’055 patent, and
`
`’829 patent. AGIS has refused to correct those discovery responses. The pre-AIA, first-to-
`
`invent provisions would provide AGIS with the ability to swear behind certain prior art by
`
`establishing an invention date prior to the earliest-filed application in the common priority chain
`
`of the ’838 patent, ’251 patent, ’055 patent, and ’829 patent. Any such swear behind is not
`
`available to AGIS under the post-AIA, first-to-file provisions of the patent laws. Thus, as
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`explained further below, AGIS’s contradictory contentions in this litigation enhance AGIS’s
`
`position regarding prior art and invalidity issues that bear on this case.
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`
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`12
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 13 of 23 PageID #: 5440
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`Priority Claims
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`The ’838 patent issued from U.S. Application No. 14/529,978 (the “’978 Application”).
`
`The ’978 Application was filed on October 31, 2014. The ’978 Application claimed the benefit
`
`of priority, through a chain of applications, of U.S. Application No. 10/711,490 (the “’490
`
`Application”), which was filed on September 21, 2004, and later issued as U.S. Patent No.
`
`7,031,728 (the “’728 patent”).
`
`The ’251 patent issued from U.S. Application No. 14/633,804 (the “’804 Application”).
`
`The ’804 Application was filed on February 27, 2015. The ’804 Application claimed the benefit
`
`of priority of the ’978 Application and also claimed the benefit of priority, through a chain of
`
`applications, of the ’490 Application.
`
`The ’829 patent issued from U.S. Application No. 14/633,764 (the “’764 Application”).
`
`The ’764 Application was filed on February 27, 2015. The ’764 Application claimed the benefit
`
`of priority of the ’978 Application and also claimed the benefit of priority, through a chain of
`
`applications, of the ’490 Application.
`
`The ’055 patent issued from U.S. Application No. 14/695,233 (the “’233 Application”).
`
`The ’233 Application was filed on April 24, 2015. The ’233 Application claimed the benefit of
`
`priority of the ’978 Application and also claimed the benefit of priority, through a chain of
`
`applications, of the ’490 Application.
`
`Prosecution of the ’978 Application Leading to Issuance of the ’838 Patent
`
`During prosecution of the ’978 Application, the applicant submitted a corrected
`
`application data sheet (the “June 8 Corrected ADS”) on June 8, 2015. The June 8 Corrected
`
`ADS claimed that the ’978 Application was subject to the pre-AIA, first-to-invent provisions of
`
`the patent laws. In particular, the June 8 Corrected ADS stated that the ’978 Application did not
`
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`13
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 14 of 23 PageID #: 5441
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`(1) claim priority to or the benefit of an application filed before March 16, 2013 and (2) also
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`contain, or contained at any time, a claim to a claimed invention that has an effective filing date
`
`on or after March 16, 2013. The June 8 Corrected ADS was signed by prosecuting attorney
`
`Daniel J. Burns.
`
`On August 19, 2015, the Patent Office issued a final rejection (the “August 19
`
`Rejection”) of the ’978 Application. The August 19 Rejection included, among other rejections,
`
`a rejection under 35 U.S.C. § 112 for claiming “subject matter which was not described in the
`
`specification in such a way as to reasonably convey to one skilled in the relevant art that the
`
`inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed,
`
`had possession of the claimed invention.” The Examiner explained that “[u]pon further review
`
`of the Applicant’s original specification of file, [certain claim limitations] were not mentioned,
`
`inconsistent, and/or not clearly described so as to be readily understood by one of ordinary skill
`
`in the art.” As a result, the Examiner explained, “the introduction of the newly amended
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`limitations that were not supported and/or clearly described by the specification raises the issue
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`of new matter.”
`
`The applicant submitted a second corrected application data sheet (the “October 30
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`Corrected ADS”) on October 30, 2015 in the ’978 Application. The October 30 Corrected ADS
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`claimed that the ’978 Application was subject to the post-AIA, first-to-file provisions of the
`
`patent laws. In particular, the October 30 Corrected ADS stated that the ’978 Application did (1)
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`claim priority to or the benefit of an application filed before March 16, 2013 and (2) also contain,
`
`or contained at any time, a claim to a claimed invention that has an effective filing date on or
`
`after March 16, 2013. The October 30 Corrected ADS was signed by Mr. Burns.
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 15 of 23 PageID #: 5442
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`The applicant submitted a reply to the August 19 Rejection on December 18, 2015. The
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`Patent Office then issued a non-final rejection of the ’978 Application on February 2, 2016 (the
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`“February 2 Rejection”), which stated that the ’978 Application was “being examined under the
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`pre-AIA first to invent provisions” and included rejections under “pre-AIA 35 U.S.C. 103(a).”
`
`The applicant submitted a reply (the “April 25 Reply”) to the February 2 Rejection on
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`April 25, 2016. In the April 25 Reply, the applicant “respectfully note[d] that the Corrected
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`Application Data Sheet filed on October 30, 2015, indicates that the ‘application (1) claims
`
`priority to or the benefit of an application filed before March 16, 2013 and (2) also contains, or
`
`contained at any time, a claim to a claimed invention that has an effective filing date on or after
`
`march 16, 2013.’” The applicant thus stated that “it is understood that the present application
`
`will be examined under the post-AIA, first-to-file provisions of the patent laws.” The April 25
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`Reply was signed by Mr. Burns.
`
`The Patent Office issued a final rejection of the ’978 Application on August 4, 2016 (the
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`“August 4 Rejection”). The applicant submitted a reply (the “August 12 Reply”) to the August 4
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`Rejection on August 12, 2016. In the August 12 Reply, the applicant canceled all pending
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`claims and added eighty-four new claims, which eventually issued as the claims of the ’838
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`patent. The August 12 Reply was signed by Mr. Burns.
`
`Prosecution of the ’804 Application Leading to Issuance of the ’251 Patent
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`During prosecution of the ’804 Application, the applicant submitted a reply to an office
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`action on November 13, 2015 (the “November 13 Reply”). In the November 13 Reply, the
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`applicant included a section titled “Applicability of Post-AIA Provisions of the Patent Laws to
`
`the Present Application.” In that section, the applicant noted that the ’804 Application “claims
`
`the benefit of [the ’978 Application], which contains or contained a claim having an effective
`
`
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`15
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 16 of 23 PageID #: 5443
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`filing date on or after March 16, 2013.” The applicant thus stated that “it is understood that the
`
`present application will be examined under the post-AIA, first-to-file provisions of the patent
`
`laws.” The November 13 Reply was signed by Mr. Burns.
`
`The applicant submitted another office action reply in the ’804 Application on January
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`26, 2016 (the “January 26 Reply”). In the January 26 Reply, the applicant again included a
`
`section titled “Applicability of Post-AIA Provisions of the Patent Laws to the Present
`
`Application.” In that section, the applicant indicated that “[f]or the reasons stated in the
`
`[November 13 Reply], it is understood that the present application will be examined under the
`
`post-AIA, first-to-file provisions of the patent laws.” The January 26 Reply was signed by Mr.
`
`Burns.
`
`The applicant submitted another office action reply in the ’804 Application on June 3,
`
`2016 (the “June 3 Reply”). In the June 3 Reply, the applicant again included a section titled
`
`“Applicability of Post-AIA Provisions of the Patent Laws to the Present Application.” In that
`
`section, the applicant indicated that “[f]or the reasons stated in the [November 13 Reply], it is
`
`understood that the present application will be examined under the post-AIA, first-to-file
`
`provisions of the patent laws.” The June 3 Reply was signed by Mr. Burns.
`
`Prosecution of the ’233 Application Leading to Issuance of the ’055 Patent
`
`During prosecution of the ’233 Application, the applicant submitted a reply to an office
`
`Action on October 30, 2015 (the “October 30 Reply”). In the October 30 Reply, the applicant
`
`included a section titled “Applicability of Post-AIA Provisions of the Patent Laws to the Present
`
`Application.” In that section, the applicant noted that the ’233 Application “claims the benefit of
`
`[the ’978 Application], which contains or contained a claim having an effective filing date on or
`
`after March 16, 2013.” The applicant thus stated that “it is understood that the present
`
`
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`16
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`Case 2:17-cv-00513-JRG Document 148 Filed 06/15/18 Page 17 of 23 PageID #: 5444
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`application will be examined under the post-AIA, first-to-file provisions of the patent laws.” The
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`October 30 Reply was signed by Mr. Burns.
`
`The applicant submitted another office action reply in the ’233 Application on February
`
`26, 2016 (the “February 26 Reply”). In the February 26 Reply, the applicant included a section
`
`titled “Applicability of Post-AIA Provisions of the Patent Laws to the Present Application.” In
`
`that section, the applicant indicated that “[f]or the reasons stated in the [October 30 Reply], it is
`
`understood that the present application will be examined under the post-AIA, first-to-file
`
`provisions of the patent laws.” The February 26 Reply was signed by Mr. Burns.
`
`The applicant submitted another office action reply in the ’233 Application on May 31,
`
`2016 (the “May 31 Reply”). In the May 31 Reply, the applicant again included a section titled
`
`“Applicability of Post-AIA Provisions of the Patent Laws to the Present Application.” In that
`
`section, the applicant indicated that “[f]or the reasons stated in the [October 30 Reply], it is
`
`understood that the present application will be examined under the post-AIA, first-to-file
`
`provisions of the patent laws.” The May 31 Reply was signed by Mr. Burns.
`
`Prosecution of the ’764 Application Leading to Issuance of the ’829 Patent
`
`During prosecution of the ’764 Application, the applicant submitted a corrected
`
`application data sheet (the “October 7 Corrected ADS”) on October 7, 2015. The October 7
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`Corrected ADS claimed that the ’764 Application was subject to the post-AIA, first-to-file
`
`provisions of the patent laws. In particular, the October 7 Corrected ADS stated that the ’764
`
`Application did (1) claim priority to or the benefit of an application filed before March 16, 2013
`
`and (2) also contain, or contained at any time, a claim to a claimed invention that has an effective
`
`filing date on or after March 16, 2013. The October 7 Corrected ADS was signed by Mr. Burns.
`
`
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`17
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`