Plaintiff,
`
`v.
`
`
`HUAWEI DEVICE USA INC., ET AL.,
`
`
`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 1 of 29 PageID #: 11010
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`
`Defendants.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No. 2:17-cv-513-JRG
`§
`(LEAD CASE)
`§
`
`§
`
`JURY TRIAL DEMANDED
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT, LLC’S
`REPLY CLAIM CONSTRUCTION BRIEF
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 2 of 29 PageID #: 11011
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`Page No(s).
`
`ARGUMENT ...................................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`“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]” (Claim 1 of the ’970 Patent).................................................. 1
`
`“[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 Patent Claim 1) ......................... 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 Patent, Claim 1) ........................................... 5
`
`“means for periodically resending said forced message alert to said
`recipient PDA/cell phones that have not automatically acknowledged
`the forced message alert” (’970 Patent, Claim 1) ................................................... 6
`
`Claim 54 of the ’838 Patent, Claims 24, 29, and 31 of the ’251 Patent,
`Claims 28, 32, 33, 34, and 36 of the ’055 Patent, and Claim 68 of the
`’829 Patent – Claim Terms That Do Not Recite “Means” Language ..................... 7
`
`1.
`
`2.
`
`3.
`
`The Claims Are Not Governed by 35 U.S.C. § 112(6) ............................... 8
`
`AGIS’s Expert Does Not “Fill In” Missing Structure ................................ 9
`
`Defendants Admit That the Claims Contain Sufficient Structure in
`the Form of Algorithms ............................................................................ 10
`
`“a forced message alert software application program” (’970 Patent,
`Claims 1, 6) ........................................................................................................... 10
`
`“manual response” (‘970 Patent, Claims 1, 6) ...................................................... 11
`
`“the repeating voice alert” (’970 Patent, Claim 6) ................................................ 12
`
`“group” (’838 Patent, Claims 1, 54, 55, 84; ’251 Patent, Claims 1, 24;
`’829 Patent, Claims 1, 34, 35, 68)......................................................................... 13
`
`1.
`
`A “Group” Dos Not Exclude Groups of Two ........................................... 13
`
`i
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 3 of 29 PageID #: 11012
`
`2.
`
`A “Group” Does not Require the Superfluous Limitations
`“Associated Together Without Having To Pre-Enter Data Into A
`Web Or Identify Other Users By Name, E-Mail Addresses Or
`Phone Numbers” ....................................................................................... 15
`
`J.
`
`K.
`
`L.
`
`M.
`
`N.
`
`O.
`
`“receiving a message from a second device” (’251 Patent, Claims 1, 24) ........... 18
`
`“an identifier corresponding to the group” (’838 Patent, Claims 1, 54,
`55, and 84) ............................................................................................................ 19
`
`“database of entities” (’838 Patent, Claim 23; ’251 Patent, Claim 14) ................ 20
`
`“Short Message Service (SMS) messages” (’055 Patent, Claims 1, 54) .............. 20
`
`“the other symbol” (’055 Patent, Claims 2, 42) .................................................... 21
`
`“User selection of the sub-net” (’055 Patent, Claims 7, 34) ................................. 22
`
`II.
`
`CONCLUSION ................................................................................................................. 22
`
`ii
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 4 of 29 PageID #: 11013
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Apple Inc. v. AGIS Software Development, LLC,
`Case No. IPR 2018-00818, (P.T.A.B., March 22, 2018) .........................................................21
`
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)..............................................................................................3, 6
`
`Augme Techs., Inc. v. Yahoo! Inc.,
`755 F.3d 1326 (Fed. Cir. 2014)..................................................................................................3
`
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
`262 F.3d 1258 (Fed. Cir. 2001)................................................................................................14
`
`C.F. Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007)................................................................................................17
`
`Chicago Board Options Exchange, Inc. v. International Securities Exchange,
`LLC,
`748 F.3d 1134 (Fed. Cir. 2014)..........................................................................................3, 6, 7
`
`Cole v. Kimberly-Clark Corp.,
`102 F.3d 524 (Fed. Cir. 1996)....................................................................................................8
`
`Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc. (d/b/a The Home
`Depot),
`412 F.3d 1291 (Fed. Cir. 2005)..................................................................................................3
`
`Gemalto S.A. v. HTC Corp.,
`No. 6:10-CV-561 LED-JDL, 2012 WL 2505745 (E.D. Tex. June 28, 2012) ..................8, 9, 10
`
`Nobelbiz, Inc. v. Glob. Connect, L.L.C.,
`876 F.3d 1326 (Fed. Cir. 2017)................................................................................................21
`
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016)..................................................................................................19
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)................................................................................................18
`
`Spectra-Physics, Inc. v. Coherent, Inc.,
`827 F.2d 1524, 3 USPQ2d 1737 (Fed. Cir. 1987) ...................................................................20
`
`Williamson v. Citrix Online LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..................................................................................................8
`
`iii
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 5 of 29 PageID #: 11014
`
`Statutes
`
`35 U.S.C. § 112(6) ................................................................................................................. passim
`
`35 U.S.C. § 112(b) ...............................................................................................................1, 4, 5, 6
`
`Other Authorities
`
`Rule 11 .............................................................................................................................................8
`
`
`
`iv
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 6 of 29 PageID #: 11015
`
`Pursuant to P.R. 4-5(c) and the Court’s Docket Control Order (Dkt. 183), Plaintiff AGIS
`
`Software Development, LLC (“AGIS”) hereby submits its Reply Claim Construction Brief.1
`
`I.
`
`ARGUMENT
`
`A.
`
`“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]”
`(Claim 1 of the ’970 Patent)
`
`AGIS’s Proposed
`Construction
`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: Algorithm set
`forth in Fig 2, 3A, 3B.
`7:8-63.
`
`Defendants’ Proposed Construction
`
`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.
`
`As a preliminary matter, Defendants have no explanation for arguing to this Court that
`
`these apparatus claim terms are indefinite when they have already taken a different position in
`
`the PTAB. Defendants argue in a footnote that the differing claim construction standards applied
`
`in this Court and the PTAB compelled it to take inconsistent positions, see Dkt. 175 at 3, n.3, but
`
`Defendants offer no support for the premise that differing claim construction standards affect the
`
`1 AGIS does not address “a data transmission means that facilitates the transmission of electronic files between said
`PDA/cell phones in different locations” (Claim 1 of the ’970 Patent), “ 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 Patent, Claim 1), or “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 Patent,
`Claim 1). Defendants have agreed to AGIS’s constructions that these terms are not indefinite. See Dkt. 175 at n.10.
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 7 of 29 PageID #: 11016
`
`analysis of finding sufficient corresponding structure in either venue. AGIS is aware of none.
`
`First, regarding the function, Defendants ignore the plain English meaning of the term.
`
`As set forth in section B below, the term “said forced message alert software packet containing a
`
`list of possible required responses” is separated from the “means for attaching” by a comma, and
`
`is thus a different structural limitation. The entirety of the limitation in question is as follows:
`
`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 and 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
`
`(Dkt. 165-3 at Claim 1, “’970 Patent”) (emphasis added). The “forced message alert software
`
`packet” is claimed as a packet that contains a list, and requires a response. Defendants point to
`
`nothing in the specification that would support their arbitrary division of this term. Accordingly,
`
`the term “said forced message alert software packet containing a list of possible required
`
`responses” should not be construed as part of the function of this means, but instead should be
`
`construed as a separate structural limitation as set forth below.
`
`Second, regarding the algorithm itself, Defendants resort to a word-search for the term
`
`“attach.” See Dkt. 175 at 17 (“indeed no variation of the word ‘attach’ even appears in the
`
`specification”). Defendants cite no case-law to support such an onerous word-search
`
`requirement. Moreover, Defendants ignore the remainder of the term which further clarifies the
`
`function as “creating” the alert and gives context to the linked algorithm. (Other than a single
`
`quote to the claim language, Defendants do not address “creating.”)
`
`Regarding the sufficiency of the algorithm, AGIS and its expert assert that the flowchart
`
`in Figure 3A is the algorithm. Dkt. 165 at 8 (“the algorithm in Figure 3A of the specification,
`
`2
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 8 of 29 PageID #: 11017
`
`which details the operation of attaching a forced message alert packet to a voice or text
`
`message.”). Accordingly, Defendants are incorrect that AGIS’s position is merely that “a person
`
`of ordinary skill in the art would have known how to implement an algorithm for the claimed
`
`function.” Dkt. 175 at 17. Dr. Carbonell also establishes that each individual step of the
`
`algorithm could be implemented routinely as code, which does not run afoul of any of the cited
`
`cases because Dr. Carbonell states that the algorithm itself is disclosed. Aristocrat Techs.
`
`Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008) (“It is certainly true
`
`that the sufficiency of the disclosure of algorithmic structure must be judged in light of what one
`
`of ordinary skill in the art would understand the disclosure to impart.”). All of the cases cited by
`
`Defendants are cases where no algorithm was found and thus are inapposite. For example, in
`
`Augme Techs., Inc. v. Yahoo! Inc., the black box found in the patent “merely explains that [c]ode
`
`assembler instructions” are executed “to assemble a second code module.” 755 F.3d 1326, 1338
`
`(Fed. Cir. 2014). (Quotations omitted.) In Aristocrat, the patent merely set forth “mathematical
`
`equation[s],” not a series of steps for a computer program. Aristocrat Techs. Australia Pty Ltd.,
`
`521 F.3d at 1335. Finally, Default Proof Credit Card did not involve software or algorithms.
`
`Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc. (d/b/a The Home Depot), 412
`
`F.3d 1291, 1302 (Fed. Cir. 2005).
`
`AGIS and its expert have explained the sufficiency of the algorithm set forth in the
`
`specification, and Defendants have not shown that this structure is insufficient, a burden
`
`Defendants must carry by clear and convincing evidence. See, e.g., Chicago Board Options
`
`Exchange, Inc. v. International Securities Exchange, LLC, 748 F.3d 1134, 1141 (Fed. Cir. 2014)
`
`(“We must also remember that a challenge to a claim containing a means-plus-function
`
`limitation as lacking structural support requires a finding, by clear and convincing evidence, that
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 9 of 29 PageID #: 11018
`
`the specification lacks disclosure of structure sufficient to be understood by one skilled in the art
`
`as being adequate to perform the recited function.”)
`
`Accordingly, AGIS respectfully requests that the Court adopt AGIS’s construction
`
`including the corresponding structure of Figure 3A.
`
`B.
`
`“[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 Patent Claim 1)
`
`AGIS’s Proposed Construction
`Plain Meaning – not Governed by
`35 U.S.C. § 112(6).
`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.
`
`Defendants’ Proposed Construction
`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.
`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.
`
`Defendants’ construction conflicts with the way one of skill in the art would understand
`
`the term in ordinary English.
`
`As explained in section A above, there is a comma before “said forced message alert
`
`software packet,” which sets that phrase, and everything after it, apart from the functional
`
`“means” language. There are no additional commas in this claim phrase. Therefore, English
`
`grammar dictates that it is the “packet containing . . . and requiring.” (emphasis added). As set
`
`forth in AGIS’s opening brief, packets are a known structure. Dkt. 165 at 9-10; 165-1 at ¶¶ 41-
`
`45. Defendants do not appear to dispute that the known structure of packets, such as those
`
`4
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 10 of 29 PageID #: 11019
`
`transmitted over the TCP/IP protocol disclosed in the specification, transmit automatic
`
`acknowledgements. Accordingly, AGIS respectfully requests that the Court adopt its proposed
`
`construction that this term is not governed by 35 U.S.C. § 112(6).
`
`C.
`
`“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 Patent, Claim 1)
`
`AGIS’s Proposed
`Construction
`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: Algorithm set
`forth in Figure 4 and 8:37-
`57.
`
`Defendants’ Proposed Construction
`
`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 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.
`
`Defendants
`
`incorrectly characterize AGIS’s position supported by
`
`its expert,
`
`Dr. Carbonell. Dr. Carbonell concludes that the flow chart elements in Figure 4 and the prose set
`
`forth in 8:37-57 discloses “provides a sufficient algorithm” for “requiring a required manual
`
`response from the response list by recipient in order to clear recipient’s response list from
`
`recipient’s cell phone display.” Dkt. 165-1 at ¶ 51. As was the case in section I.A above,
`
`Defendants have presumed that no algorithm has been found.
`
`AGIS has explained how this “means for requiring” corresponds to the algorithm
`
`described in the specification including the steps of, e.g., (1) taking control of the device’s
`
`screen, (2) displaying text or playing a voice recording and displaying a list of responses,
`
`(3) receiving input by the user of a response, (4) transmitting the response, (5) releasing control
`
`5
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 11 of 29 PageID #: 11020
`
`of the device, and (6) clearing the display. Defendants provide no case-law to suggest that this
`
`algorithm is insufficient, let alone absent. Instead, Defendants present a superficial argument
`
`without addressing each of the elements of the algorithm. These superficial arguments are not
`
`sufficient to prove invalidity by clear and convincing evidence. See, e.g., Chicago Board
`
`Options Exchange, Inc, 748 F.3d at 1141. Additionally, Defendants take issues with Dr.
`
`Carbonell’s explanation of the steps of the algorithm; however, as set forth above, Dr. Carbonell
`
`confirmed that the specification disclosed an algorithm, and therefore his analysis of the
`
`sufficiency of that algorithm is relevant. See supra I.A; see also Aristocrat., 521 F.3d at 1337
`
`(Fed. Cir. 2008). Accordingly, AGIS respectfully requests that the Court adopt AGIS’s
`
`construction including the corresponding structure of Figure 4 and 8:37-57.
`
`D.
`
`“means for periodically resending said forced message alert to said recipient
`PDA/cell phones that have not automatically acknowledged the forced
`message alert” (’970 Patent, Claim 1)
`
`AGIS’s Proposed
`Construction
`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: PDA/cell phone
`hardware including WiFi
`connectivity or a cellular
`modem. ’970 Patent at col.
`4:12-46.
`
`Defendants’ Proposed Construction
`
`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.
`
`As set forth in AGIS’s opening brief, this claim limitation does not require an algorithm
`
`because the function is carried out by known hardware and/or known hardware implementing
`
`6
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 12 of 29 PageID #: 11021
`
`known named software. Defendants do not, and cannot, dispute that known hardware
`
`implementing the TCP/IP protocol periodically resends packets until an acknowledgment is
`
`received. This capability corresponds to the “data transmission ability of the Internet” disclosed
`
`in the specification. ’970 Patent at 1:39-43. Defendants’ expert, Dr. Bartone, incorrectly
`
`concludes that TCP/IP “is different than the specialized periodic retransmissions based on a
`
`failure to acknowledge the forced message alert” because the TCP/IP is “agnostic” to the type of
`
`packet. Dkt. 175-23 at ¶ 75. However, whether TCP/IP is “agnostic” to the structure of the
`
`claimed packets does not negate the fact that TCP/IP would periodically retransmit the forced
`
`message alert packets as explained by AGIS’s expert, Dr. Carbonell. (Dkt. 165-1 at ¶¶ 62-64,
`
`“Carbonell Decl.”) Defendants’ conclusory arguments are not sufficient to prove invalidity by
`
`clear and convincing evidence. See, e.g., Chicago Board Options Exchange, Inc. , 748 F.3d at
`
`1141.
`
`Accordingly, AGIS respectfully requests that the Court adopt its construction.
`
`E.
`
`Claim 54 of the ’838 Patent, Claims 24, 29, and 31 of the ’251 Patent, Claims
`28, 32, 33, 34, and 36 of the ’055 Patent, and Claim 68 of the ’829 Patent –
`Claim Terms That Do Not Recite “Means” Language
`
`Defendants have no legitimate explanation for arguing that these apparatus claim terms
`
`invoke Section 112(6) when they have already stated to the PTAB that Section 112(6) does not
`
`apply. Defendants argue, in a footnote, that the differing claim construction standards applied in
`
`this Court and the PTAB compelled it to take inconsistent positions, see Dkt. 175 at 3, n.3, but
`
`Defendants offer no support for the premise that differing claim construction standards affect the
`
`analysis of whether Section 112(6) applies. AGIS is aware of none. Defendants also note that
`
`the PTAB has no jurisdiction to consider indefiniteness, id., but this did not compel Defendants
`
`to assert in the PTAB that Section 112(6) does not apply. Finally, Defendants argue that taking
`
`inconsistent positions before two tribunals on precisely the same issues of law and fact while
`
`7
`
`

`

`Case 2:17-cv-00513-JRG Document 186 Filed 08/20/18 Page 13 of 29 PageID #: 11022
`
`subject to Rule 11 is acceptable if one reserves the right to do so. Id. This is unsupportable.
`
`1.
`
`The Claims Are Not Governed by 35 U.S.C. § 112(6)
`
`Defendants attempt to distinguish Gemalto S.A. v. HTC Corp., No. 6:10-CV-561 LED-
`
`JDL, 2012 WL 2505745, at *23 (E.D. Tex. June 28, 2012), on the basis that the claims in this
`
`case do not use typical means-plus-function language as did the claims in Gemalto. But, this fact
`
`lends further support to AGIS’s argument that its apparatus claims do not invoke Section 112(6)
`
`because they are not presumptively means-plus-function.
`
`The Gemalto claim at issue used classic means-plus-function language by including
`
`“means for” followed by a clearly defined function: “translating from the byte codes in the
`
`compiled form to byte codes in a format suitable for interpretation by the interpreter.” Id. at *23.
`
`But, unlike a means-plus-function claim where the corresponding structure for performing the
`
`function is disclosed in the specification, the Gemalto claim included sufficient structure in the
`
`claim itself in the form of an algorithm for performing the translation function. Id. Inclusion of
`
`the corresponding structure in the claim itself takes the claim out of section 112(6). Id. (citing
`
`Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (“To invoke this statute [§ 112
`
`¶ 6], the alleged means-plus-function claim element must not recite a definite structure which
`
`performs the described function.”) (alterations in original).
`
`The apparatus claims here are not presumptively means-plus-function because they do
`
`not use “means for,” and the term “device,” which Defendants claim is a nonce term, is not
`
`followed by the name of a function. See Williamson v. Citrix Online LLC, 792 F.3d 1339, 1350
`
`(Fed. Cir. 2015) (beginning its analysis of “distributed learning control module” by noting that
`
`the entire claim term is in mean-plus-function format with the term “means” replaced by
`
`“module”). Rather, each claim is drawn to a “device” that is programmed to perform a specific
`
`algorithm detailed in the claim itself. See Carbonell Decl. at ¶ 66 (setting forth AGIS’s expert’s
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`conclusion that “when read as a whole, each of these claims recites sufficient structure to set
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`forth an algorithm and thus the claims are not governed by 112(6)”). The fact that AGIS’s
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`claims were not drafted in traditional means-plus-function terms, as were the claims in Gemalto,
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`weighs in favor, and not against, a finding that Section 112(6) does not apply.
`
`Defendants’ second argument distinguishing Gemalto is that the claim does not disclose a
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`“processor” for executing the algorithm, see Dkt. 175 at 7, but Defendants overlook that the
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`“means for translating” in Gemalto disclosed a “programmable environment” that did not
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`explicitly include a processor. Gemalto, 2012 WL 2505745, at *23. The court found that one of
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`ordinary skill in the art would understand that a “programmable environment” includes a
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`processor.
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`The same should hold true here. The claims recite a “device programmed to perform
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`operations.” (See Dkt. 165-6 at claim 54, “’838 Patent”) (emphasis added). Defendants cannot
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`deny that one of ordinary skill in the art would understand that for a device to be programmed to
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`perform operations, it would include a processor for executing the program.
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`2.
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`AGIS’s Expert Does Not “Fill In” Missing Structure
`
`Defendants’ argument that “the testimony of one of ordinary skill in the art cannot
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`supplant the total absence of structure” in the Section 112(6) analysis should be rejected because
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`it is circular: it assumes that there is a total absence of structure. See Dkt. 175 at 7-8. Dr.
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`Carbonell’s testimony did not supply a structure. Instead, he reviewed the algorithms in the
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`claims and concluded that they recite sufficient structure to take the claims out of the purview of
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`Section 112(6). See Carbonell Decl., ¶¶ 67-94. Defendants cite to no testimony of their own
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`expert to rebut this testimony.
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`Faced with unrebutted testimony, Defendants quote a portion of a single sentence out of
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`context—“one or ordinary skill in the art would have understood how to routinely program”—in
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`an attempt to show that Dr. Carbonell did not conclude that the claims disclose algorithms. See
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`Dkt. 175 at 8. Defendants do not quote the portions of Dr. Carbonell’s declaration where he
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`stated that the claims require that the steps of an algorithm be performed on the device, and that
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`one of ordinary skill would understand that the claimed steps “set forth the bounds of algorithmic
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`steps” and are sufficient structure. See, e.g., Carbonell Decl. ¶ 70. As such, Dr. Carbonell has
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`provided the relevant analysis establishing that the claims each include an algorithm.
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`3.
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`Defendants Admit That the Claims Contain Sufficient Structure in
`the Form of Algorithms
`
`Defendants argue that the apparatus claims do not fall within the Katz exception because
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`they require special programming of each of the steps of the claimed algorithm. See Dkt. 175 at
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`9. With respect to each step of the algorithms, Defendants admit that the claims identify specific
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`functionality to be implemented in the step, see id. at 13, bolstering AGIS’s argument that the
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`algorithm in the claims discloses sufficient structure under Gemalto. Accordingly, Defendants’
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`arguments simply confirm that the apparatus claims are not subject to Section 112(6) because
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`they disclose detailed algorithms.
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`F.
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`“a forced message alert software application program” (’970 Patent, Claims
`1, 6)
`
`AGIS’s Proposed Construction
`“Application software that
`allows an operator to create
`and transmit forced message
`alerts comprising a text alert
`that is displayed until cleared
`or a voice alert that repeats
`until cleared”
`
`Defendants’ Proposed Construction
`“application software that allows an operator to create and
`transmit forced message alerts, automatically transmit an
`acknowledgement of receiving them, periodically resend
`them when no acknowledgement is received, indicate on a
`display which recipient devices have acknowledged the
`forced message alert, provide a manual response list on the
`display of the recipient device, and provide an indication of
`the status and content of the manual response selected by the
`recipient devices”
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`Defendants’ proposed construction and arguments fail to provide any clarity on what the
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`key portion of this term, “a forced message alert,” actually means. Additionally, Defendants do
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`not rebut AGIS’s assertion that Defendants’ construction reads out a preferred embodiment.
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`First, Defendants’ construction fails to explain what is meant by “a forced message alert.”
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`AGIS’s construction addresses this issue by setting forth that a forced message alert is a text alert
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`that is displayed until cleared or a voice alert that repeats until cleared. Defendants’ proposal is
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`overly limiting because it refers to some of the claim language that is already in the claim, and
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`would thus render that claim language superfluous. For example, as acknowledged by
`
`Defendants, the software packet is described in other claim limitations.
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`Second, as AGIS discussed in its opening brief, the requirement to “provide an indication
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`of the . . . content of the manual response selected by the recipient devices” doe