Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 1 of 85 PageID #: 11266
`
`Markman Presentation of Apple
`and the Huawei Defendants
`
`AGIS Software Development LLC v. Huawei Device USA Inc., Huawei
`Device Co., Ltd., Huawei Device (Donguan) Co. Ltd., and Apple Inc.
`
`United States District Court for the Eastern District of Texas, Marshall Division
`Civil Action No. 2:17-CV-513-JRG (Lead Case);
`Civil Action No. 2:17-CV-516-JRG
`
`September 13, 2018
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 2 of 85 PageID #: 11267
`
`Disputed Terms
`
`1: “Device” Terms (’838 patent, claim 54; ’251 patent, claims 24, 29, 31;
`’055 patent, claims 28, 32, 36; ’829 patent, claim 68)
`
`2: ’970 Patent Means-Plus-Function Terms (’970 patent, claim 1)
`
`3: “forced message alert software application program” (’970 patent, claims 1, 6)
`
`4: “manual response” (’970 patent, claims 1, 6)
`
`5: “the repeating voice alert” (’970 patent, claim 6)
`
`6: “group” (’838 patent, claims 1, 54; ’251 patents, claims 1, 24; ’829 patent, claims 1, 34, 35, 68)
`
`7: “receiving a message from a second device” (’251 patent, claims 1, 24)
`
`8: “an identifier corresponding to a group” (’838 patent, claims 1, 54, 55, 84)
`
`9: “database of entities” (’251 patent, claim 14)
`
`10: “user selection of sub-net” (’055 patent, claim 7)
`
`2
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 3 of 85 PageID #: 11268
`
`“Device” Terms
`
`’838 patent, claim 54; ’251 patent, claims 24, 29, 31;
`’055 patent, claims 28, 32, 36; ’829 patent, claim 68
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 4 of 85 PageID #: 11269
`The Four Ad Hoc Network Patents, Which Share A
`Common Specification, Are Directed To Functions
`Performed By Software
`
`’838 Patent
`
`’251 Patent
`
`’055 Patent
`
`’829 Patent
`
`’838 Patent, 6:6-7
`
`4
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 5 of 85 PageID #: 11270
`The “Device” Claims Claim Functions Performed By A
`“Device Programmed To Perform Operations”
`
`A system comprising:
`a first device programmed to perform operations comprising:
`joining a communication network corresponding to a group, wherein joining the communication network comprises transmitting a
`message including an identifier corresponding to the group;
`participating in the group, wherein participating in the group includes sending first location information to a first server and
`receiving second location information from the first server, the first location information comprising a location of the first device,
`the second location information comprising one or more locations of one or more respective second devices included in the
`group;
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and a first set of one or more user-
`selectable symbols corresponding to a first set of one or more of the second devices, wherein the first set of symbols are
`positioned on the first georeferenced map at respective positions corresponding to the locations of the first set of second devices,
`and wherein first georeferenced map data relate positions on the first georeferenced map to spatial coordinates;
`sending, to a second server, a request for second georeferenced map data different from the first georeferenced map data;
`receiving, from the second server, the second georeferenced map data;
`presenting, via the interactive display of the first device, a second georeferenced map and a second set of one or more user-
`selectable symbols corresponding to a second set of one or more of the second devices, wherein the second set of symbols are
`positioned on the second georeferenced map at respective positions corresponding to the locations of the second set of second
`devices, and wherein the second georeferenced map data relate positions on the second georeferenced map to spatial coordinates;
`and
`identifying user interaction with the interactive display selecting one or more of the second set of user-selectable symbols
`corresponding to one or more of the second devices and positioned on the second georeferenced map and user interaction with the
`display specifying an action and, based thereon, sending third data to the selected one or more second devices via the first server.
`
`’838 Patent, Claim 54
`
`5
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 6 of 85 PageID #: 11271
`Step 1: The Claims Do Not Recite Sufficient Structure
`For Performing Each Of The Claimed Functions
`
`A system comprising:
`a first device programmed to perform operations comprising:
`joining a communication network corresponding to a group, wherein joining the communication network comprises transmitting a
`message including an identifier corresponding to the group;
`participating in the group, wherein participating in the group includes sending first location information to a first server and
`receiving second location information from the first server, the first location information comprising a location of the first device,
`the second location information comprising one or more locations of one or more respective second devices included in the
`group;
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and a first set of one or more user-
`selectable symbols corresponding to a first set of one or more of the second devices, wherein the first set of symbols are
`positioned on the first georeferenced map at respective positions corresponding to the locations of the first set of second devices,
`and wherein first georeferenced map data relate positions on the first georeferenced map to spatial coordinates;
`sending, to a second server, a request for second georeferenced map data different from the first georeferenced map data;
`receiving, from the second server, the second georeferenced map data;
`presenting, via the interactive display of the first device, a second georeferenced map and a second set of one or more user-
`selectable symbols corresponding to a second set of one or more of the second devices, wherein the second set of symbols are
`positioned on the second georeferenced map at respective positions corresponding to the locations of the second set of second
`devices, and wherein the second georeferenced map data relate positions on the second georeferenced map to spatial coordinates;
`and
`identifying user interaction with the interactive display selecting one or more of the second set of user-selectable symbols
`corresponding to one or more of the second devices and positioned on the second georeferenced map and user interaction with the
`display specifying an action and, based thereon, sending third data to the selected one or more second devices via the first server.
`
`’838 Patent, Claim 54
`
`6
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 7 of 85 PageID #: 11272
`“Device Programmed To Perform” Is A Verbal
`Construct That Provides No Structure
`
`‘device,’ and
`‘element,’
`“Generic terms such as ‘mechanism,’
`other nonce words that
`reflect nothing more than verbal
`constructs may be used in a claim in a manner that is tantamount
`to using the word ‘means’ because they ‘typically do not connote
`sufficiently definite structure’ and therefore may invoke § 112,
`para 6.”
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1350 (Fed. Cir. 2015) (citations omitted)
`
`“The reference to ‘appropriate programming’ imposes no limitation
`whatsoever.”
`
`Aristorcrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328, 1334 (Fed. Cir. 2008)
`
`7
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 8 of 85 PageID #: 11273
`In Widevine, The Court Found Substantially Similar Claims
`To Be Governed By § 112(6)
`
`A system for managing data securely over a network, comprising:
`
`A first device that is operative to perform actions, including:
`receiving a packet;
`examining a payload portion of the packet for a predefined data type, and if the payload portion includes
`the predefined data type, selectively encrypting the payload portion; and
`communicating the selectively encrypted portions over the network in a packet; and
`
`A second device that is operative to perform actions, including:
`receiving the communicated packet;
`parsing the received packet into the payload and the non-payload portion; and
`decrypting the selectively encrypted payload portion.
`
`“The claim provides no structural context and describes each “device” by the
`functions that it performs, which means that ‘one of skill in the art would have no
`recourse but to turn to the patent’s specification to derive a structural connotation.
`Therefore, the Court is of the opinion that ‘first device’ and ‘second device’ are
`means-plus-function limitations and are therefore governed by 35 U.S.C. § 112(6)
`
`Widevine Techs. v. Verimatrix, Inc.,
`No. 2:07-cv-321, 2009 WL 3734106, at *14 (E.D. Tex. Nov. 4, 2009) (Ward, J.)
`
`8
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 9 of 85 PageID #: 11274
`The Functions Of The “Device” Claims Are Performed
`By Software
`
`Carbonell Decl. ¶ 70
`
`’838 Patent, 6:6-7
`
`9
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 10 of 85 PageID #: 11275
`“Device Programmed To Perform” Is A Verbal
`Construct That Provides No Structure
`
`“In the context of the ‘device’ claims, ‘device’ is used as a placeholder for
`any structure capable of performing the recited functions.”
`
`Declaration of Chris Bartone, Ph.D. (“Bartone Decl.”) ¶ 78
`
`Ex. 3 [The Oxford American Dictionary of Current English, 213 def.1 (1999)]
`
`Ex. 4 [Webster’s New World Dictionary of Computer Terms, 157 (8th ed. 2000)]
`
`10
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 11 of 85 PageID #: 11276
`Step 1: The Claims Themselves Recite Results,
`Not An Algorithm
`
`A system comprising:
`a first device programmed to perform operations comprising:
`joining a communication network corresponding to a group, wherein joining the communication network comprises transmitting a
`message including an identifier corresponding to the group;
`participating in the group, wherein participating in the group includes sending first location information to a first server and
`receiving second location information from the first server, the first location information comprising a location of the first device,
`the second location information comprising one or more locations of one or more respective second devices included in the
`group;
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and a first set of one or more user-
`selectable symbols corresponding to a first set of one or more of the second devices, wherein the first set of symbols are
`positioned on the first georeferenced map at respective positions corresponding to the locations of the first set of second devices,
`and wherein first georeferenced map data relate positions on the first georeferenced map to spatial coordinates;
`sending, to a second server, a request for second georeferenced map data different from the first georeferenced map data;
`receiving, from the second server, the second georeferenced map data;
`presenting, via the interactive display of the first device, a second georeferenced map and a second set of one or more user-
`selectable symbols corresponding to a second set of one or more of the second devices, wherein the second set of symbols are
`positioned on the second georeferenced map at respective positions corresponding to the locations of the second set of second
`devices, and wherein the second georeferenced map data relate positions on the second georeferenced map to spatial coordinates;
`and
`identifying user interaction with the interactive display selecting one or more of the second set of user-selectable symbols
`corresponding to one or more of the second devices and positioned on the second georeferenced map and user interaction with the
`display specifying an action and, based thereon, sending third data to the selected one or more second devices via the first server.
`
`AGIS contends that this language as a whole
`constitutes structure in the form of an algorithm
`
`’838 Patent, Claim 54
`
`11
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 12 of 85 PageID #: 11277
`In Gemalto, The Algorithm In The Claim Was Clearly
`Delineated From The Function It Performed
`
`A converter … wherein the converter comprises means for translating
`from the byte codes in the compiled form to byte codes in a format
`suitable for interpretation by the interpreter by:
`
`b.1)
`
`recording all jumps and their destinations in the original byte codes;
`
`b.2)
`
`performing a conversion operation selected from the group:
`
`b.2.1) converting specific byte codes into equivalent generic byte codes;
`
`b.2.2) modifying byte code operands from references using identifying
`strings to references using unique identifiers; and
`
`b.2.3) renumbering byte codes in the compiled form to equivalent byte codes
`in an instruction set supported by an interpreter on the integrated
`circuit card; and
`
`b.3)
`
`relinking jumps for which the destination address is affected by the
`conversion operation.
`
`“The claim language signals the end of the recited function and beginning of
`the structure of the term by the word ‘by:’ ….”
`
`Gemalto S.A. v. HTC Corp., 2012 WL 2505745, at *23 (E.D. Tex. June 28, 2012)
`
`12
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 13 of 85 PageID #: 11278
`AGIS’s Argument Eliminates The Tradeoff Required
`For Functional Claiming
`
`A system comprising:
`a first device programmed to perform operations comprising:
`joining a communication network corresponding to a group, wherein joining the
`communication network comprises transmitting a message including an
`identifier corresponding to the group;
`participating in the group, wherein participating in the group includes sending
`first location information to a first server and receiving second location
`information from the first server, the first location information comprising a
`location of the first device, the second location information comprising one or
`more locations of one or more respective second devices included in the group;
`presenting, via an interactive display of the first device, a first interactive,
`georeferenced map and a first set of one or more user-selectable symbols
`corresponding to a first set of one or more of the second devices, wherein the
`first set of symbols are positioned on the first georeferenced map at respective
`positions corresponding to the locations of the first set of second devices, and
`wherein first georeferenced map data relate positions on the first georeferenced
`map to spatial coordinates;
`sending, to a second server, a request for second georeferenced map data
`different from the first georeferenced map data;
`receiving, from the second server, the second georeferenced map data;
`presenting, via the interactive display of the first device, a second
`georeferenced map and a second set of one or more user-selectable symbols
`corresponding to a second set of one or more of the second devices, wherein
`the second set of symbols are positioned on the second georeferenced map at
`respective positions corresponding to the locations of the second set of second
`devices, and wherein the second georeferenced map data relate positions on the
`second georeferenced map to spatial coordinates; and
`identifying user interaction with the interactive display selecting one or more
`of the second set of user-selectable symbols corresponding to one or more of
`the second devices and positioned on the second georeferenced map and user
`interaction with the display specifying an action and, based thereon, sending
`third data to the selected one or more second devices via the first server.
`
`A system comprising:
`[means for]:
`joining a communication network corresponding to a group, wherein joining the
`communication network comprises transmitting a message including an
`identifier corresponding to the group;
`participating in the group, wherein participating in the group includes sending
`first location information to a first server and receiving second location
`information from the first server, the first location information comprising a
`location of the first device, the second location information comprising one or
`more locations of one or more respective second devices included in the group;
`presenting, via an interactive display of the first device, a first interactive,
`georeferenced map and a first set of one or more user-selectable symbols
`corresponding to a first set of one or more of the second devices, wherein the
`first set of symbols are positioned on the first georeferenced map at respective
`positions corresponding to the locations of the first set of second devices, and
`wherein first georeferenced map data relate positions on the first georeferenced
`map to spatial coordinates;
`sending, to a second server, a request for second georeferenced map data
`different from the first georeferenced map data;
`receiving, from the second server, the second georeferenced map data;
`presenting, via the interactive display of the first device, a second
`georeferenced map and a second set of one or more user-selectable symbols
`corresponding to a second set of one or more of the second devices, wherein
`the second set of symbols are positioned on the second georeferenced map at
`respective positions corresponding to the locations of the second set of second
`devices, and wherein the second georeferenced map data relate positions on the
`second georeferenced map to spatial coordinates; and
`identifying user interaction with the interactive display selecting one or more
`of the second set of user-selectable symbols corresponding to one or more of
`the second devices and positioned on the second georeferenced map and user
`interaction with the display specifying an action and, based thereon, sending
`third data to the selected one or more second devices via the first server.
`
`’838 Patent, Claim 54
`
`13
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 14 of 85 PageID #: 11279
`Step 1: The Claims Recite Functional Language (Results)
`Without Sufficient Structure For Performing The Functions
`
`A system comprising:
`a first device programmed to perform operations comprising:
`
`[…]
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and
`a first set of one or more user-selectable symbols corresponding to a first set of one or more of
`the second devices, wherein the first set of symbols are positioned on the first georeferenced map
`at respective positions corresponding to the locations of the first set of second devices, and
`wherein first georeferenced map data relate positions on the first georeferenced map to spatial
`coordinates; and
`
`identifying user interaction with the interactive display selecting one or more of the second set of
`user-selectable symbols corresponding to one or more of the second devices and positioned on
`the second georeferenced map and user interaction with the display specifying an action and,
`based thereon, sending third data to the selected one or more second devices via the first server.
`
`’838 Patent, Claim 54
`
`14
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 15 of 85 PageID #: 11280
`Step 1: The Specification Confirms That The Full
`Function Is Performed By An Algorithm, But The
`Claim Discloses No Such Algorithm
`
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and
`a first set of one or more user-selectable symbols corresponding to a first set of one or more of
`the second devices, wherein the first set of symbols are positioned on the first georeferenced map
`at respective positions corresponding to the locations of the first set of second devices, and
`wherein first georeferenced map data relate positions on the first georeferenced map to spatial
`coordinates; and
`
`’838 Patent, 6:63-67
`
`’838 Patent, 7:58-62
`
`15
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 16 of 85 PageID #: 11281
`
`The “Device” Claims Are Subject To § 112(f)
`
`If a claim term “fails to recite sufficiently definite structure or
`else recites function without reciting sufficient structure for
`performing that function,” the claim term is subject to 35
`U.S.C. § 112(f).
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc)
`
`16
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 17 of 85 PageID #: 11282
`AGIS’s Expert Agrees: The Claimed Functions Are
`Performed By Hardware And Software
`
`Carbonell Decl. ¶ 96
`
`17
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 18 of 85 PageID #: 11283
`Step 2: The Specification Discloses No Such
`Algorithm For Performing Each Of The Claimed
`Functions
`
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and
`a first set of one or more user-selectable symbols corresponding to a first set of one or more of
`the second devices, wherein the first set of symbols are positioned on the first georeferenced map
`at respective positions corresponding to the locations of the first set of second devices, and
`wherein first georeferenced map data relate positions on the first georeferenced map to spatial
`coordinates; and
`
`’838 Patent, 6:63-67
`
`’838 Patent, 7:58-62
`
`18
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 19 of 85 PageID #: 11284
`Step 2: The Specification Does Not Disclose Any
`Algorithmic Structure For Performing Each Function
`
`’ 251 Patent, 5:30-6:13
`
`19
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 20 of 85 PageID #: 11285
`Step 1: The Claims Recite Functional Language (Results)
`Without Sufficient Structure For Performing The Functions
`
`A system comprising:
`a first device programmed to perform operations comprising:
`
`[…]
`presenting, via the interactive display of the first device, a second georeferenced map and a
`second set of one or more user-selectable symbols corresponding to a second set of one or more
`of the second devices, wherein the second set of symbols are positioned on the second
`georeferenced map at respective positions corresponding to the locations of the second set of
`second devices, and wherein the second georeferenced map data relate positions on the second
`georeferenced map to spatial coordinates; and
`
`identifying user interaction with the interactive display selecting one or more of the second set of
`user-selectable symbols corresponding to one or more of the second devices and positioned on
`the second georeferenced map and user interaction with the display specifying an action and,
`based thereon, sending third data to the selected one or more second devices via the first server.
`
`’838 Patent, Claim 54
`
`20
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 21 of 85 PageID #: 11286
`AGIS’s Expert Agrees: The Claimed Functions Are
`Performed By Hardware And Software
`
`Carbonell Decl. ¶ 96
`
`21
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 22 of 85 PageID #: 11287
`Step 2: The Specification Does Not Disclose Any
`Algorithmic Structure For Performing Each Function
`
`This relates to how a person creates a symbol – not how the “device” or
`software identifies user interaction with the symbol specifying an action
`
`’251 Patent, 5:30-6:13
`
`22
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 23 of 85 PageID #: 11288
`Step 2: The Specification Does Not Disclose Any
`Algorithmic Structure For Performing Each Function
`
`This relates to how a person creates a
`symbol – not how the “device” or
`software identifies user interaction with
`the symbol specifying an action
`
`’251 Patent, 3:3-5
`
`23
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 24 of 85 PageID #: 11289
`
`Means-Plus-Function Terms
`
`’970 patent, claim 1
`
`24
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 25 of 85 PageID #: 11290
`
`’970 Patent Is Directed To Software
`
`’970 Patent, 2:1-6
`
`’970 Patent, 4:47-49
`
`25
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 26 of 85 PageID #: 11291
`
`’970 Patent Means-Plus-Function Limitations
`
`1.
`
`2.
`
`3.
`
`4.
`
`“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” (Parties agree § 112(f) applies)
`
`“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”
`(Parties dispute whether § 112(f) applies)
`
`“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” (Parties agree § 112(f) applies)
`
`“means for periodically resending said forced message alert to
`said recipient PDA/cell phones that have not automatically
`acknowledged the forced message alert” (Parties agree § 112(f)
`applies)
`
`26
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 27 of 85 PageID #: 11292
`
`“means for attaching …”
`
`• Parties agree term is subject to § 112(f).
`
`• Parties dispute claimed function.
`
`• Parties agree corresponding structure must be an algorithm.
`
`• Defendants: No corresponding algorithm regardless of
`function.
`
`• AGIS: “[T]he flowchart in Figure 3A is the algorithm.”
`
`AGIS Reply Br. At 2 (emphasis in original)
`
`27
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 28 of 85 PageID #: 11293
`Function Includes “said forced message alert
`software packet containing a list of possible
`required responses”
`
`’970 Patent, Claim 1 (partial)
`
`Dr. Chris Bartone: The phrase “qualifies the nature of the software
`packet itself, which will impact the manner in which the software
`packet gets attached to a voice or text message.” Bartone Decl. ¶ 35.
`
`28
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 29 of 85 PageID #: 11294
`Specification Does Not Disclose Algorithm For
`“Attaching” Regardless Of The Function
`
`• Parties agree the structure is an algorithm. AGIS Br. at 8;
`Def. Br. at 16.
`
`• Therefore, specification must disclose algorithm that
`shows:
`
`1. how to “attach[] a forced message alert software packet to a voice
`… message”; and
`
`2. how to “attach[] a forced message alert software packet to a …
`text message.”
`
`• Specification fails to show corresponding algorithm clearly
`linked to the function. Bartone Decl. ¶¶ 36-39.
`
`•
`
`“To meet the definiteness requirement, structure must be clearly linked to and
`capable of performing the function claimed by the means-plus-function limitation.”
`Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 199 (Fed. Cir.
`2005); see also In re Aoyama, 656 F.3d 1293, 1296-97 (Fed. Cir. 2011).
`
`29
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 30 of 85 PageID #: 11295
`AGIS’s Purported “Algorithm” Does Not Disclose
`Algorithm “Clearly Linked” To Claimed Function
`
`AGIS: “[T]he flowchart in Figure 3A is the algorithm.”
`
`AGIS Br. At 8; AGIS Reply Br. At 2.
`
`Sender selects forced message alert
`application software.
`
`Sender types text message or records
`voice message. Sender selects
`whether to send the text message or
`voice message to a single user, all
`users, or selected users.
`
`Sender selects or creates response
`list that is sent with text message or
`voice message.
`
`Sender sends message.
`
`Phone/PDA/PC transmits forced
`message alert.
`
`Bartone Decl. ¶¶ 43-44
`
`1
`
`2
`
`3
`
`4
`
`5
`
`No algorithm for attaching any
`software packet to a voice
`message or text message.
`
`’970 Patent, Fig. 3A
`
`30
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 31 of 85 PageID #: 11296
`Dr. Carbonell Does Not State How Specification
`Discloses Corresponding Algorithm
`
`Dr. Carbonell: “Figure 3A sets forth a flowchart that describes the creation of a
`forced message, which one of ordinary skill … would have readily understood how
`to implement.” Carbonell Decl. ¶ 31; id. ¶ 34.
`
`“[T]he first box of 3A implements user selection and text/sound entry.” Id. ¶ 35.
`
`“[T]he second box of 3A … prompts the user to identify to whom the text message or voice
`message is to be sent ….” Id. ¶ 36.
`
`“[T]he third box of 3A … prompts the user to either select a default response list or to create
`a new response list ….” Id. ¶ 37.
`
`“[T]he fourth box of 3A … prompts the user to confirm transmission of the forced message
`alert ….” Id. ¶ 38.
`
`“[T]he fifth box of 3A … the forced message alert comprising the voice message or text
`message entered and the response list are transmitted ….” Id. ¶ 39.
`
`Dr. Carbonell never explains how any purported algorithm attaches a forced
`message alert software packet to a voice message or to a text message.
`
`31
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 32 of 85 PageID #: 11297
`“means for … requiring the forced message alert
`software … to transmit an automatic acknowledgment …”
`
`Parties dispute:
`
`1. Whether § 112(f) applies; and
`
`2. Whether term is indefinite for failure to disclose
`corresponding algorithm.
`
`32
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 33 of 85 PageID #: 11298
`
`The Term Is Subject To § 112(f)
`
`The language is functional and “requir[es]” the forced message
`alert software “to transmit an automatic acknowledgement”:
`
`’970 Patent,
`Claim 1 (partial)
`
`two operations to which one of
`least
`“There are at
`Dr. Bartone:
`in the art would understand the ‘means for’
`language
`ordinary skill
`applies:
`(1) ‘attaching a forced message alert software packet to a
`voice or text message …’ and (2) ‘requiring the forced message alert
`software … to transmit an automatic acknowledgement …”
`Bartone Decl. ¶ 49
`
`33
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 34 of 85 PageID #: 11299
`Specification Confirms Claimed Language Is Function
`Performed By Forced Message Alert Software
`
`’970 Patent,
`Claim 1 (partial)
`
`Summary of the Invention:
`
`“A plurality of PCs and PDA/cell phones each having forced alert
`software installed … with the ability to: (a) allow an operator to
`create and transmit (via TCP/IP or another digital transmission
`means) a forced voice alert [and] (b) automatically transmit an
`acknowledgement of
`receipt
`from said recipient PCs and
`PDA/cell phones to the sender PCs or PDA/cell phones upon
`receipt of the forced message alert ….”
`
`’970 Patent, 2:7-20
`
`34
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 35 of 85 PageID #: 11300
`The Specification Fails To Disclose
`Corresponding Algorithm
`
`Bartone Decl. ¶ 56
`
`Finisar Corp. v. DirecTV Gr., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)
`(agreeing with district court that insufficient structure if support provides
`“nothing more than a restatement of the function, as recited in the claim.”)
`(internal quotations omitted).
`
`35
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 Filed 09/13/18 Page 36 of 85 PageID #: 11301
`AGIS’s Purported Structure Restates The Function
`And Fails To Explain How To Perform The Function
`
`Claim Language
`
`AGIS’s Purported Algorithm
`
`“means for … requiring the forced
`message alert software on said
`recipient PDA/cell phone to
`transmit an automatic
`acknowledgement to the sender
`PDA/cell phone as soon as said
`forced message alert is received
`by the recipient PDA/cell phone”
`
`The forced alert message is received
`by the recipient cell phone …. In
`response to receipt of the forced alert
`message, the recipient phone
`software prepares and sends an
`automatic acknowledgement of the
`receipt to the sender cell phone,
`integrated PDA/cell phone or PC.
`
`’970 Patent, Claim 1
`
`’970 Patent, Fig. 4 (top box); id. 2:7-35, 8:16-62
`
`“These citations all explain that the software automatically transmits,
`but they contain no explanation of how the PGP software performs
`the transmission function.”
`Function Media, LLC v. Google Inc., 708 F.3d 1310, 1318-19 (Fed. Cir. 2013)
`
`See also Finisar Corp. v. DirecTV Gr., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (agreeing
`with district court that insufficient structure if support provides “nothing more than a
`restatement of the function, as recited in the claim.”) (internal quotations omitted).
`
`36
`
`

`

`Case 2:17-cv-00513-JRG Document 200-1 F