Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 1 of 9 PageID #: 14317
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC. ET AL.,
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`Defendants.
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`APPLE, INC.,
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`Defendant.
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`Case No. 2:17-CV-0513-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT OF NO INVALIDITY OVER THE FBCB2 SYSTEM
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`Pursuant to Fed. R. Civ. P. 56, L.R. CV-56, and the Court’s Docket Control Order of
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`October 29, 2018 (Dkt. 217), Plaintiff AGIS Software Development LLC (“AGIS”) respectfully
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`moves the Court for partial summary judgment of no invalidity over the FBCB2 system with
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`respect to U.S. Patent Nos. 9,408,055 (“the ’055 patent”), 9,445,251 (“the ’251 patent”),
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`9,749,829 (“the ’829 patent”), and 9,467,838 (“the ’838 patent”) (collectively, the “Location
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`Patents”). The record contains no evidence that the FBCB2 system meets each and every
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`limitation of the Patents-in-Suit. AGIS respectfully submits as follows:
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`I.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1. AGIS asserts, in part, the Location Patents against Apple in this case. AGIS Software
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`Development LLC v. Apple Inc., 2:17-cv-00516, Dkts. 32-B through 32-E.
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 2 of 9 PageID #: 14318
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`2.
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`Apple contends that the FBCB2 system is prior art to the Location Patents. Dkts.
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`233-2, 233-3.
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`3.
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`Apple alleges that the Location Patents are anticipated and rendered obvious by
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`the FBCB2 system. Dkts. 233-2, 233-3.
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`4.
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`Apple relies solely on the expert testimony of Dr. Neil Siegel for its FBCB2
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`system-based contentions. Dkt. 233-4.
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`5.
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`AGIS filed two motions to strike the Siegel Report on December 14, 2018. See
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`Dkts. 233, 234.
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`II.
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`STATEMENT OF THE ISSUE TO BE DECIDED BY THE COURT
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`Whether AGIS is entitled to judgment as a matter of law that the asserted claims of the
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`Location Patents are not invalid over the FBCB2 system, where the record contains no evidence
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`that the alleged prior art references meet each and every limitation of the asserted claims of the
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`Location Patents.
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`III. LEGAL STANDARD
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`A.
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`Prior Art
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`There is a presumption that a patent is valid. Ruiz v. A.B. Chance Co., 234 F.3d 654, 662
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`(Fed. Cir. 2000). Under 35 U.S.C. § 102(a), a person shall be entitled to a patent unless
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`(1) the claimed invention was patented, described in a printed publication, or in
`public use, on sale, or otherwise available to the public before the effective filing
`date of the claimed invention; or (2) the claimed invention was described in a
`patent issued under section 151, or in an application for patent published or
`deemed published under section 122(b), in which the patent or application, as the
`case may be, names another inventor and was effectively filed before the effective
`filing date of the claimed invention.”
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`35 U.S.C. § 102(a).
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`An anticipating prior art reference “must disclose each and every limitation of the
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`claimed invention, must be enabling, and must describe the claimed invention sufficiently
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 3 of 9 PageID #: 14319
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`to have placed it in possession of a person of ordinary skill in the field of invention.”
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`Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000); Finisar Corp. v.
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`DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (“To anticipate a claim, a
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`single prior art reference must expressly or inherently disclose each claim limitation.”).
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`Under 35 U.S.C. § 103, a patent is invalid for obviousness if “the differences between the
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`claimed invention and the prior art are such that the claimed invention as a whole would have
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`been obvious before the effective filing date of the claimed invention to a person having ordinary
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`skill in the art to which the claimed invention pertains.” Obviousness is a legal question that is
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`assessed according to the following underlying inquiries: “(1) the scope and content of the prior
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`art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and
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`the prior art; and (4) secondary evidence of nonobviousness.” Ivera Med. Corp. v. Hospira, Inc.,
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`801 F.3d 1336, 1344 (Fed. Cir. 2015).
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`B.
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`Summary Judgment
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`Summary judgment should be granted “if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
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`Fed. R. Civ. P. 56(a). Summary judgment is proper when there is no genuine dispute of material
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`fact, Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986), viewing any evidence in the light most
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`favorable to the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Rule
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`56 of the Federal Rules of Civil Procedure “mandates the entry of summary judgment, after
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`adequate time for discovery and upon motion, against a party who fails to make a showing
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`sufficient to establish the existence of an element essential to that party’s case, and on which that
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`party will bear the burden of proof at trial.” Celotex Corp., 477 U.S. at 322.
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 4 of 9 PageID #: 14320
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`IV. ARGUMENT
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`No genuine dispute of material fact exists as to whether the FBCB2 system fails to meet
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`each and every limitation of the Location Patents. Thus, even viewing the evidentiary record in
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`the light most favorable to Apple, the Court should find that Apple has not established that the
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`FBCB2 system anticipates or renders obvious the Location Patents.
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`A.
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`The Evidentiary Record Fails to Show that the FBCB2 System
`Discloses the Server-Based Limitations of the Location Patents
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`On December 14, 2018, AGIS filed a motion to strike portions of the Siegel Report
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`related to a new invalidity theory based on “dynamically electing servers.” Dkt. 233. In
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`summary, the asserted claims of the Location Patents each include one or more server-based
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`limitations. Dkt. 233 at 1-2. The Siegel Report advances a single, albeit new and previously
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`undisclosed, invalidity theory involving “dynamically electing servers” with respect to the
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`server-based limitations in support of Apple’s anticipation and obviousness contentions. Dkt.
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`233 at 1-2. Should the Court grant AGIS’s December 14, 2018 motion to strike the portions of
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`the Siegel Report relating to “dynamically electing servers” as improperly based on a new,
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`previously-undisclosed invalidity theory, the record would contain no evidence that the FBCB2
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`system meets each and every limitation (i.e., the server-based limitations) of the Location
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`Patents. Dkt. 233 at 4-6. AGIS respectfully submits that it is entitled to partial summary
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`judgment that the Patents-in-Suit are not invalid over the FBCB2 system.
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`B.
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`The Evidentiary Record Fails to Show that the FBCB2 System-
`based Combinations Disclose or Suggest the Asserted Claims of the
`Location Patents
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`On December 14, 2018, AGIS filed a motion to strike the entirety of the Siegel Report
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`related to new obviousness combinations based on the FBCB2 system in view of U.S. Patent
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`Nos. 6,212,559 (“the ’559 patent”); 5,672,840 (“the ’840 patent”); 6,904,280 (“the ’280 patent”);
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 5 of 9 PageID #: 14321
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`and/or 7,278,023 (“the ’023 patent”) (collectively, the “Siegel Patents”). Dkt. 234. In summary,
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`the asserted claims of the Location Patents each include one or more limitations for which the
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`Siegel Report alleges, in the first instance for this case, non-elected obviousness combinations
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`based on the FBCB2 system in view of U.S. Patent Nos. 6,212,559; 5,672,840; 6,904,280; and
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`7,278,023. Dkt. 234 at 1-3. Apple never identified the Siegel Patents as anticipatory or
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`obviousness-type prior art references in its amended invalidity contentions, and failed to provide
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`any citations or evidence in support of its new invalidity theories as required by P.R. 3-3. Dkt.
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`234 at 1-3. Apple did not elect any of the Siegel Patents in its final election of prior art
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`references. Dkt. 234 at 1-3. In fact, Apple specifically identified a combination based on the
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`FBCB2 system with U.S. Patent Application No. 2002/0115453 (“Poulin”) or U.S. Patent No.
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`7,353,034 (“Haney”). Dkt. 234 at 4-6. The Siegel Report departs from Apple’s representations
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`and presented new, undisclosed combinations based on the FBCB2 system and the Siegel
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`Patents. Dkt. 234 at 4-6. In one example, the Siegel Report combines the FBCB2 system with
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`the ’559 patent filed in 1994, which pre-dates the FBCB2 project and which Siegel admits
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`describes a separate and distinct project, the FAAD C2I system. Dkt. 234 at 4-6.
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`Should the Court grant AGIS’s December 14, 2018 motion to strike the Siegel Report in
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`its entirety for alleging non-elected obviousness combinations based on the FBCB2 system and
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`the Siegel Patents, the record would contain no evidence that the FBCB2 system meets each and
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`every limitation (i.e., the server-based limitations) of the Location Patents. Dkt. 234 at 5. AGIS
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`respectfully submits that it is entitled to partial summary judgment that the Patents-in-Suit are
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`not invalid over the FBCB2 system.
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`Like the case Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., where
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`the Federal Circuit affirmed a finding of no invalidity based on the alleged prior art that failed to
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 6 of 9 PageID #: 14322
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`disclose key aspects of the invention; the facts here show that Apple has failed to demonstrate
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`that each of the prior art references meets all the limitations of the Patents-in-Suit. 725 F.3d
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`1341, 1351 (Fed. Cir. 2013). In Cheese Systems, the Federal Circuit found that “[e]ven
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`construing ambiguities in CSI’s favor,” they could not hold that the prior art meets each and
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`every limitation of the patent. Id. As a result, “[w]ithout a clear and unambiguous teaching, a
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`jury could only speculate, hardly a compelling case for anticipation.” Id. Like Cheese Systems,
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`the alleged prior art references fail to meet each and every limitation of the Patents-in-Suit
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`because they do not meet the limitations. Accordingly, there is no genuine dispute of material
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`fact whether the references fail to anticipate the Patents-in-Suit.
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`Apple bears the burden of demonstrating invalidity, and has presented no evidence that
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`the FBCB2 system discloses or renders obvious each and every limitation of the asserted claims
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`of the Location Patents. Accordingly, should the Court grant either of AGIS’s motions to strike
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`the Siegel Report (Dkt. 233, 234), AGIS is entitled to partial summary judgment of no invalidity
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`of the Location Patents over the FBCB2 system.
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`V.
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`CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court grant AGIS’s
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`motion for partial summary judgment of no invalidity of the Location Patents over the FBCB2
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`system. AGIS further requests that the Court preclude Apple from raising the FBCB2 system
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`and any evidence or testimony associated with the FBCB2 system, at trial.
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`Dated: December 14, 2018
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`Respectfully submitted,
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`BROWN RUDNICK LLP
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` /s/ Alfred R. Fabricant
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`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 7 of 9 PageID #: 14323
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`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 8 of 9 PageID #: 14324
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`Samuel F. Baxter
`Texas Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:17-cv-00513-JRG Document 236 Filed 12/14/18 Page 9 of 9 PageID #: 14325
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on December 14, 2018, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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` /s/ Alfred R. Fabricant
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` Alfred R. Fabricant
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