Case 2:17-cv-00513-JRG Document 240-11 Filed 12/18/18 Page 1 of 13 PageID #: 14701
`Case 2:17-cv-00513-JRG Document 240-11 Filed 12/18/18 Page 1 of 13 PageID #: 14701
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`EXHIBIT 15
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`EXHIBIT 15
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`Case 2:17-cv-00513-JRG Document 240-11 Filed 12/18/18 Page 2 of 13 PageID #: 14702
`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 1 of 42 PageID #: 6222
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:17-cv-513-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`§§§§§§§§§§
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`AGIS SOFTWARE DEVELOPMENT, LLC,
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`v.
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`Plaintiff,
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`HUAWEI DEVICE USA INC., ET AL.,
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`Defendants.
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`DECLARATION OF DR. JAIME G. CARBONELL IN SUPPORT OF
`PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF
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`I, Jaime G. Carbonell, declare and state as follows:
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`1.
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`I am over the age of twenty-one, competent to make this declaration, and have
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`personal knowledge of the matters stated herein. I make this declaration in support of Plaintiff
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`AGIS Software Development, LLC’S’s Opening Claim Construction Brief.
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`A. Personal Qualifications
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`2. I received Bachelor of Science degrees in both Physics and Mathematics in 1975 from the
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`Massachusetts Institute of Technology. I received M.S., M.Phil., and Ph.D. degrees in Computer
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`Science from Yale University in 1976, 1977, and 1979, respectively.
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`3. I have held the position of Allen Newell Professor of Computer Science at Carnegie
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`Mellon University from 1995 to the present. I currently also hold the title of Director of the
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`Language Technologies Institute at Carnegie Mellon University. I first joined Carnegie Mellon
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`as an Assistant Professor of Computer Science in 1979. In 1987, I was appointed as a Professor
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`of Computer Science at Carnegie Mellon.
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`

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`62. A person of ordinary skill in the art would have understood that the cellular modem or
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`wireless implementing the TCP/IP protocol would be “periodically resending said forced
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`message alert to said recipient PDA/cell phones that have not automatically acknowledged the
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`forced message alert.” as per the TCP protocol.
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`63. This is due to the design of the TCP/IP which calls for re-transmission of a packet (or a
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`series of packets if their receipt has not been confirmed through an acknowledgment packet. As
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`the Stevens reference explains:
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`TCP provides a reliable transport layer. One of the ways it provides reliability is for
`each end to acknowledge the data it receives from the other end. But data segments
`and acknowledgments can get lost. TCP handles this by setting a timeout when it
`sends, and if the data isn’t acknowledged when the timeout expires, it retransmits the
`data,
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`W. Richard Stevens, TCP/IP Illustrated, Volume 1, (1994) at 297.
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`64. Accordingly a person of ordinary skill in the art would have recognized the relevant
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`structure disclosed in the specification.
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`K. 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 Not Recite “Means” Language.
`
`65. It is my understanding that Defendants have alleged that each of the apparatus claims
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`(Claim 54 of the ’838 Patent, Claims 24, 29, and 31 of the ’251 Patent, Claims 28, 32, 33, 34,
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`and 36 of the ’055 Patent, and Claim 68 of the ’829 Patent) are invalid because they are subject
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`to 35 U.S.C. §112(6) and lack sufficient corresponding structure in the form of an algorithm.
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`More specifically, my understanding from having reviewed the 4-3 chart is that Defendants have
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`divided the claims into a total of 39 phrases, based primarily on the existence of gerunds, and
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`that the Defendants then contend that each of these 39 phrases, individually, is governed by 35
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`U.S.C. §112(6). I disagree that each limitation of the claims should be construed as 112(6)
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`

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`separately. It is my opinion that each claim contains sufficient structure in the form of an
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`algorithm in the claims and is not governed by 35 U.S.C. §112(6). Furthermore, even if the
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`claims were to be divided as Defendants indicate, and even if each of these terms were to be
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`individually construed as governed by 35 U.S.C. §112(6), it is my opinion that each term
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`corresponds to sufficient structure disclosed in the specification, either in the form of hardware
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`or an algorithm.
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`a. The Claims are Not Governed by 35 U.S.C. 112(6)
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`66. I first note that none of the claims use the “means for” language. Here, none of the
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`claims expressly use the “means for” language and when read as a whole, each of these claims
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`recites sufficient structure to set forth an algorithm and thus the claims are not governed by
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`112(6).
`
`67.With respect to the ’838 Patent, independent Claim 54 recites:
`
`54. 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
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`

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`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.
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`68. I note that, this claim requires seven steps of an algorithm performed on the first device.
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`These steps include (1) “joining a communication network corresponding to a group . . .” (2)
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`“participating in the group . . .” (3) “presenting . . .” (4) “sending . . .” (5) “receiving . . .” (6)
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`“presenting . . .” and (7) “identifying user interaction with the interactive display . . .”
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`69. Furthermore, the claim sets forth additional structural requirements for the data that is
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`transmitted and displayed. For example, the claims state that the display of the first device
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`displays first and second geo-referenced maps and symbols. The specification explains how to
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`transmit data, i.e. through TCP/IP packets as I set forth in sections above. The specification also
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`explains how to superimpose symbols on a display at ’838 Patent at 7:44-62).
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`70.The claim is set forth as a sequence of steps with sufficient detail that one of ordinary
`
`skill in the art would have understood how to routinely program a device with each of the steps
`
`as set forth in the claims. More specifically, one of ordinary skill in the art would have
`
`understood several steps in sequence including presenting, sending, receiving, presenting via
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`interactive displays, and accepting input set forth the bounds of algorithmic steps. Accordingly,
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`it is my opinion that claim 54 of the ’838 Patent sets forth sufficient structure in the claim and is
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`not governed by 112(6).
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`71. Next, with respect to the ’251 Patent, independent Claim 24 recites:
`
`24. A system comprising:
`a first device programmed to perform operations comprising:
`receiving a message from a second device, wherein the message relates to joining a group;
`based on receiving the message from the second device, participating in the group, wherein
`participating in the group includes sending first location information to a server and receiving
`second location information from the server, the first location information comprising a location of
`the first device, the second location information comprising a plurality of locations of a respective
`plurality of second devices included in the group;
`presenting, via an interactive display of the first device, a first interactive, georeferenced map and a
`plurality of user-selectable symbols corresponding to the plurality of second devices, wherein the
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`

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`symbols are positioned on the first georeferenced map at respective positions corresponding to
`the locations of the second devices, and wherein the first georeferenced map includes data
`relating positions on the first georeferenced map to spatial coordinates;
`sending, from the first device to the server, a request for a second georeferenced map different from
`the first georeferenced map, wherein the request specifies a map location;
`receiving, from the server, the second georeferenced map, wherein the second georeferenced map
`includes the requested location and data relating positions on the second georeferenced map to
`spatial coordinates;
`presenting, via the interactive display of the first device, the second georeferenced map and the
`plurality of user-selectable symbols corresponding to the plurality of second devices, wherein the
`symbols are positioned on the second georeferenced map at respective positions corresponding
`to the locations of the second devices; and
`identifying user interaction with the interactive display selecting one or more of the 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,
`using an Internet Protocol to send data to the one or more second devices via the server,
`wherein the first device does not have access to respective Internet Protocol addresses of the second
`devices.
`
`72. I note that, this claim requires seven steps of an algorithm performed on the first device.
`
`These steps include 1) “receiving a message from a second device . . .” (2) “based on receiving
`
`the message from the second device, participating in the group . . .” (3) “presenting . . .” (4)
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`“sending . . .” (5) “receiving . . .” (6) “presenting . . .” and (7) “identifying user interaction with
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`the interactive display . . .”
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`73. I note that while the second limitation begins with the phrase “based on
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`receiving . . .participating,” it includes a wherein modifier that specifies that “participating”
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`includes “sending first location information to a server and receiving second information from
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`the server. . .” Thus, one of ordinary skill in the art would have understood that the function of
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`this portion of the claim involves “sending.”
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`74. Furthermore, the claim sets forth additional structural requirements for the data that is
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`transmitted and displayed. For example, the claims state that the display of the first device
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`displays a first geo-referenced map, and a plurality of user-selectable symbols corresponding to
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`the plurality of second devices, wherein the symbols are positioned on the first georeferenced
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`map at respective positions corresponding to the locations of the second devices, and wherein the
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`first georeferenced map includes data relating positions of the first georeferenced map to spatial
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`

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`Case 2:17-cv-00513-JRG Document 240-11 Filed 12/18/18 Page 7 of 13 PageID #: 14707
`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 25 of 42 PageID #: 6246
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`coordinate. The specification explains how to transmit data, i.e. through TCP/IP packets as I set
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`forth in sections above. The specification also explains how to superimpose symbols on a
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`display. See, e.g., ’838 Patent at 7:44-62.
`
`75.The claim is set forth as a sequence of steps with sufficient detail that one of ordinary
`
`skill in the art would have understood how to routinely program a device with each of the steps
`
`as set forth in the claims. More specifically, one of ordinary skill in the art would have
`
`understood that several steps in sequence, including presenting, sending, receiving, presenting,
`
`and accepting input, set forth the bounds of algorithmic steps. Accordingly, it is my opinion that
`
`claim 24 of the ’251 Patent sets forth sufficient structure in the claim and is not governed by
`
`112(6).
`
`76. Next, with respect to the ’055 Patent, independent Claim 28 recites:
`
`28. A system comprising:
`a first device programmed to perform operations comprising:
`obtaining contact information of a plurality of second devices, wherein the contact information comprises
`respective telephone numbers of the second devices;
`facilitating initiation of Internet Protocol (IP) based communication between the first device and the
`respective second devices by using the respective telephone numbers to send, from the first
`device to the second devices, respective Short Message Service (SMS) messages including a
`telephone number of the first device and information usable by the respective second device to
`send IP-based communication to the first device;
`receiving respective IP-based responses to the SMS messages, wherein the IP-based responses to the
`SMS messages include location information of the respective second devices;
`transmitting IP-based messages including a location of the first device to the respective second devices;
`presenting, via an interactive display of the first device, an interactive map and a plurality of user
`selectable symbols corresponding to the plurality of second devices, wherein the symbols are
`positioned on the map at respective positions corresponding to the respective locations of the
`second devices;
`identifying user interaction with the interactive display selecting one or more of the user-selectable
`symbols corresponding to one or more of the second devices and user interaction with the display
`specifying an action and, based thereon, sending data to the one or more second devices;
`receiving user input via user interaction with the interactive display of the first device, the user input
`specifying a location and a symbol corresponding to an entity other than the first device and the
`second devices; and
`based on the user input, adding the user-specified symbol to the interactive display at a position on the
`interactive map corresponding to the user-specified location, and transmitting the user-specified
`symbol and location to the second devices for addition of the user-specified symbol to respective
`interactive displays of the second devices at respective positions on respective interactive maps
`corresponding to the user-specified location.
`
`

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`Case 2:17-cv-00513-JRG Document 240-11 Filed 12/18/18 Page 8 of 13 PageID #: 14708
`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 26 of 42 PageID #: 6247
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`77. I note that, this claim requires nine steps of an algorithm performed on the first device.
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`These steps include (1) “obtaining contact information of a plurality of second devices . . .” (2)
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`“facilitating initiation of Internet Protocol (IP) based communication between the first device and
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`the respective second devices . . .to send” (3) “receiving . . .” (4) “transmitting . . .” (5)
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`“presenting . . .” (6) “identifying user interaction with the interactive display . . .”
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`(7) “receiving . . .” (8) “based on the user input, adding the user-specified symbol to the
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`interactive display . . .” (9) “transmitting . . .”
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`78.While the first step begins with “obtaining…,” from its context in the clause a person of
`
`ordinary skill in the art would have understood that the function of this portion of the claim
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`involves “receiving.”
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`79.While the second step begins with “facilitating initiation…” the clause also refers to “by
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`using the respective telephone numbers to send.” From this context, a person of ordinary skill in
`
`the art would have understood that the function of this portion of the claim involves “send[ing].”
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`80. Furthermore, the claim sets forth additional structural requirements for the data that is
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`transmitted, received and displayed. For example, the claim states that the “obtain[ed]…
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`information” is the respective telephone numbers of the second devices. The specification
`
`explains how to transmit data, i.e. through TCP/IP packets as I set forth in sections above. The
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`specification also explains how to superimpose symbols on a display at ’055 Patent at 7:41-58).
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`81.The claim is set forth as a sequence of steps with sufficient detail that one of ordinary
`
`skill in the art would have understood how to routinely program a smartphone or PDA device
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`with each of the steps as set forth in the claims. More specifically, one of ordinary skill in the
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`art would have understood several steps in sequence including receiving, sending, receiving,
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`sending, presenting via interactive displays, and accepting input set forth the bounds of
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`

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`algorithmic steps. Accordingly, it is my opinion that claim 28 of the ’055 Patent sets forth
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`sufficient structure in the claim and is not governed by 112(6).
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`82. Next, with respect to the ’829 Patent, independent Claim 68 recites:
`
`68. A system comprising:
`a second device programmed to perform operations comprising:
`receiving, from a first device via a first server, a request to join a group, wherein the group includes the
`first device;
`sending, to the first server, an indication of acceptance of the request, wherein the first server is
`configured to join the first device to the group based on the acceptance of the request, and
`wherein joining the first device to the group comprises authorizing the first device to repeatedly
`share device location information and repeatedly engage in remote control operations with each
`device included in the group;
`sending a first message to the first server, wherein the first message comprises data identifying the first
`device and a request for a first updated location of the first device, and wherein the first server is
`configured to send a second message to the first device based on and in response to receiving
`the first message from the second device, wherein the second message comprises a request for
`the first updated location of the first device;
`after sending the first message, receiving, from the first server, a response to the first message, the
`response including first location information comprising the first updated location of the first
`device;
`receiving, from a second server, georeferenced map data;
`presenting, via a display of the second device, a georeferenced map based on the georeferenced map
`data and a symbol corresponding to the first device, wherein the symbol is positioned on the
`georeferenced map at a first position corresponding to the first updated location of the first
`device, and wherein the georeferenced map data relate positions on the georeferenced map to
`spatial coordinates;
`after receiving the first location information and the georeferenced map data, and after presenting the
`georeferenced map and the symbol positioned on the georeferenced map at the first position
`corresponding to the first updated location of the first device, receiving second location
`information comprising a second updated location of the first device from the first server, and
`using the server-provided georeferenced map data and the second location information to
`reposition the symbol on the georeferenced map at a second position corresponding to the
`second updated location of the first device; and
`identifying user interaction with the display specifying an action and, based thereon, sending, to the first
`server, a third message related to remotely controlling the first device to perform an action,
`wherein the first server is configured to send a fourth message to the first device based on receiving the
`third message from the second device, wherein the fourth message relates to remotely controlling
`the first device to perform the action, and
`wherein the first device is configured to perform the action based on receiving the fourth message.
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`83. I note that, this claim requires eight steps of an algorithm performed on the first device.
`
`These steps include (1) “receiving . . .” (2) “sending . . .” (3) “sending . . .” (4) “after sending the
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`first message, receiving . . .” (5) “receiving . . .” (6) “presenting . . .” (7) “receiving . . .” (8)
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`“identifying user interaction with the display . . .”
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`

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`84. Furthermore, the claim sets forth additional structural requirements for the data that is
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`transmitted and displayed. For example, the claims state that the display of the second device
`
`displays a georeferenced map based on the georeferenced map data and a symbol corresponding
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`to the first device, wherein the symbol is positioned on the georeferenced map at a first position
`
`corresponding to the first updated location of the first device, and wherein the georeferenced
`
`map data relate positions on the georeferenced map to spatial coordinate. The specification
`
`explains how to transmit data, i.e. through TCP/IP packets as I set forth in sections above. The
`
`specification also explains how to superimpose symbols on a display. See, e.g., ’829 Patent at
`
`7:44-62.
`
`85. The claim is set forth as a sequence of steps with sufficient detail that one of ordinary
`
`skill in the art would have understood how to routinely program a device with each of the steps
`
`as set forth in the claims. More specifically, one of ordinary skill in the art would have
`
`understood that several steps in sequence, including combinations of sending, receiving, and
`
`displaying input, set forth the bounds of algorithmic steps. Accordingly, it is my opinion that
`
`claim 68 of the ’829 Patent sets forth sufficient structure in the claim and is not governed by
`
`112(6).
`
`86.Regarding dependent claims 29 and 31 of the ’251 Patent, which both depend from claim
`
`24, these claims recite:
`
`29. The system of claim 24, wherein the operations further comprise identifying second user interaction
`with the interactive display selecting at least one of the user-selectable symbols corresponding to
`at least one of the second devices and user interaction with the display specifying an action and,
`based thereon, initiating a phone call or phone conference with the at least one second device.
`
`31. The system of claim 24, wherein participating in the group further includes sending first status
`information to the server and receiving second status information from the server, the first status
`information comprising a battery level of the first device, a signal strength of a wireless signal of
`the first device, a status of a Global Positioning Satellite (GPS) receiver of the first device, or a
`combination thereof, the second location information comprising a plurality of battery levels of the
`respective plurality of second devices included in the group, a plurality of signal strengths of
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`

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`wireless signals of the respective plurality of second devices included in the group, a plurality of
`statuses of GPS receivers of the respective plurality of second devices included in the group, or a
`combination thereof.
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`87. Claim 29 adds to the algorithm described in Claim 24 and adds “identifying second user
`
`interaction with the interactive display.” This step is accomplished on the display screen of the
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`claimed device, which is described in the specification as including “touch screen”
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`hardware. ’251 Patent at 5:30-35.
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`88. Claim 31 adds to the algorithm described in Claim 24 including “sending” additional
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`status information. ’251 Patent at 5:30-35.
`
`89. Regarding dependent claims 31, 32, 33, 34, and 36 of the ’055 Patent, which both
`
`depend from claim 24, these claims recite
`
`31. The system of claim 28 wherein:
`the SMS messages include an Internet Protocol (IP) address of the first device; and
`the IP-based responses include respective IP addresses of the second devices.
`
`32. The system of claim 28 wherein the operations further comprise:
`transmitting location information including an updated location of the first device to the second devices
`based on displacement of the first device by at least a predetermined distance relative to a
`previous location of the first device, passage of at least a redetermined time interval since
`transmitting information including a location of the first device, or a combination of the
`displacement of the first device and the passage of time.
`
`33. The system of claim 28 wherein the operations further comprise:
`receiving second user selection of one or more of the symbols corresponding to one or more of the
`second devices; and
`receiving user input assigning the one or more second devices corresponding to the second selected one
`or more symbols to a sub-net.
`
`34. The system of claim 33 wherein the operations further comprise:
`receiving user selection of the sub-net; and
`establishing a conference among the one or more second devices of the sub-net for sharing voice, text,
`photographs, or video communications.
`
`36. The system of claim 28, wherein the operations further comprise: identifying second user interaction
`with the interactive display selecting at least one of the user-selectable symbols corresponding to
`at least one of the second devices and user interaction with the display specifying an action and,
`based thereon, initiating a phone call or phone conference with the at least one second device.
`
`90.Claim 29 adds additional limitations to the type of data that is exchanged in the algorithm
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`of the independent claim.
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`

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`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 30 of 42 PageID #: 6251
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`91.Claim 32 adds the step of “transmitting” additional location information. This step is
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`accomplished with the same transmitters as the independent claims.
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`92.Claim 33 adds the additional elements of receiving user input related to the symbols and
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`receiving user input related to assigning one or more second devices to the sub-net.
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`93. Claim 34 further adds to the algorithm of claims 28 and 33 by requiring receiving the
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`user selection of a sub-net and establishing a conference among one or more of the participants.
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`94.Claim 36 adds to the system of claim 28 and requires the additional step of identifying
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`user interaction with the interactive display. This user interaction identifies at least one of the
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`user-selectable symbols and then initiates a phone call or phone conference with the at least one
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`second device.
`
`b. Even If the Claims were Construed as Governed by 35 U.S.C. 112(6), The
`Specification Recites Sufficient Corresponding Structure
`
`95. I have analyzed each of the claim terms proposed by defendants and have grouped them
`
`according to the beginning gerund:
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`1) “receiving,”/ “obtaining”
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`(2) “presenting”
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`(3) “sending” / “transmitting,” “facilitating . . . to send,” “joining . . .
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`wherein joining . . . comprises transmitting”
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`(4) “identifying . . . user [input]/[interaction].”
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`96. To the extent any one or more of these gerunds are construed to be purely functional, the
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`actions can be accomplished by the hardware and software recited in the Patents-in-Suit. More
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`specifically, this structure includes the transmitter/receiver and touch-screen display. See, e.g.,
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`

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`Case 2:17-cv-00513-JRG Document 240-11 Filed 12/18/18 Page 13 of 13 PageID #: 14713
`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 31 of 42 PageID #: 6252
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`5:30-6:13. For example, receiving, sending, and transmitting are clearly linked to data
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`transmission protocols such as TCP/IP, SMS, and WiFi. Id. at 5:64-6:3. The specification also
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`discloses presenting, displaying, and identifying user input/interaction with the display, which
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`are linked to the structure of a display and inputs. Id. at 3:3-5; Figure 1; 5:30-6:13.
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`97. I also note that two terms of the asserted claims challenged by Defendants do not begin
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`with any of the aforementioned gerunds. These terms are: “based on the user input, adding the
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`user-specified symbol to the interactive display,” and (2) “establishing a conference among on
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`the one or more second devices of the sub-net for sharing voice, text, photographs, or video
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`communications.” Both of these terms are linked to algorithms in the specification that provide
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`sufficient structure. First, regarding the “based on user input, adding the user-specified symbol to
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`the interactive display” term, the specification sets forth an algorithm for performing this alleged
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`function. See, e.g., ’728 Patent at 4:64-5:8. One of ordinary skill in the art would readily
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`understand how to implement the algorithm from the disclosure of the specification to
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`accomplish the alleged functions. Next, regarding the “establishing” term, the specification sets
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`forth an algorithm for performing this alleged function, i.e. for establishing conference calls.
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`See, e.g., ’728 Patent at 5:21-54. One of ordinary skill in the art would readily understand how
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`to implement the algorithm from the disclosure of the specification to accomplish the alleged
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`functions using, for instance, an auto-call feature to each conference participant present in all
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`smartphone OS systems, and well known to a POSITA. Accordingly, it is my opinion that,
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`should these terms be construed as governed by 35 U.S.C. § 112(6), the specification discloses
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`sufficient corresponding structure in the form of an algorithm.
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`L. “a forced message alert software application program”
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