Case 2:17-cv-00513-JRG Document 240-12 Filed 12/18/18 Page 1 of 9 PageID #: 14714
`Case 2:17-cv-00513-JRG Document 240-12 Filed 12/18/18 Page 1 of 9 PageID #: 14714
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`EXHIBIT 16
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`EXHIBIT 16
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`Case 2:17-cv-00513-JRG Document 240-12 Filed 12/18/18 Page 2 of 9 PageID #: 14715
`Case 2:17-cv-00513-JRG Document 205 Filed 10/10/18 Page 1 of 60 PageID #: 11492
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CASE NO. 2:17-CV-513-JRG
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`§§§§§§§
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`AGIS SOFTWARE DEVELOPMENT,
`LLC
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`v.
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`HUAWEI DEVICE USA INC., et al.
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`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
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`Before the Court is the Opening Claim Construction Brief (Dkt. No. 165) filed by Plaintiff
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`AGIS Software Development, LLC (“Plaintiff” or “AGIS”). Also before the Court are Defendants
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`Huawei Device USA Inc., Huawei Device Co., Ltd., Huawei Device (Dongguan) Co., Ltd.
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`(“Huawei”), HTC Corporation (“HTC”), LG Electronics Inc. (“LG”), Apple Inc. (“Apple”), and
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`ZTE (USA) Inc., and ZTE (TX), Inc.’s (“ZTE’s”) (collectively, “Defendants’”) Responsive Claim
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`Construction Brief (Dkt. No. 175) and Plaintiff’s reply (Dkt. No. 186).1,2
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`1 On August 22, 2018, the Court consolidated the following cases, Agis Software Development LLC v. LG Electronics,
`Inc., 2:17-cv-515 (the “LG case”) and Agis Software Development LLC v. ZTE Corporation et al., 2:17-cv-517 (the
`“ZTE case”), under a new lead case, Agis Software Development LLC v. HTC Corporation, 2:17-cv-514 (the “HTC
`case”). (2:17-cv-514, Dkt. No. 57.) The Court set a Markman Hearing for the HTC case on December 17, 2018.
`(Id.) In addition, on September 28, 2018, the Court unconsolidated and transferred the ZTE case to the Northern
`District of California. (2:17-cv-514, Dkt. No. 78); (2:17-cv-513, Dkt. No. 203); (2:17-cv-517, Dkt. No. 85.)
`2 All citations to docket entries refer to entries in Case No. 2:17-cv-513.
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`Table of Contents
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`I. BACKGROUND....................................................................................................................... 3
`II. LEGAL PRINCIPLES ........................................................................................................... 4
`III. AGREED TERMS................................................................................................................. 8
`IV. DISPUTED TERMS.............................................................................................................. 9
`A. “a data transmission means that facilitates the transmission of electronic files between
`said PDA/cell phones in different locations”........................................................................ 9
`B. “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, . . .”........................................................................................... 11
`C. “[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” ....................... 18
`D. “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”.................. 20
`E. “means for receiving and displaying a listing of which recipient PDA/cell phones have
`automatically acknowledged the forced message alert and which recipient PDA/cell
`phones have not automatically acknowledged the forced message alert” .......................... 23
`F. “means for periodically resending said forced message alert to said recipient PDA/cell
`phones that have not automatically acknowledged the forced message alert” ................... 25
`G. “means for receiving and displaying a listing of which recipient PDA/cell phones have
`transmitted a manual response to said forced message alert and details the response
`from each recipient PDA/cell phone that responded” ........................................................ 28
`H. 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................................... 30
`I. “a forced message alert software application program”....................................................... 36
`J. “manual response”................................................................................................................ 39
`K. “the repeating voice alert” .................................................................................................. 42
`L. “group” ................................................................................................................................ 44
`M. “receiving a message from a second device”..................................................................... 49
`N. “an identifier corresponding to the group” ......................................................................... 53
`O. “database of entities” .......................................................................................................... 54
`P. “Short Message Service (SMS) messages” ......................................................................... 56
`Q. “the other symbol” .............................................................................................................. 57
`R. “user selection of the sub-net” ............................................................................................ 57
`V. CONCLUSION...................................................................................................................... 59
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`are not necessarily invalid for a lack of antecedent basis”). Defendants have argued that the claim
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`is unclear as to the meaning of “voice alert,” but the meaning is reasonably clear in light of the
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`recital of “attaching a voice or text message to a forced message alert.”
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`Further, “the person of ordinary skill in the art is deemed to read the claim term not only
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`in the context of the particular claim in which the disputed term appears, but in the context of the
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`entire patent, including the specification.” Phillips, 415 F.3d at 1313. The specification provides
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`context by disclosing that “[i]f the alert is a voice message, the message keeps repeating at a
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`defined rate until the user operator selects from the required response list” and “[t]his voice
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`message cannot be stopped from repeating until one of the entries on the response list is selected.”
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`’970 Patent at 7:24–27 & 8:50–51. The opinion of Plaintiff’s expert is also persuasive in this
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`regard. (See Dkt. No. 165-1, July 25, 2018 Carbonell Decl., at ¶¶ 103–05.)11 This intrinsic and
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`extrinsic evidence reinforces that the disputed term would be readily understandable to a person
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`of ordinary skill in the art.
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`The Court therefore hereby construes “the repeating voice alert” to mean “voice message
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`that is repeating and that was attached to the forced message alert.”
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`L. “group”
`L. “group”
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`Plaintiff’s Proposed Construction
`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
`Defendants’ Proposed Construction
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`Plain MeaningPlain Meaning
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`
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`“more than two participants associated“more than two participants associatedp p
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`together without having to pre-enter data into
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`together without having to pre-enter data intog g p
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`a web or identify other users by name, E-mail
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`a web or identify other users by name, E-maily
`addresses or phone numbers”
`addresses or phone numbers”
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`11 Plaintiff has also cited expert declarations submitted in support of petitions for Inter Partes
`Review filed by Defendants, but this evidence does not affect the Court’s analysis of this disputed
`term. (See Dkt. No. 165, at Exs. I & J.)
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`(Dkt. No. 162, App’x 1, at 114; Dkt. No. 175, at 22; Dkt. No. 186, at 13; Dkt. No. 194, App’x A,
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`at 45.) The parties submit that this term appears in Claims 1, 54, 55, and 84 of the ’838 Patent,
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`Claims 1 and 24 of the ’251 Patent, and Claims 1, 34, 35, and 68 of the ’829 Patent. (Dkt. No. 162,
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`App’x 1, at 114.)
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`(1) The Parties’ Positions
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`Plaintiff argues that Defendants’ proposal of “more than two” is inconsistent with
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`disclosure in the specification regarding “two or more.” (Dkt. No. 165, at 25 (citing ’838 Patent
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`at 1:30–34).) Plaintiff also argues that Defendants’ proposal of a negative limitation of “without Plaintiff also argues that Defendants’ proposal of a negative limitation of “without
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`having to pre-enter data into a web or identify other users by name, E-mail addresses or phone
`having to pre-enter data into a web or identify other users by name, E-mail addresses or phone
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`numbers” lacks support. (See id., at 25–26.)
`numbers” lacks support. (See id., at 25–26.)
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`Defendants respond that “the specification repeatedly and consistently distinguishes
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`communications involving a ‘group’ of participants from communications involving only two
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`participants.” (Dkt. No. 175, at 22.) Defendants also argue that “the specification repeatedly and
` Defendants also argue that “the specification repeatedly and
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`consistently states that participants joining a group to coordinate their activities and share
`consistently states that participants joining a group to coordinate their activities and share
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`information can do so without having to pre-enter data or identify others by name, email, or phone
`information can do so without having to pre-enter data or identify others by name, email, or phone
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`number.” (Id., at 24.) Further, Defendants argue that “during prosecution of a related patent, the
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`number.” (Id.((
`, at 24.) Further, Defendants argue that “during prosecution of a related patent, the
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`applicant distinguished prior art because—unlike the alleged invention—the prior art network
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`applicant distinguished prior art because—unlike the alleged invention—
`—the prior art network
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`required users to pre-enter phone numbers or email addresses before joining the network.” (Id., at
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`required users to pre-enter phone numbers or email addresses before joining the network.” (Id.((
`, at
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`25.)
`25.)
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`Plaintiff replies, as to the number of users in a “group,” that “Defendants point to several
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`places in the specification, but these citations do not amount to clear and unambiguous disavowal
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`of groups of two.” (Dkt. No. 186, at 13–14.) As to the remainder of Defendants’ proposal, Plaintiff
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`replies that “Defendants ignore the specification of the incorporated-by-reference ’728 Patent
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`which discloses groups, but makes no mention of pre-entry of data.” (Id., at 16.) Plaintiff also
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`notes that “nothing in the claims themselves specify ‘pre-enter,’ ‘a web,’ or identification by
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`‘name, e-mail address or phone number.’” (Id., at 17.)
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`(2) Analysis
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`First, the parties dispute whether a “group” must have more than two participants. Second,
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`the parties dispute whether the participants joining the group are “associated together” without
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`having to pre-enter data or identify other users by name, e-mail, or phone number.
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`As to whether a “group” must have more than two participants, the following disclosure at
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`the beginning of the Field of the Invention section of the specification refers to “two or more
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`people”: “A communications method and system using a plurality of cellular phones each having
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`an integrated Personal Digital Assistant (PDA) and Global Positioning System (GPS) receiver for
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`the management of two or more people through the use of a communications network.” ’838
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`Patent at 1:30–34 (emphasis added).
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`Defendants have highlighted, however, that the specification distinguishes between
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`“individual calls” and “group calls”: “A network of cellular communication systems set up around
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`an area such as the United States allows multiple users to talk to each other, either on individual
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`calls or on group calls.” Id. at 1:56–59 (emphasis added). A reasonable reading of this disclosure
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`is that whereas an “individual” call involves two parties, a “group” call involves more than two
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`parties. Plaintiff has argued that this discussion of a “group call” does not necessarily address the
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`meaning of the term “group” more generally, but other disclosure tends to reinforce the contrast
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`between “group” and “individual.” See id. at 2:54–60 (“establish an ad hoc network of devices so
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`that the devices can either broadcast to a group or selectively transmit to each of the other”).
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`On balance, this distinction between “individual” and “group” demonstrates that the
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`patentee used the term “group” to refer to communication involving more than two participants.
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`This distinction in the specification should be given effect in the construction of the claim term
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`“group.” See, e.g., Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258,
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`1272 (Fed. Cir. 2001) (“there is no question that the . . . specification uses the terms ‘mode’ and
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`‘rate’ to refer to two different and distinct concepts”); see id. at 1270–73; see also PPC, 815 F.3d
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`at 755 (“[i]t is not necessary that each claim read on every embodiment”) (quoting Baran, 616
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`F.3d at 1316).
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`As to the whether the participants joining the group are “associated together” without
`As to the whether the participants joining the group are “associated together” without
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`having to pre-enter data or identify other users by name, e-mail, or phone number, Defendants citeff
`having to pre-enter data or identify other users by name, e-mail, or phone number, Defendants cite
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`prosecution history regarding an ancestor patent, namely United States Patent No. 8,126,441 (“the
`prosecution history regarding an ancestor patent, namely United States Patent No. 8,126,441 (“the
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`’441 Patent”). During prosecution of the ’441 Patent, the patentee distinguished the “Crowley”
`’441 Patent”). During prosecution of the ’441 Patent, the patentee distinguished the “Crowley”
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`reference (United States Patent No. 7,593,740):
`reference (United States Patent No. 7,593,740):
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`Crowley et al. requires the entry of phone numbers or e-mail addresses into the weby q y p
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`
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`Crowley et al. requires the entry of phone numbers or e-mail addresses into the web
`site to enable the web server to establish the networks between individuals. The
`site to enable the web server to establish the networks between individuals. The
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`Applicant’s claims 3, 4 and 6 do not require the entry of either e-mail addresses orpp , q y
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`
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`Applicant’s claims 3, 4 and 6 do not require the entry of either e-mail addresses or
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`phone numbers to establish networks, but rather transmit an IP address to thep ,
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`phone numbers to establish networks, but rather transmit an IP address to the
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`remote private ACS IP server. The ACS server then sends the data to the otherp
`remote private ACS IP server. The ACS server then sends the data to the other
`applicable IP addresses.
`applicable IP addresses.
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`* * *
`* * *
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`
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`For Claims 3, 4, and 6, it is not necessary to know the other net participants phone, , , y p p p
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`For Claims 3, 4, and 6, it is not necessary to know the other net participants phone
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`numbers, e-mail addresses, or any data about them permitting anonymous,
`numbers, e-mail addresses, or any data about them permitting anonymous
`communications; . . . .
`communications; . . . .
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`(Dkt. No. 175, Ex. 6, Feb. 23, 2011 Response and Amendment, at 10 & 13.)
`(Dkt. No. 175, Ex. 6, Feb. 23, 2011 Response and Amendment, at 10 & 13.)
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`Defendants have argued that this prosecution history as to the related ’441 Patent should
`Defendants have argued that this prosecution history as to the related ’441 Patent should
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`apply to the patents here at issue. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed.
`apply to the patents here at issue. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed.
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`Cir. 2007) (“When the application of prosecution disclaimer involves statements from prosecution
`Cir. 2007) (“When the application of prosecution disclaimer involves statements from prosecution
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`of a familial patent relating to the same subject matter as the claim language at issue in the patent
`of a familial patent relating to the same subject matter as the claim language at issue in the patent
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`being construed, those statements in the familial application are relevant in construing the claims
`being construed, those statements in the familial application are relevant in construing the claims
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`at issue.”).
`at issue.”).
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`Yet, Defendants have not shown how these statements by the patentee as to the ’441 Patent
`Yet, Defendants have not shown how these statements by the patentee as to the ’441 Patent
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`are related to the term “group” that is here at issue (rather than other, different claim language).
`are related to the term “group” that is here at issue (rather than other, different claim language).
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`See id. On balance, Defendants have not identified any relevant definitive statements in the
`See id. On balance, Defendants have not identified any relevant definitive statements in the
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`prosecution history. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)
`prosecution history. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)
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`(“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice
`(“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice
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`function of the intrinsic evidence and protects the public’s reliance on definitive statements made
`function of the intrinsic evidence and protects the public’s reliance on definitive statements made
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`during prosecution.”) (emphasis added).
`during prosecution.”) (emphasis added).
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`Defendants have also cited various disclosures in the specification, including in the
`Defendants have also cited various disclosures in the specification, including in the
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`Summary of the Invention. See ’838 Patent at Abstract, 1:45–48, 2:8–14 (“The users need to be
`Summary of the Invention. See ’838 Patent at Abstract, 1:45–48, 2:8–14 (“The users need to be
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`able to rapidly coordinate their activities eliminating the need for pre-entry of data into a web and
`able to rapidly coordinate their activities eliminating the need for pre-entry of data into a web and
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`or identifying others by name, phone numbers or email addresses so that all intended participants
`or identifying others by name, phone numbers or email addresses so that all intended participants
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`that enter the agreed ad hoc network name and password are both digitally and voice
`that enter the agreed ad hoc network name and password are both digitally and voice
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`interconnected.”), 2:34–41 (“enable both data and voice communications up and down their chain
`interconnected.”), 2:34–41 (“enable both data and voice communications up and down their chain
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`of command and simultaneously with different, not pre-known, organizations responding to a
`of command and simultaneously with different, not pre-known, organizations responding to a
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`disaster”), 3:45–48 (“The invention described herein allows users to rapidly coordinate their
`disaster”), 3:45–48 (“The invention described herein allows users to rapidly coordinate their
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`activities without having to pre-enter data into a web or identify others by name, Email addresses
`activities without having to pre-enter data into a web or identify others by name, Email addresses
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`or phone numbers.”), 4:4–8, 10:30–31 & 11:2–6; see also C.R. Bard, 388 F.3d at 864 (“Statements
`or phone numbers.”), 4:4–8, 10:30–31 & 11:2–6; see also C.R. Bard, 388 F.3d at 864 (“Statements
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`that describe the invention as a whole, rather than statements that describe only preferred
`that describe the invention as a whole, rather than statements that describe only preferred
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`embodiments, are more likely to support a limiting definition of a claim term.”); Verizon Servs.
`embodiments, are more likely to support a limiting definition of a claim term.”); Verizon Servs.
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`Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent thus
`Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent thus
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`describes the features of the ‘present invention’ as a whole, this description limits the scope of the
`describes the features of the ‘present invention’ as a whole, this description limits the scope of the
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`invention.”).
`invention.”).
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`Nonetheless, Defendants have not shown that any of these statements rises to the level of
`Nonetheless, Defendants have not shown that any of these statements rises to the level of
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`a definition or disclaimer as to whether the term “group” precludes pre-entering data. See Thorner
`a definition or disclaimer as to whether the term “group” precludes pre-entering data. See Thorner
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`v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Further, “[i]t is not
`v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Further, “[i]t is not
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`necessary that each claim read on every embodiment.” PPC, 815 F.3d at 755 (quoting Baran, 616
`necessary that each claim read on every embodiment.” PPC, 815 F.3d at 755 (quoting Baran, 616
`
`
`F.3d at 1316); see Liebel-Flarsheim Co. v. Medrad, Inc.MM
`, 358 F.3d 898, 908 (Fed. Cir. 2004) (“The
`F.3d at 1316); see Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004) (“The
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`fact that a patent asserts that an invention achieves several objectives does not require that each of
`fact that a patent asserts that an invention achieves several objectives does not require that each of
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`the claims be construed as limited to structures that are capable of achieving all of the objectives.”).
`the claims be construed as limited to structures that are capable of achieving all of the objectives.”).
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`Based on the foregoing, the Court hereby construes “group” to mean “more than two
`Based on the foregoing, the Court hereby construes “group” to mean “more than two
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`participants associated together.”
`participants associated together.”
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`M. “receiving a message from a second device”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`Plain Meaning
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`“receiving a message directly from a second
`device without the use of a server”
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`(Dkt. No. 162, App’x 1, at 115; Dkt. No. 165, at 27; Dkt. No. 175, at 29; Dkt. No. 186, at 18; Dkt.
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`No. 194, App’x A, at 87.) The parties submit that this term appears in Claims 1 and 24 of the ’251
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`Patent. (Dkt. No. 162, App’x 1, at 115.)
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`(1) The Parties’ Positions
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`Plaintiff argues that “Defendants cannot prevail with their construction because they cannot
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`point to any lexicography or clear and unambiguous disavowal by the Patentee with respect to this
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`term.” (Dkt. No. 165, at 27.) Plaintiff also argues that “the prosecution statement that the
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`Defendants have identified does not rise to the level of a clear and unambiguous disclaimer because
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