Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 1 of 18 PageID #: 15404
`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 1 of 18 PageID #: 15404
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`EXHIBIT 19
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`EXHIBIT 19
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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 2 of 18 PageID #: 15405
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`REBUTTAL EXPERT REPORT OF JOSEPH C. McALEXANDER III
`REGARDING VALIDITY OF U.S. PATENT NUMBERS:
`8,213,970; 9,408,055; 9,445,251; 9,467,838; AND 9,749,829
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`vs.
`APPLE, INC.
`
`Civil Action No. 2:17-CV-516-JRG
`
`November 19, 2018
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`

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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 3 of 18 PageID #: 15406
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`Clark anticipates any of the asserted claims of the '970 Patent. And none of the references, either
`
`alone, or in combination, renders any of the asserted claims of the '970 Patent obvious. My
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`analyses and conclusions are set forth in Section 7.
`
`1.2
`
`The Asserted Claims of the '055, '251, '838, and '829 Patents are Valid Over
`Each of the Respective References, Either Alone, or in Combination,
`Identified in Clark's and Siegel's Reports
`
`17.
`
`The asserted claims of the '055, '251, '838, and '829 Patents are not invalid, as asserted by
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`Clark or Siegel in their respective October 29, 2018 Reports, or upon other bases presented by
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`APPLE.2 None of the references proposed by Clark or Siegel anticipates any of the asserted
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`claims of the '055, '251, '838, and '829 Patents. And none of the references, either alone, or in
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`combination, renders any of the asserted claims of the '055, '251, '838, and '829 Patents. My
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`analyses and conclusions are set forth in Section 7.
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`1.3
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`The '970 Patent is Entitled to the Priority Date of November 26, 2008
`
`18.
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`The asserted claims of the '970 Patent are each entitled to a priority date of its filing date,
`
`November 26, 2008. My analysis and conclusions are set forth in Section 7.
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`1.4
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`The '055 Patent is Entitled to the Priority Date of September 21, 2004
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`19.
`
`The asserted claims of the '055 Patent is entitled to a priority date of September 21, 2004,
`
`the filing date of the application that issued as the '728 Patent. Additionally, as I set forth in my
`Additionally, as I set forth in my
`
`opening report, certain asserted claims of the ’055 patent were reduced to practice as of August
`opening report, certain asserted claims of the ’055 patent were reduced to practice as of August
`
`30, 2004. None of the arguments to the contrary, presented by Clark for the asserted claims of
`30, 2004. None of the arguments to the contrary, presented by Clark for the asserted claims of
`
`
`
`the '055 Patent, is persuasive.3 My analysis and conclusions are set forth in Section 7. the '055 Patent, is persuasive.
`
`
`2 Id.
`3 See Clark Report at ¶¶ 94-111.
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`1.5
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`The '251, '838, and '829 Patents are Each Entitled to the Priority Date of
`April 17, 2006
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`20.
`
`The asserted claims of the '251, '838, and '829 Patents are each entitled to a priority date
`
`Additionally,
`of April 17, 2006, the filing date of the application that issued as the '724 Patent. Additionally,
`
`as I set forth in my opening report, certain asserted claims of the ’838 patent were reduced to
`as I set forth in my opening report, certain asserted claims of the ’838 patent were reduced to
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`practice as of October 19, 2005. None of the arguments to the contrary, presented by Clark for
`practice as of October 19, 2005. None of the arguments to the contrary, presented by Clark for
`
`the asserted claims of the '251, '838, and '829 Patents, is persuasive.4 My analysis and
`the asserted claims of the '251, '838, and '829 Patents, is persuasive.
`
`conclusions are set forth in Section 7.
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`1.6
`
`The References Proffered by Clark and Siegel are Cumulative to the Art of
`Record Before the U.S. Patent and Trademark Office
`
`21.
`
`None of the references identified by Clark and Siegel (listed in Section 5 below) are
`
`material to patentability of any of the asserted claims, because each reference is cumulative to
`
`the art already before the Examiner at the U.S. Patent and Trademark Office during the
`
`prosecution of the applications that issued as the '970, '055, '251, '838, and '829 Patents.
`
`1.7
`
`Findings Related to Infringement Remain Unchanged as Presented in My
`Expert Report on Infringement
`
`22.
`
`Infringement positions, as stated in my previous expert report of October 29, 2018,
`
`remain unchanged. In my technical opinion, the APPLE products identified in that report
`
`infringe the asserted claims of the '970, '055, '251, '838, and '829 Patents.
`
`2
`
`QUALIFICATIONS
`
`23. My qualifications are identified in Section 2 of my October 29, 2018 Expert Report and
`
`accompanying Appendices. I incorporate them herein by reference in their entirety.
`
`
`4 Id.
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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 5 of 18 PageID #: 15408
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`and 4.61 (showing a January, 2013, commit date) provided on a laptop computer in New York,
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`NY,310 on AGIS discovery responses, and on the testimony of Sandel Blackwell, president of
`
`AGIS.
`
`505. However, as Clark has admitted, he has no evidence of the commercial sale of the
`
`LifeRing product before the priority date of each of the respective '055, '251, '838, and '829
`
`Patents,311 because there was no sale or offer for sale prior to that time. Therefore, the LifeRing
`
`system source code, as it existed in version 2.12, does not qualify as invalidating prior art and
`
`attempts by Clark to use the LifeRing source code as potentially invalidating prior art are
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`improper.
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`506. As I discussed elsewhere,312 it is my opinion that the asserted claims of each of the '055, 312506. As I discussed elsewhere,3 it is my opinion that the asserted claims of each of the '055,
`
`
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`
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`
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`'251, '838, and '829 Patents are each due to a priority date that is at least as early as April 17, '251, '838, and '829 Patents are each due to a priority date that is at least as early as April 17,
`
`2006. Testimony by AGIS witnesses and AGIS discovery responses cited when discussing the
`2006. Testimony by AGIS witnesses and AGIS discovery responses cited when discussing the
`
`'055 Patent show a process of continuing improvements leading to an eventual reduction to
`'055 Patent show a process of continuing improvements leading to an eventual reduction to
`
`practice at the time of the filing of the application leading to the '728 Patent (September 21,
`practice at the time of the filing of the application leading to the '728 Patent (September 21,
`
`2004). Further, testimony by AGIS witnesses and AGIS discovery responses cited when
`2004). Further, testimony by AGIS witnesses and AGIS discovery responses cited when
`
`discussing the '251, '838, and '829 Patents merely show a process of continuing improvements
`discussing the '251, '838, and '829 Patents merely show a process of continuing improvements
`
`leading to an eventual reduction to practice at the time of the filing of the application leading to
`leading to an eventual reduction to practice at the time of the filing of the application leading to
`
`the '724 Patent (April 17, 2006).
`the '724 Patent (April 17, 2006).
`
`507. Accordingly, it is my opinion that the LifeRing system, as presented by Clark, is not
`507. Accordingly, it is my opinion that the LifeRing system, as presented by Clark, is not
`
`qualified as a prior art reference for any of the claims of the '055, '251, '838, and '829 Patents.
`qualified as a prior art reference for any of the claims of the '055, '251, '838, and '829 Patents.
`
`
`310 See, e.g., Id. at ¶ 920.
`311 Id. rt at ¶¶ 415-416 and (generally) ¶¶ 790-2068.
`312 See discussions of priority dates in Sections 7.2.3, 7.3.3, 7.4.3, and 7.5.3 of this Expert Report.
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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 6 of 18 PageID #: 15409
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`7.6.7.1.4
`
`Claims 1, 28, 41, and 54 of the '055 Patent
`are each Valid Over the LifeRing System
`
`608.
`
`In contrast to Clark’s opinions, the LifeRing System does not qualify as invalidating prior
`
`art at least because it was not on sale or offered for sale by September 21, 2004, the filing date of
`
`the '728 Patent.396 Therefore, the LifeRing System cannot anticipate or render obvious claims
`
`1, 28, 41, and 54 of the '055 Patent.
`
`7.6.7.1.5
`
`Claims 1, 28, 41, and 54 of the '055 Patent
`are each Valid Over the FBCB2 System
`
`609.
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art at least because Siegel failed to meet his burden of proof.397 Additionally, as discussed in
`
`greater detail above, Siegel does not identify any specific version of FBCB2, let alone a version
`
`that meets all of the limitations of the claims. Further, he fails to identify any documentary
`
`evidence demonstrating that such a version would have been on sale, offered for sale, or known
`
`at any time prior to the filing date of the '055 Patent, i.e., prior to September 21, 2004.
`
`Additionally, as I discussed in my October 29, 2018 Expert Report on Infringement, there is
`Additionally, as I discussed in my October 29, 2018 Expert Report on Infringement, there is
`
`significant documentary evidence supporting a prior conception as early as December 2003, with
`significant documentary evidence supporting a prior conception as early as December 2003, with
`
`diligence leading to an actual reduction to practice by AGIS by August 30, 2004. Therefore, the
`diligence leading to an actual reduction to practice by AGIS by August 30, 2004. Therefore, the
`
`FBCB2 System cannot anticipate or render obvious claims 1, 28, 41, and 54 of the '055 Patent.
`FBCB2 System cannot anticipate or render obvious claims 1, 28, 41, and 54 of the '055 Patent.
`
`610. Therefore, none of Poulin, Haney, Altman, LifeRing, and FBCB2 anticipates or renders
`
`obvious, alone or in combination, Claims 1, 28, 41, and 54 of the '055 Patent.
`
`
`396 See discussion of the LifeRing system in Section 7.6.4.8 above.
`397 See discussion of the FBCB2 system in Section 7.6.5.1 above.
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`(cid:120) “identifying second user interaction … specifying an action and, based
`thereon, initiating a phone call or phone conference with the at least
`one second device,” as required by claim 36; and
`(cid:120) “receiving user selection of the other symbol and, based thereon,
`initiating a telephone call to the telephone number associated with the
`symbol,” as required by claim 42.
`
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`624. For the same reasons identified above, as applied to the primary references, neither
`
`Poulin nor Haney, alone or in combination with the Altman secondary reference as specified in
`
`Table 1 above, anticipates or renders obvious any of claims 5, 7, 24, 27, 32, 36, and 42 of the
`
`'055 Patent.398 The Altman secondary reference does not add even one of the missing claim
`
`limitations identified in Section 7.3.3.2.1 above. Neither the LifeRing system nor the FBCB2
`
`system qualifies as potentially invalidating prior art.
`
`7.6.7.2.2
`
`Claims 5, 7, 24, 27, 32, 36, and 42 of the
`'055 Patent are Each Valid Over Each of
`the LifeRing System and the FBCB2
`System
`
`625. As discussed above, in contrast to Clark’s opinions, the LifeRing System does not qualify
`
`as invalidating prior art to the '055 Patent at least because it was not on sale or offered for sale
`
`more than one year prior to September 21, 2004, the filing date of the '728 Patent.399 Therefore,
`
`the LifeRing System does not anticipate or render obvious, alone or in combination, claims 5, 7,
`
`24, 27, 32, 36, and 42 of the '055 Patent.
`
`626.
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art for the '055 Patent at least because Siegel failed to meet his burden of proof.400 Additionally,
`
`as discussed in greater detail above, Siegel does not identify any specific version of FBCB2, let
`
`
`398 See corresponding discussions in Sections 7.6.4.8, 7.6.5.1 above.
`399 See discussion of the LifeRing system in Section 7.6.4.8 above.
`400 See discussion of the FBCB2 system in Section 7.6.5.1 above.
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`alone a version that meets all of the limitations of the claims. Further, he fails to identify any
`
`documentary evidence demonstrating that such a version would have been on sale, offered for
`
`sale, or known at any time prior to the filing date of the '055 Patent, i.e., prior to September 21,
`
`Additionally, as I discussed in my October 29, 2018 Expert Report on Infringement, there
`2004. Additionally, as I discussed in my October 29, 2018 Expert Report on Infringement, there
`
`is significant documentary evidence supporting a prior conception as early as December 2003,
`is significant documentary evidence supporting a prior conception as early as December 2003,
`
`with diligence leading to an actual reduction to practice by AGIS by August 30, 2004.
`with diligence leading to an actual reduction to practice by AGIS by August 30, 2004.
`
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`
`claims 5, 7, 24, 27, 32, 36, and 42 of the '055 Patent.
`claims 5, 7, 24, 27, 32, 36, and 42 of the '055 Patent.
`
`627. Therefore, none of Poulin, Haney, Altman, LifeRing, and FBCB2 anticipates or renders
`
`obvious, alone or in combination, claims 5, 7, 24, 27, 32, 36, and 42 of the '055 Patent.
`
`7.6.8
`
`Claims 2, 5, 6, 12, 15, 18, 27, 29, 31, and 35 of the '251 Patent are
`Each Valid
`
`628. To summarize, the prior art references identified by Clark or Siegel, either alone, or in
`
`combination, do not provide an enabling disclosure of the claimed inventions of the '251 Patent.
`
`The references identified by Clark and Siegel are no better at disclosing the missing claim
`
`elements than the prior art before the Examiner during prosecution of the '251 Patent application.
`
`629. Specifically, at least the following claim elements are missing from each of the alleged
`
`anticipation references identified in Clark's and Siegel's Reports:
`
`(1) Element 1 of claims 1 and 24 – “receiving a message from a second
`device, wherein the message relates to joining a group;”
`(2) Element 2 of claims 1 and 24 – “participating in the group …
`wherein participating in the group includes sending first location
`information to a server and received second location information
`from a server;”
`(3) Element 3 of claims 1 and 24 – “presenting … a first interactive,
`georeferenced map and a plurality of user-selectable symbols …,
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`second devices;” and “identifying user interaction with the interactive display selecting one or
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`
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`more of the user-selectable symbols …,” as required by the above claims of the '251 Patent.405
`
`Altman further does not include at least “presenting;” and “receiving user input,” as also required
`
`by the above claims of the '251 Patent.406 Therefore, Altman does not anticipate or render
`
`obvious claims 1 and 24 of the '251 Patent.
`
`7.6.8.1.4
`
`Claims 1 and 24 of the '251 Patent are
`each Valid Over the LifeRing System
`
`641.
`
`In contrast to Clark’s opinions, the LifeRing System does not qualify as invalidating prior
`
`art the '251 Patent at least because it was not on sale or offered for sale by April 17, 2006, the
`
`filing date of the '724 Patent.407 Additionally, as I set forth in my opening report, the AGIS
`
`messaging specification always includes the IP address of the sender and thus each device
`
`always knows the IP address of the other devices. Thus the ’251 Patent claims are not met by
`
`AGIS’s LifeRing product sold prior to the effective filing date. Therefore, the LifeRing System
`
`does not anticipate or render obvious, alone or in combination, claims 1 and 24 of the '251
`
`Patent.
`
`7.6.8.1.5
`
`Claims 1 and 24 of the '251 Patent are
`each Valid Over the FBCB2 System
`
`642.
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art for the '829 Patent at least because Siegel failed to meet his burden of proof.408
`
`Additionally, as discussed in greater detail above, Siegel does not identify any specific version of
`
`FBCB2, let alone a version that meets all of the limitations of the claims. Further, he fails to
`
`405 See discussion of Altman in Section 7.6.4.7 above.
`406 Id.
`407 See discussion of the LifeRing system in Section 7.6.4.8 above.
`408 See discussion of the FBCB2 system in Section 7.6.5.1 above.
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`identify any documentary evidence demonstrating that such a version would have been on sale,
`
`offered for sale, or known at any time prior to the filing date of the '251 Patent, i.e., prior to
`
`Additionally, as I discussed in my October 29, 2018 Expert Report on
`September 21, 2004. Additionally, as I discussed in my October 29, 2018 Expert Report on
`
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`
`claims 1 and 24 of the '251 Patent.
`claims 1 and 24 of the '251 Patent.
`
`7.6.8.2
`
`Dependent Claims 2, 5, 6, 12, 13, 14, 15, 16, 17, 18, 27,
`29, 31, and 35 of the '251 Patent are Each Valid
`
`643. Clark identified the following art as allegedly anticipating the asserted dependent claims
`
`of the '251 Patent, or, in combination, rendering the asserted dependent claims obvious.
`
`(cid:120)
`(cid:120)
`(cid:120)
`(cid:120)
`
`(1) Poulin;
`(2) Haney;
`(3) Altman; and
`(4) the LifeRing System.
`
`
`644. Siegel identified the following art as allegedly anticipating the asserted dependent claims
`
`of the '251 Patent, or, in combination, rendering the asserted dependent claims obvious.
`
`(cid:120)
`
`(1) the FBCB2 System.
`
`
`645. None of these references anticipates claims 2, 5, 6, 12, 13, 14, 15, 16, 17, 18, 27, 29, 31,
`
`and 35 for at least the fact that none of the references includes any of the following: (1)
`
`“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;” (2) “presenting … the second georeferenced map and the plurality of
`
`user-selectable symbols corresponding to the plurality of second devices;” and (3) “identifying
`
`user interaction with the interactive display selecting one or more of the user-selectable symbols
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`(cid:120)
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`
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`the claim 14 step of “searching a database of entities for an entity
`located nearest to the spatial coordinates represented by the selected
`position …;”
`(cid:120) “receiving user input … specifying a location and a symbol
`corresponding to a second entity … and based on the user input,
`adding the user-specified symbol to the interactive display …,” as
`required by claim 15;
`the claim 16 step of “transmitting the user-specified symbol and
`location to the second devices for addition … to respective interactive
`displays of the second devices …;”
`the claim 17 step of “transmitting the user-specified information
`associated with the second entity to the second devices;”
`(cid:120) “adding data representing the spatial coordinates of the location of the
`second entity and data representing the information associated with the
`second entity to the database,” as required by claim 18;
`(cid:120) “wherein the second map is a satellite image,” as required by claim 27;
`(cid:120) “the operations further comprise identifying second user interaction
`with the interactive display selecting at least one of the user-selectable
`symbols … and, based thereon, initiating a phone call or phone
`conference with the at least one second device,” as required by claim
`29;
`(cid:120) “sending first status information to the server and receiving second
`status information from the server, …,” as required by claim 31; and
`(cid:120) “using the GPS receiver to obtain data indicative of the location of the
`first device, wherein sending the first location to the server comprises
`using the Internet Protocol (IP) to send the first location information to
`the server.
`
`(cid:120)
`
`(cid:120)
`
`
`662. Therefore, none of Poulin, Haney, and Altman, anticipates or renders obvious, alone or in
`
`combination, claims 2, 5, 6, 12, 13, 14, 15, 16, 17, 18, 27, 29, 31, and 35 of the '251 Patent.
`
`7.6.8.2.2
`
`Claims 2, 5, 6, 12, 13, 14, 15, 16, 17, 18, 27,
`29, 31, and 35 of the '251 Patent are Each
`Valid Over Each of the LifeRing System
`and the FBCB2 System
`
`663. Therefore, none of Poulin, Haney, Altman, LifeRing, and FBCB2 anticipates or renders
`
`obvious, alone or in combination, claims 2, 5, 6, 12, 13, 14, 15, 16, 17, 18, 27, 29, 31, and 35 of
`
`the '251 Patent.
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`664.
`
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art at least because Siegel failed to meet his burden of proof.409 Additionally, as discussed in
`
`greater detail above, Siegel does not identify any specific version of FBCB2, let alone a version
`
`that meets all of the limitations of the claims. Further, he fails to identify any documentary
`
`evidence demonstrating that such a version would have been on sale, offered for sale, or known
`
`at any time prior to the filing date of the '251 Patent, i.e., prior to September 21, 2004.
`
`Additionally, as I discussed in my October 29, 2018 Expert Report on Infringement, there is
`Additionally, as I discussed in my October 29, 2018 Expert Report on Infringement, there is
`
`significant documentary evidence supporting a prior conception as early as 2004, with diligence
`significant documentary evidence supporting a prior conception as early as 2004, with diligence
`
`leading to an actual reduction to practice by AGIS by April 17, 2006. Therefore, the FBCB2
`leading to an actual reduction to practice by AGIS by April 17, 2006. Therefore, the FBCB2
`
`System cannot anticipate or render obvious, alone or in combination, claims 2, 5, 6, 12, 13, 14,
`System cannot anticipate or render obvious, alone or in combination, claims 2, 5, 6, 12, 13, 14,
`
`15, 16, 17, 18, 27, 29, 31, and 35 of the '055 Patent.
`15, 16, 17, 18, 27, 29, 31, and 35 of the '055 Patent.
`
`665. Therefore, none of Poulin, Haney, Altman, the LifeRing System, and the FBCB2 System
`
`anticipates or renders obvious, alone or in combination, claims 2, 5, 6, 12, 13, 14, 15, 16, 17, 18,
`
`27, 29, 31, and 35 of the '251 Patent.
`
`7.6.9
`
`Claims 5, 10, 15, 18, 19, 20, 38, 40, and 54 of the '838 Patent are
`Each Valid
`
`666. To summarize, the prior art references identified by Clark or Siegel, either alone, or in
`
`combination, do not provide an enabling disclosure of the claimed inventions of the '838 Patent.
`
`The references identified by Clark and Siegel are no better at disclosing the missing claim
`
`elements than the prior art before the Examiner during prosecution of the '838 Patent application.
`
`667. Specifically, at least the following claim elements are missing from each of the alleged
`
`anticipation references identified in Clark's and Siegel's Reports:
`
`
`409 Id. in Section 7.6.5.1 above.
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`2:17-CV-516-JRG, McAlexander Rebuttal Expert Report - Validity
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`353
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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 13 of 18 PageID #: 15416
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`devices via the first server,” as required by the above claims of the '838 Patent.418 Therefore,
`
`Haney does not anticipate or render obvious claims 1 and 54 of the '838 Patent.
`
`7.6.9.1.4
`
`Claims 1 and 54 of the '838 Patent are
`each Valid Over the LifeRing System
`
`679.
`
`In contrast to Clark’s opinions, the LifeRing System does not qualify as invalidating prior
`
`art the '838 Patent at least because it was not on sale or offered for sale by April 17, 2006, the
`
`filing date of the '724 Patent.419 Therefore, the LifeRing System does not anticipate or render
`
`obvious, alone or in combination, claims 1 and 54 of the '838 Patent.
`
`7.6.9.1.5
`
`Claims 1 and 54 of the '838 Patent are
`each Valid Over the FBCB2 System
`
`680.
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art for the '838 Patent at least because Siegel failed to meet his burden of proof.420
`
`Additionally, as discussed in greater detail above, Siegel does not identify any specific version of
`
`FBCB2, let alone a version that meets all of the limitations of the claims. Further, he fails to
`
`identify any documentary evidence demonstrating that such a version would have been on sale,
`
`offered for sale, or known at any time prior to the filing date of the '838 Patent, i.e., prior to
`
`Additionally, as I discussed in my October 29, 2018 Expert Report on
`September 21, 2004. Additionally, as I discussed in my October 29, 2018 Expert Report on
`
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`
`claims 1 and 54 of the '838 Patent.
`claims 1 and 54 of the '838 Patent.
`
`
`418 Id.
`419 See discussion of the LifeRing system in Section 7.6.4.8 above.
`420 See discussion of the FBCB2 system in Section 7.6.5.1 above.
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`2:17-CV-516-JRG, McAlexander Rebuttal Expert Report - Validity
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`360
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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 14 of 18 PageID #: 15417
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`699. Therefore, none of Poulin, Haney, and Altman anticipates or renders obvious, alone or in
`
`combination, claims 5, 10, 15, 18, 19, 20, 38, and 40 of the '838 Patent.
`
`7.6.9.2.2
`
`Claims 5, 10, 15, 18, 19, 20, 38, and 40 of
`the '838 Patent are Each Valid Over Each
`of the LifeRing System and the FBCB2
`System
`
`700.
`
`In contrast to Clark’s opinions, the LifeRing System does not qualify as invalidating prior
`
`art the '838 Patent at least because it was not on sale or offered for sale by April 17, 2006, the
`
`filing date of the '724 Patent.421 Therefore, the LifeRing System does not anticipate or render
`
`obvious, alone or in combination, claims 1 and 54 of the '838 Patent.
`
`701.
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art for the '838 Patent at least because Siegel failed to meet his burden of proof.422
`
`Additionally, as discussed in greater detail above, Siegel does not identify any specific version of
`
`FBCB2, let alone a version that meets all of the limitations of the claims. Further, he fails to
`
`identify any documentary evidence demonstrating that such a version would have been on sale,
`
`offered for sale, or known at any time prior to the filing date of the '838 Patent, i.e., prior to
`
`Additionally, as I discussed in my October 29, 2018 Expert Report on
`September 21, 2004. Additionally, as I discussed in my October 29, 2018 Expert Report on
`
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`
`claims 1 and 54 of the '838 Patent.
`claims 1 and 54 of the '838 Patent.
`
`
`421 See discussion of the LifeRing system in Section 7.6.4.8 above.
`422 See discussion of the FBCB2 system in Section 7.6.5.17.6.5.1 above.
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`2:17-CV-516-JRG, McAlexander Rebuttal Expert Report - Validity
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`Case 2:17-cv-00513-JRG Document 244-17 Filed 12/18/18 Page 15 of 18 PageID #: 15418
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`filing date of the '724 Patent.432 Therefore, the LifeRing System does not anticipate or render
`
`obvious, alone or in combination, claims 1, 34, 35, and 68 of the '829 Patent.
`
`7.6.10.1.5
`
`Claims 1, 34, 35, and 68 of the '829 Patent
`are each Valid Over the FBCB2 System
`
`719.
`
`In contrast to Siegel’s opinions, the FBCB2 System does not qualify as invalidating prior
`
`art for the '829 Patent at least because Siegel failed to meet his burden of proof.433
`
`Additionally, as discussed in greater detail above, Siegel does not identify any specific version of
`
`FBCB2, let alone a version that meets all of the limitations of the claims. Further, he fails to
`
`identify any documentary evidence demonstrating that such a version would have been on sale,
`
`offered for sale, or known at any time prior to the filing date of the '829 Patent, i.e., prior to
`
`September 21, 2004. Additionally, as I discussed in my October 29, 2018 Expert Report on
`Additionally, as I discussed in my October 29, 2018 Expert Report on
`
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`Infringement, there is significant documentary evidence supporting a prior conception as early as
`
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`2004, with diligence leading to an actual reduction to practice by AGIS by April 17, 2006.
`
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`Therefore, the FBCB2 System does not anticipate or render obvious, alone or in combination,
`
`claims 1, 34, 35, and 68 of the '829 Patent.
`claims 1, 34, 35, and 68 of the '829 Patent.
`
`720. Therefore, none of Poulin, Haney, Altman, the LifeRing System, and the FBCB2 System
`
`anticipates or renders obvious, alone or in combination, claims 1, 34, 35, and 68 of the '829
`
`Patent.
`
`7.6.10.2 Dependent Claims 2, 8, 10, 14, 30, 42, and 50 of the '829
`Patent are Each Valid
`
`721. Clark identified the following art as allegedly anticipating the asserted dependent claims
`
`of the '829 Patent, or, in combination, rendering the asserted dependent claims obvious.
`
`432 See discussion of the LifeRing system in