Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 1 of 22 PageID #: 15929
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`HUAWEI DEVICE USA INC. ET AL.,
`
`
`Defendants.
`
`
`Case No. 2:17-CV-0513-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`APPLE, INC.,
`
`
`Defendant.
`
`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`§
`§
`§
`§
`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE IN
`OPPOSITION TO APPLE INC.’S SEALED MOTION TO STRIKE PORTIONS OF THE
`OPENING EXPERT REPORT OF MR. JOSEPH MCALEXANDER THAT RELY
`ON UNTIMELY DISCLOSED INFRINGEMENT THEORIES (DKT. 232)
`
`
`
`
`
`
`
`

`

`I.
`
`II.
`
`III.
`
`IV.
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`INTRODUCTION .............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`Content of AGIS’s September 21, 2018 Infringement Contentions with
`Respect to the ‘970 Patent, Claim 1 ........................................................................ 3
`
`Content of AGIS’s September 21, 2018 Infringement Contentions with
`Respect to the ‘055 Patent, Claims 1, 28, 41, and 54 ............................................. 6
`
`Content of AGIS’s September 21, 2018 Infringement Contentions with
`Respect to the ‘838 Patent, Claims 1 and 54 .......................................................... 8
`
`LEGAL STANDARD ......................................................................................................... 9
`
`ARGUMENT .................................................................................................................... 11
`
`A.
`
`Apple Had Fair Notice of the AGIS’s Contentions as They Appeared in
`the McAlexander Report. ...................................................................................... 11
`
`1.
`
`2.
`
`3.
`
`AGIS’s September 21, 2018 Infringement Contentions Put
`Apple on Notice That the Apple ID defines “a predetermined
`network of participants,” Including Family Sharing Participants ............. 11
`
`AGIS’s September 21, 2018 Infringement Contentions Put
`Apple on Notice That It Regards Dropping a Pin in Find My
`Friends as an Element of Infringement, and That a Location
`Marked With a Pin and a “Marked Location” Are Synonymous ............. 12
`
`AGIS’ September 21, 2018 Infringement Contentions Put Apple
`on Notice That It Regards the Name of a Group Message in
`iMessage as “an identifier corresponding to the group” ........................... 13
`
`B.
`
`Apple Cannot Credibly Argue That It Was Prejudiced by Lack of
`Notice Pertaining to Mr. McAlexander’s Allegedly New Theories ..................... 14
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 2 of 22 PageID #: 15930
`V.
`CONCLUSION ................................................................................................................. 15
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Anascape, Ltd. v. Microsoft Corp.,
`No. 9:06-CV-158, 2008 WL 7180756 (E.D. Tex., May 1, 2008) ...............................10, 11, 14
`
`Betzel v. State Farm Lloyds,
`480 F.3d 704 (5th Cir. 2007) .......................................................................................10, 11, 14
`
`Honeywell Intern. v. Acer America Corp.,
`655 F. Supp. 2d 650 (E.D. Tex., Feb. 5, 2009) ....................................................................9, 10
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`No. 2:08–CV–448, 2011 WL 5158285 (E.D. Tex., Aug. 11, 2011) ..................................10, 14
`
`Mears Techs., Inc. v. Finisar Corp.,
`No. 2:13-CV-376-JRG, 2014 WL 12605571 (E.D. Tex., Oct. 6, 2014) ..................................14
`
`O2 Micro Intern. Ltd. v. Monolithic Power System, Inc.,
`467 F.3d 1355 (Fed. Cir. 2006)................................................................................................10
`
`Orion IP, LLC v. Staples, Inc.,
`407 F. Supp. 2d 815 (E.D. Tex., May 13, 2006)..................................................................9, 12
`
`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08–cv–144, 2009 WL 2590101 (E.D. Tex., Aug. 18, 2009) ...................................10, 11
`
`Tyco Healthcare Group LP v. Applied Medical Resources Corp.,
`No. 9:06-CV-151, 2009 WL 5842062 (E.D. Tex., Mar. 30, 2009) .............................10, 11, 14
`
`
`
`
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 3 of 22 PageID #: 15931
`
`
`
`ii
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`

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`I.
`
`INTRODUCTION
`
`Apple Inc. (“Apple”) moves to strike evidence of three, long-disclosed infringement
`
`theories from the October 29, 2018 Opening Report of Joseph McAlexander Regarding
`
`Infringement (the “McAlexander Report”) on behalf of AGIS Software Development LLC
`
`(“AGIS”). AGIS’s September 21, 2018 infringement contentions, which included source code
`
`supplements concerning later-produced source code, were timely served and Apple raised no
`
`objections to the sufficiency of the September 21, 2018 infringement contentions.
`
`Apple’s motion includes only excerpts from AGIS’s contentions and Apple fails to
`
`inform the Court of the additional support that AGIS demonstrates below. AGIS’s timely
`
`September 21, 2018 infringement contentions accused Apple’s Find My iPhone, Find My
`
`Friends, Messages, and Family Sharing software features and put Apple on notice that: (1) with
`
`respect to U.S. Patent No. 8,213,970 (“the ‘970 Patent”), the “predetermined network of
`
`participants” limitation is practiced by family sharing based on an account such as an Apple ID
`
`which is used to sign-in and access the Find My iPhone application (Ex. A1 at A-3–A-7, A-11,
`
`A-38, A-123, and A-181); (2) with respect to U.S. Patent No. 9,408,055 (“the ’055 Patent”), the
`
`“user input specifying a location and a symbol” limitation is practiced by “dropping a pin” which
`
`Apple itself also refers to as a “marked location” and by sharing a location using the Find My
`
`Friends application (Ex. B at B-155, B-156, B-160, B-161, B-162, B-41, B-79, B-80); and (3)
`
`with respect to U.S. Patent No. 9,467,838 (“the ‘838 Patent”), the “identifier corresponding to
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 4 of 22 PageID #: 15932
`the group” limitation is practiced by an iMessage group which includes the literal name of that
`
`group (Ex. C at D-51 and D-52). Moreover, Apple has been on notice of these theories since
`
`receiving AGIS’s September 18, 2017 original infringement contentions (Ex. D at A-1 to A-5;
`
`
`1 References to Exs. A-n refer to exhibits to the Declaration of Alfred R. Fabricant attached
`hereto.
`
`
`
`
`
`

`

`Ex. E at B-1, B-32, B-33, B-37, B-52, B-53) and AGIS’s April 20, 2018 3-1(g) amended
`
`infringement contentions (Ex. F at D-50 to D-51).
`
`Accordingly, AGIS gave Apple fair and adequate notice that it was making each of the
`
`above contentions long before they appeared in Mr. McAlexander’s expert report. See infra 2-13.
`
`II.
`
`FACTUAL BACKGROUND
`
`AGIS served its original infringement contentions on September 18, 2017, setting forth
`
`how Apple’s Accused Products infringe the patents-in-suit. Apple raised no objections to
`
`AGIS’s original contentions. On December 1, 2017, Apple made available its first volume of
`
`source code for inspection. Ex. G. On December 28, 2018, Apple produced to AGIS printouts
`
`of select portions of Apple’s first volume of source code. Ex. H. Apple later made available
`
`three additional volumes of source code on January 9, 2018, February 22, 2018, and July 16,
`
`2018. Exs. I-K. Apple produced printouts of the additional volumes of source code on January
`
`12, 2018, March 9, 2018, August 3, 2018, and August 22, 2018. Exs. L-O. Apple stated that its
`
`February 22, 2018 source code volume related specifically to the Family Sharing feature. Ex. J.
`
`AGIS served amended infringement contentions on February 14, 2018, April 20, 2018,
`
`and September 21, 2018 identifying relevant citations to Apple’s productions of source code
`
`printouts. Apple accepted each of these amendments and did not move to strike any portions.
`
`On October 10, 2018, the Court issued a Claim Construction Order setting forth
`
`constructions––e.g., the means-plus-function terms of the ’970 Patent and the “group” terms of
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 5 of 22 PageID #: 15933
`the ’251 Patent and ’838 Patent––which were not proposed in advance by either party. Dkt. 205
`
`at 49. Pursuant to P.R. 3-6(a)(1), on November 12, 2018, AGIS served amended infringement
`
`contentions addressing the constructions set forth in the Claim Construction Order. In conferring
`
`on the instant motion, AGIS proposed an agreement that it would not rely on its November 12,
`
`
`
`2
`
`

`

`2018 contentions to support any of the three theories disputed by Apple as those theories had
`
`been in AGIS’s undisputed original contentions and 3-1(g) supplements thereto. Ex. P.
`
`The only dispute before the Court is whether the September 21, 2018 infringement
`
`contentions––which Apple accepted without objection––provide fair and adequate notice of the
`
`infringement theories in the McAlexander Report. As explained below, AGIS’s September 21,
`
`2018 infringement contentions sufficiently support each of the theories-at-issue, and Apple
`
`should have known about the theories since at least September 18, 2017 or April 20, 2018.
`
`A.
`
`Content2 of AGIS’s September 21, 2018 Infringement Contentions with
`Respect to the ‘970 Patent, Claim 1
`
`Regarding the limitation “a predetermined network of participants, wherein each
`
`participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen
`
`display a CPU and memory,” recited in Claim 1 of the ‘970 patent, Mr. McAlexander’s
`
`explanation that a “predetermined network of participants” could include “family sharing
`
`utilizing at least the organizer’s Apple ID” is sufficiently supported by AGIS’s September 21,
`
`2018 infringement contentions. In its September 21, 2018 infringement contentions, AGIS
`
`contended that the claimed invention is practiced, in part, by Apple’s family sharing feature. As
`
`a preliminary matter, AGIS disclosed that the “Apple ID” specifies the predetermined network
`
`and is used to sign-in “to ensure that all your Apple services and devices work together
`
`seamlessly and you can access your person content from all devices.” Ex. A at A-3.
`
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 6 of 22 PageID #: 15934
`Extensive fact discovery was conducted with regards to Apple IDs and family sharing.
`
`Shortly after serving its infringement contentions, AGIS diligently pursued discovery of Apple’s
`
`
`2 AGIS presents exemplary portions of the content of AGIS infringement contentions only for
`the purposes of opposing Apple’s motion, and such examples are not intended to limit AGIS’s
`case to any particular infringement theories or to provide an exhaustive listing of the support for
`such theories.
`
`
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 7 of 22 PageID #: 15935
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`family sharing and account linking features. Exs. Q and R. On February 21, 2018, Apple made
`
`available source code specifically for family sharing. Ex. J. Apple later represented, on March
`
`10, 2018, that the same source code made available for inspection “to date… relat[ed] to the
`
`functionalities identified in AGIS’s preliminary contentions” and that it would later produce
`
`documents responsive to the testing of family sharing and account linking as identified in
`
`AGIS’s preliminary infringement contentions. Ex. S. Not only did Apple produce numerous
`
`documents in this case concerning family sharing, but Apple designated two corporate
`
`representatives to testify about the family sharing feature. Ex. T. Apple has also admitted that
`
`family sharing is an accused feature in its interrogatory responses. Ex. U. Apple’s witnesses,
`
`including its senior program manager, Mr. Rahul Zingde, confirmed that
`
`
`
` Ex. V. at 47:21-
`
`50:3.
`
`With respect to Apple ID in the context of family sharing, AGIS identifies the family
`
`sharing feature as
`
`. Ex. A at A-6, A-7, A-11, A-38, A-123, A-181. AGIS identifies the
`
`relevance of the family sharing feature to Apple’s Find My iPhone as enabling
`
`
`
`
`
`
`
`Notice of these identifications traces back to AGIS’s September 18, 2017 original infringement
`
`. Ex. A at A-3–A-7, A-11, A-38, A-123, and A-181.
`
`contentions. See, e.g., Ex. D at A2 through A5.
`
`AGIS’s September 21, 2018 infringement contentions identify additional support that
`
`explicitly discusses family sharing in the context of the ’970 Patent. First, AGIS identified
`
`iCloud services, which retrieves locations associated with an Apple ID. Ex. A at A-1. With
`
`
`
`4
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`

`

`respect to the “predetermined communication network” limitation, AGIS identified Apple ID as
`
`an account type used to sign-in and access Apple’s iCloud services. Ex. A at A-3. Second,
`
`Apple’s own public documents, one of which was cited in the September 21, 2018 infringement
`
`contentions in support of the “predetermined communication network” limitation, confirms that
`
`family sharing is an iCloud feature usable with Find My iPhone for location sharing. Ex. A at A-
`
`3 (citing https://www.apple.com/ca/legal/internet-services/icloud/en/terms.html, produced to
`
`Apple on September 18, 2017 as AGISTX_00007018, relevant excerpts attached hereto as Ex.
`
`W). The cited document states as follows:
`
`
`
`Ex. W at 7022. Third, in its September 21, 2018 infringement contentions, AGIS identifies the
`
`family sharing feature in limitations of claim 1 of the ’970 Patent relating to the “communication
`
`network” when used for “transmitting, receiving, confirming receipt, and responding to an
`
`electronic message.” Ex. A at A-4. Specifically, with respect to the “forced message alert
`
`software” limitation in the same claim, AGIS identifies family sharing for the purposes of
`
`linking devices as follows:
`
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 8 of 22 PageID #: 15936
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`
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`
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`Ex. A at A-6 through A-7. AGIS’s September 21, 2018 infringement contentions identify further
`
`support for family sharing features with citations to Apple’s source code for family sharing:
`
`
`
`
`
`5
`
`

`

`
`
`Ex. A at A-11, A-123, and A-181. Each of these references adequately support the McAlexander
`
`Report’s contentions that one of the several mechanisms for linking participants in a
`
`“predetermined communication network” includes using an Apple ID with the accused family
`
`sharing feature. Apple failed to inform the Court of these references to family sharing and, in
`
`view of at least these portions of the September 21, 2018 infringement contentions, Apple cannot
`
`reasonably argue that it was not on notice that family sharing is an accused feature within the
`
`scope of the ’970 Patent.
`
`B.
`
`Content of AGIS’s September 21, 2018 Infringement Contentions with
`Respect to the ‘055 Patent, Claims 1, 28, 41, and 54
`
`Regarding the limitation “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,” recited in Claims 1, 28, 41, and 54 of
`
`the ‘055 Patent, Mr. McAlexander’s explanation that specifying a location could include creating
`
`a “Marked Location” or dropping a pin in the Find My Friends application is sufficiently
`
`supported by AGIS’s September 21, 2018 infringement contentions. In its September 21, 2018
`
`infringement contentions, AGIS contended that “[a] user can also specify a location and symbol
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 9 of 22 PageID #: 15937
`corresponding to an entity by dropping a “pin” on the interactive map according to the
`
`geographic location of the entity,” stating as follows:
`
`
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`6
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`

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`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 10 of 22 PageID #: 15938
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`Ex. B at B-155. AGIS included screenshots of this very contention on the next page, in which
`
`Apple’s own product describes the pin drop as a “Marked Location,” as depicted below:
`
`
`
`Ex. B at B-156. Apple’s source code and user guides, which were cited in AGIS’s contentions,
`
` Ex. B at B-151, B-161, B-165.
`
`AGIS’s September 21, 2018 infringement contentions identify Apple’s Find My Friends
`
`source code modules as follows:
`
`
`
`
`
`Ex. B at B-160 to B-161; See also Ex. B at B-162. AGIS’s September 21, 2018 contentions also
`
`make specific reference to Notify features within Find My Friends as shown below:
`
`
`
`7
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`

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`Ex. B at B-79 and B-80.
`
`
`
`Ex. B at B-41. Notice of these identifications traces back to AGIS’s September 18, 2017 original
`
`infringement contentions. Ex. E at B-1, B-32, B-33, B-37, B-52, B-53.
`
`Each of these references adequately support the McAlexander Report’s contentions that
`
`the several mechanisms for “user input specifying a location and a symbol corresponding to an
`
`entity other than the first device and the second devices” include specifying a location by
`
`creating a “Marked Location” or dropping a pin and through use of the Find My Friends
`
`application. Apple failed to inform the Court of these references to Find My Friends and
`
`marking a location, and, in view of at least these portions of the September 21, 2018
`
`infringement contentions, Apple cannot reasonably argue that it was not on notice “Marked
`
`Location” feature and the Find My Friends application are within the scope of the ’055 Patent.
`
`C.
`
`Content of AGIS’s September 21, 2018 Infringement Contentions with
`Respect to the ‘838 Patent, Claims 1 and 54
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 11 of 22 PageID #: 15939
`Regarding the limitation “transmitting a message including an identifier corresponding to
`
`the group” recited in Claims 1 and 54 of the ‘838 Patent, Mr. McAlexander’s explanation that an
`
`“identifier corresponding to the group” in iMessage includes at least “the name of the group
`
`message” is sufficiently supported by AGIS’s September 21, 2018 infringement contentions. In
`
`its September 21, 2018 infringement contentions, AGIS contended that, with respect to the
`
`
`
`8
`
`

`

`relevant limitation in Claims 1 and 54, “The class
`
`(APL-AGIS-SC00000610)
`
`provides data structures and functions related to the SMS application and functionality on iOS
`
`devices. The SMS application allows users to share SMS/iMessage messages including within a
`
`group as well as messages that contain location information of one or more users,” and further
`
`that, “the class
`
`(APL-AGIS-SC00000051) provides data
`
`structures and functions such as
`
`(APL-AGIS-SC00000053) which allow the
`
`user to define a group of contacts and assign the group a name.” Ex. C at D-51-52 (emphasis
`
`added). This disclosure supports AGIS’s theory that the iMessage group can be defined by its
`
`name. Notice of these identifications traces back to AGIS’s April 20, 2018 infringement
`
`contentions. Ex. F at D-50 to 51. Apple failed to inform the Court of at least these portions of
`
`AGIS’s contentions, and Apple cannot reasonably argue that it was not on notice that “the name
`
`of the group message” was accused in the context of the ’838 Patent.
`
`III. LEGAL STANDARD
`
`Apple mischaracterizes the standard for granting a motion to strike; the relevant inquiry
`
`is whether infringement contentions were sufficiently specific to put the defendant on notice of
`
`the theories to be asserted. See Orion IP, LLC v. Staples, Inc., 407 F. Supp. 2d 815, 817-818
`
`(E.D. Tex., May 13, 2006) (“While the Patent Rules place [a] heavy burden on plaintiffs to
`
`communicate their case to defendants so that both parties may adequately prepare for claim
`
`construction and trial, defendants also have a responsibility to make sure they fully understand
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 12 of 22 PageID #: 15940
`the nature of plaintiffs’ allegations. A defendant cannot lay behind the log until late in the case
`
`and then claim it lacks notice as to the scope of the case or the infringement contentions . . . .
`
`The Patent Rules intend to strike a balance of providing fair notice to defendants without
`
`requiring unrealistic, overly factual contentions from plaintiffs, but the burden of notice the
`
`Patent Rules place on plaintiffs is intended to be a shield for defendants, not a sword.”). See also
`9
`
`
`
`

`

`Honeywell Intern. v. Acer America Corp., 655 F. Supp. 2d 650, 656 (E.D. Tex., Feb. 5, 2009)
`
`(“The purpose of PICs is not to present the Court’s construction of the terms at issue or to prove
`
`infringement. Instead, the purpose of PICs is to give the opposing party notice of the patentee’s
`
`infringement theory”); Realtime Data, LLC v. Packeteer, Inc., No. 6:08–cv–144, 2009
`
`WL 2590101, at *5 (E.D. Tex. 2009) (Explaining that PICs should be sufficiently precise to
`
`“provide a defendant with adequate notice of the plaintiff’s theories of infringement”).
`
`It is not sufficient for the movant in a motion to strike to simply allege that a theory in an
`
`expert report lacked verbatim support in infringement contentions. Anascape, Ltd. v. Microsoft
`
`Corp., Civil Action No. 9:06-CV-158, 2008 WL 7180756, *2 (E.D. Tex., May 1, 2008)
`
`(“Deciding whether invalidity contentions should be struck, or whether to allow amendments to
`
`contentions, is similar to deciding whether evidence should be excluded for discovery violations
`
`. . . Therefore, the court will consider the kinds of factors identified as important in making both
`
`types of decisions.”) (citing O2 Micro Intern. Ltd. v. Monolithic Power System, Inc., 467 F.3d
`
`1355, 1365 (Fed. Cir. 2006). In deciding whether portions of an expert report should be struck,
`
`courts in this district have considered a non-exclusive list of factors including: (1) the danger of
`
`unfair prejudice; (2) the length of the delay and its potential impact on judicial proceedings; (3)
`
`the reason for the delay, including whether it was within the reasonable control of the party
`
`responsible for the delay; (4) the importance of the particular matter, and if vital to the case,
`
`whether a lesser sanction would adequately address the other factors to be considered and also
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 13 of 22 PageID #: 15941
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`deter future violations of the court’s scheduling orders, local rules, and the federal rules of
`
`procedure; and (5) whether the offending party was diligent in seeking an extension of time, or in
`
`supplementing discovery, after an alleged need to disclose the new matter became apparent. LML
`
`Patent Corp. v. JPMorgan Chase & Co., 2011 WL 5158285, at *4 (E.D. Tex., Aug. 11, 2011);
`
`
`
`10
`
`

`

`Tyco Healthcare Group LP v. Applied Medical Resources Corp., 2009 WL 5842062, at *2 (E.D.
`
`Tex. 2009); Anascape, 2008 WL 7180756 at *3; see also Betzel v. State Farm Lloyds, 480 F.3d
`
`704, 707 (5th Cir. 2007).
`
`IV. ARGUMENT
`
`AGIS gave Apple fair and adequate notice of each allegedly new infringement theory
`
`discussed in the McAlexander Report and, in any case, Apple cannot credibly argue that a lack of
`
`notice with respect to the theories in the McAlexander Report would have been prejudicial.
`
`A.
`
`Apple Had Fair Notice of the AGIS’s Contentions as They Appeared in the
`McAlexander Report.
`
`Apple’s motion focuses only on AGIS’s November 2018 infringement contentions,
`
`improperly disregarding all prior notice received through AGIS’s September 21, 2018
`
`infringement contentions which Apple accepted without objection to timeliness or sufficiency
`
`and further without regard to AGIS’s agreement that it would not rely on those contentions to
`
`support the positions set forth in the instant motion. Apple avoids addressing the essential
`
`determination of the standard that it cites: whether it had “adequate notice of the plaintiff’s
`
`theories of infringement.” Realtime Data, LLC v. Packeteer, Inc., No. 6:08–cv–144, 2009 WL
`
`2590101, at *5 (E.D. Tex. 2009)
`
`1.
`
`AGIS’s September 21, 2018 Infringement Contentions Put Apple on
`Notice That the Apple ID defines “a predetermined network of
`participants,” Including Family Sharing Participants
`
`Mr. McAlexander’s statement “including Family Sharing utilizing at least the organizer’s
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 14 of 22 PageID #: 15942
`
`Apple ID” is adequately supported by AGIS’s September 21, 2018 infringement contentions
`
`with respect to the “a predetermined network of participants” limitation of the ’970 Patent. See
`
`supra 4-8. Indeed, AGIS accused Apple’s family sharing feature which utilizes Apple ID to link
`
`devices. AGIS identified Apple ID as an account type used to sign-in and access Apple’s iCloud
`
`
`
`11
`
`

`

`services, which including family sharing feature. Ex. A at A-1, A-3. In support of its
`
`“predetermined communication network” contentions, AGIS included an explicit reference to
`
`Apple’s own public document which confirms that family sharing is an iCloud feature usable
`
`with Find My iPhone for location sharing. Ex. A at A-3 (citing Ex. W). AGIS further identified,
`
`with respect to the limitations relating to “transmitting, receiving, confirming receipt, and
`
`responding to an electronic message” (Ex. A at A-4) that AGIS accused the family sharing
`
`feature in order to link devices. Ex. A at A-6 through A-7. Additional support for family
`
`sharing features includes specific citations to Apple’s source code for family sharing with respect
`
`to participating devices. Ex. A at A-11, A-123, and A-181. Apple also admitted that family
`
`sharing is an accused feature in its interrogatory responses. Ex. U. Apple failed to inform the
`
`Court of its admissions and the references to family sharing in AGIS’s September 21, 2018
`
`infringement contentions. Apple cannot credibly argue that it was not put on notice of the
`
`contents of its own terms of service when AGIS explicitly referenced them. See Orion IP, LLC
`
`v. Staples, Inc., 407 F. Supp. 2d 815, 818 (E.D. Tex., May 13, 2006) (charging Defendant with
`
`knowledge of its own websites for purposes of notice from plaintiff’s infringement contentions).
`
`Thus, Mr. McAlexander’s assertions were within the scope and content of AGIS’s September 21,
`
`2018 infringement contentions, and Apple had fair and adequate notice.
`
`2.
`
`AGIS’s September 21, 2018 Infringement Contentions Put Apple on
`Notice That It Regards Dropping a Pin in Find My Friends as an
`Element of Infringement, and That a Location Marked With a Pin
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 15 of 22 PageID #: 15943
`and a “Marked Location” Are Synonymous
`
`Mr. McAlexander’s allegedly new ‘055 theories are that AGIS’s extensive infringement
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`contentions regarding “dropping a pin” extended to doing so in the Find My Friends app, and
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`separately, that a “Marked Location” may be included in the meaning of a location marked by a
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`dropped pin. See supra 8-12. AGIS’s analysis with respect to the “receiving user input…”
`
`
`
`12
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`

`

`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 16 of 22 PageID #: 15944
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`limitation was explicitly made with respect to “[e]ach of the Accused Products,” which included,
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`“Find My Friends.” Ex. B at B-2 and B-155. AGIS’s September 21, 2018 infringement
`
`contentions identify Apple’s source code in support of
`
`
`
`(Ex. B at B-160 through B-162) and specific references to and screenshots depicting the Notify
`
`feature within Find My Friends (Ex. B at B-41, B-79, and B-80). Accordingly, Mr.
`
`McAlexander did not raise a new theory of infringement by exemplifying a previously accused
`
`product for infringing in the same way and AGIS’s September 21, 2018 infringement contentions
`
`nevertheless provide adequate support. Additionally, AGIS’s contentions refer synonymously to
`
`drop a “pin” and mark[ed] a location on the map. Ex. B at B-155. Apple takes issue with word-
`
`choice such as “specified” location versus “marked” location. However, AGIS’s September 21,
`
`2018 contentions include screenshots depicting a Marked Location (Ex. B at B-156) and
`
`references to source code and user guides which refer to location pins as “markers.” Ex. B at B-
`
`151, B-161, B-165. Apple failed to inform the Court of these references to a Marked Location
`
`and the Find My Friends application in AGIS’s September 21, 2018 infringement contentions.
`
`Mr. McAlexander’s positions were within the scope and content of AGIS’s September 21, 2018
`
`infringement contentions and Apple had fair and adequate notice.
`
`3.
`
`AGIS’ September 21, 2018 Infringement Contentions Put Apple on
`Notice That It Regards the Name of a Group Message in iMessage as
`“an identifier corresponding to the group”
`
`
`
`Mr. McAlexander’s allegedly new theory with respect to the ‘838 Patent is that the name
`
`of a group message is “an identifier corresponding to the group.” Dkt. 232 at 2. AGIS’s April
`
`20, 2018 and September 21, 2018 infringement contentions recite source code showing that a
`
`user may name an iMessage group, and that that name may be used to identify that iMessage
`
`group. Ex. C at D-51 to 52; Ex. F at D-50 to 51; see supra 12-13. Apple makes no argument as
`
`to how it avoided noticing that the “name” of an Accused Product could be an “identifier.” Dkt.
`13
`
`
`
`

`

`232 at 2. Apple failed to inform the Court of the source code references to the name of the group
`
`message in AGIS’s September 21, 2018 infringement contentions. Thus, Mr. McAlexander’s
`
`assertions were within the scope and content of AGIS’s contentions and Apple had fair and
`
`adequate notice.
`
`B.
`
`Apple Cannot Credibly Argue That It Was Prejudiced by Lack of Notice
`Pertaining to Mr. McAlexander’s Allegedly New Theories
`
`Apple misleadingly argues that “prejudice is not relevant to the P.R. 3-6(a)(1) analysis,”
`
`apparently failing to consider that analysis of a motion to strike an expert supported by numerous
`
`undisputed infringement contentions exceeds the scope of a P.R. 3-6(a)(1) analysis. Dkt. 232 at
`
`12. Courts in this district have held the danger of prejudice as the foremost of the non-exclusive
`
`factors in deciding whether to grant a motion to strike. See e.g., LML Patent Corp. v. JPMorgan
`
`Chase & Co., 2011 WL 5158285, at *4 (E.D. Tex. Aug. 11, 2011); Tyco Healthcare Group LP v.
`
`Applied Medical Resources Corp., 2009 WL 5842062, at *2 (E.D. Tex. 2009); Anascape, 2008
`
`WL 7180756 at *3; see also Betzel v. State Farm Lloyds, 480 F.3d 704, 707 (5th Cir. 2007).
`
`Furthermore, in the very case which Apple cites for the proposition that prejudice is irrelevant
`
`the Court considered “potential prejudice in allowing the thing that would be excluded.” Mears
`
`Techs., Inc. v. Finisar Corp., No. 2:13-CV-376-JRG, 2014 WL 12605571, at *1 (E.D. Tex. Oct.
`
`6, 2014). Thus, the risk of unfair prejudice is a factor that should be considered in deciding
`
`whether to strike portions of an expert report. AGIS vigorously disagrees with Apple’s assertion
`
`Case 2:17-cv-00513-JRG Document 253 Filed 01/02/19 Page 17 of 22 PageID #: 15945
`that it was not put on notice of Mr. McAlexander’s theories, but the possible prejudice inflicted
`
`by the three allegedly new theories in the McAlexander report is extremely low, even
`
`independent of notice.
`
`With respect to Apple’s opportunity to investigate (Dkt. 232 at 12-13), Apple’s assertions
`
`lack merit as all theories relate to information that has necessarily come into focus due to AGIS’s
`
`
`
`14
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`

`

`infringement contentions. See supra 2-13. Additionally, with respect to the ’970 Patent, Apple
`
`has already performed an extensive investigation into family sharing and has already admitted
`
`that family sharing is an accused feature. Ex. U. Apple reviewed and produced its own source
`
`code for family sharing, provided written interrogatory answers about family sharing, and
`
`prepared at least three witnesses to testify about family sharing. Exs. J, T, U, W. With respect to
`
`the ’055 Patent and the ’838 Patent, Apple presents no coherent argument as to why the word
`
`choice of a “marked location” versus a “dropped pin,” or how an obvious identifier such