Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 1 of 22 PageID #: 17999
`
`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.
`
`
`
`§
`§
`§
`§
`
`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE IN
`OPPOSITION TO APPLE INC.’S SEALED MOTION FOR SUMMARY JUDGMENT
`OF INVALIDITY OF U.S. PATENT NOS. 9,467,838; 9,445,251;
`9,408,055; AND 9,749,829 UNDER 35 U.S.C. § 101 (DKT. 229)
`
`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 2 of 22 PageID #: 18000
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`
`I.
`
`II.
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`III.
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`IV.
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`V.
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`TABLE OF CONTENTS
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`Page(s)
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`RESPONSE TO STATEMENT OF ISSUES ..................................................................... 1
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`RESPONSE TO APPLE’S STATEMENT OF UNDISPUTED MATERIAL
`FACTS ................................................................................................................................ 1
`
`A.
`
`B.
`
`C.
`
`The Present Lawsuit ................................................................................................ 1
`
`The Idea of a Map Room: Situational Awareness, Communications,
`Command and Control, And Common Operational Picture ................................... 1
`
`The Asserted Patents ............................................................................................... 2
`
`1.
`
`2.
`
`3.
`
`The Claimed Software ................................................................................ 2
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`Hardware Components Recited in the Claims ............................................ 3
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`Prototype Software...................................................................................... 4
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`D.
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`The Accused Products............................................................................................. 4
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`COUNTER-STATEMENT OF UNDISPUTED MATERIAL FACTS ............................. 4
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`LEGAL STANDARDS ...................................................................................................... 6
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`ARGUMENT ...................................................................................................................... 7
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`A.
`
`B.
`
`C.
`
`Background of the Patents ...................................................................................... 8
`
`Alice Step 1: The Asserted Claims Are Not Directed To An Abstract
`Idea .......................................................................................................................... 9
`
`Alice Step 2: The Asserted Claims Disclose an Inventive Concept that
`is Substantially More than an Abstract Idea ......................................................... 13
`
`VI.
`
`CONCLUSION ................................................................................................................. 15
`
`
`
`i
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 3 of 22 PageID #: 18001
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .....................................................................................................7, 9, 13
`
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`133 S. Ct. 2107 (2013) ...............................................................................................................7
`
`Baker v. Putnal,
`75 F.3d 190 (5th Cir. 1996) .......................................................................................................6
`
`Bascom Global Internet Servs. v. AT&T Mobility,
`827 F.3d 1341 (2016) ...............................................................................................................14
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) ...................................................................................................................7
`
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) ...................................................................................................................7
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)............................................................................................9, 11
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`879 F.3d 1299 (Fed. Cir. 2018)................................................................................................12
`
`Funk Bros. Seed Co. v. Kalo Inoculant Co.,
`333 U.S. 127 (1948) ...................................................................................................................7
`
`Intellectual Ventures I LLC v. J. Crew Grp., Inc.,
`No. 6:16-CV-196-JRG 2016 WL 4591794, at *6 (E.D. Tex. Aug. 24, 2016) .........................14
`
`Intellectual Ventures II LLC v. Fedex Corp. et al.,
`No. 2:16-cv-00980, Dkt. No. 526 at 20-21 (E.D. Tex. May 10, 2018) .............................11, 12
`
`Le Roy v. Tatham,
`14 How. (U.S.) 156, 174-75 (1853) ...........................................................................................7
`
`Perdiemco, LLC v. Industrack LLC,
`No. 2:15-CV-1216-JRG-RSP 2016 WL 5719697, at *7 (E.D. Tex. Sept. 21,
`2016), report and recommendation adopted, No. 2:15-CV-727-JRG-RSP,
`2016 WL 5475707 (E.D. Tex. Sept. 29, 2016) ........................................................................12
`
`United States v. Renda Marine, Inc.,
`667 F.3d 651 (5th Cir. 2012) .....................................................................................................6
`
`ii
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 4 of 22 PageID #: 18002
`
`Statutes
`
`35 U.S.C. § 101 ...................................................................................................................... passim
`
`
`
`iii
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 5 of 22 PageID #: 18003
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`
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`AGIS Software Development LLC (“AGIS”) hereby submits its Response in Opposition
`
`to Defendant Apple Inc.’s (“Apple”) Sealed Motion for Summary Judgment of Invalidity of U.S.
`
`Patent Nos. 9,467,838; 9,445,251; 9,408,055; and 9,749,829 Under 35 U.S.C. § 101 (Dkt. 229).
`
`AGIS respectfully submits that each of Apple’s arguments lacks merit and Apple’s motion
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`should be denied in its entirety.
`
`I.
`
`RESPONSE TO STATEMENT OF ISSUES
`
`1.
`
`Whether the asserted claims of U.S. Pat. Nos. 9,467,838; 9,445,251; 9,408,055;
`
`and 9,749,829 are directed to patent-eligible subject matter under 35 U.S.C. § 101.
`
`Response: Whether a “map room” is a non-abstract idea; whether the asserted claims of
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`U.S. Pat. Nos. 9,467,838 (the “’838 Patent”); 9,445,251 (the “’251 Patent”); 9,408,055 (the
`
`“’055 Patent”); and 9,749,829 (the “’829 Patent”) are directed to more than merely a map room;
`
`and whether the asserted claims of U.S. Pat. Nos. 9,467,838; 9,445,251; 9,408,055; and
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`9,749,829 claim an inventive concept.
`
`II.
`
`RESPONSE TO APPLE’S STATEMENT OF UNDISPUTED MATERIAL FACTS
`
`A.
`
`1.
`
`The Present Lawsuit
`
`Response: Undisputed that the claims set forth in paragraph 1 are asserted in this
`
`case. Disputed to the extent that Apple attempts to characterize the dependent claims as
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`depending from the bolded independent claims.
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`2.
`
`B.
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`3.
`
`Response: Undisputed
`
`The Idea of a Map Room: Situational Awareness, Communications,
`Command and Control, And Common Operational Picture
`
`Response: Disputed.
`
` Apple’s summary
`
`in paragraph 3
`
`is a gross
`
`oversimplification of the technology at issue. Whether command and control systems were
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`known in the art is an issue of material fact in dispute.
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`
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 6 of 22 PageID #: 18004
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`4.
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`Response: Disputed. Paragraph 4 includes numerous hearsay articles which are
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`inconsistent with Apple’s purported summary. For example, whether a World War II “war
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`room” is a “network” or whether it provided situational awareness, communications, and
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`command-and-control are questions of material fact in dispute.
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`5.
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`Response: Disputed. Whether the plexiglass, push-pin, and grease pencil maps
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`utilized by the U.S. Army were “command-and-control systems” that provided a common
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`operational picture and situational awareness is a disputed material fact. The named inventor of
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`the Patents-in-Suit, Malcolm Beyer, indicated at his deposition that the naval systems he
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`described did not work “with any real accuracy,” and that the aircraft system “wasn’t as
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`accurate.” Dkt. 229-10 at 352-353.
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`6. Response: Disputed. Whether any systems existed that could display location
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`information on interactive maps is an alleged material fact in dispute. AGIS further disputes this
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`statement to the extent that Apple implies that Mr. Blackwell’s statement is limiting on the scope
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`of the claimed inventions.
`
`C.
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`7.
`
`The Asserted Patents
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`Response: Disputed. While the Patents-in-Suit include these statements, Apple
`
`ignores the fact that at least U.S. Patent No. 7,031,728 (the “’728 Patent”) is incorporated by
`
`reference and includes numerous other statements regarding the inventions contained and
`
`claimed therein.
`
`1.
`
`The Claimed Software
`
`8.
`
`Response: Undisputed that the quoted portions of the specification are included in
`
`the Patents-in-Suit. Disputed that the claimed inventions are limited to these quoted portions.
`
`9.
`
`Response: Disputed.
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` While AGIS does not dispute
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`that
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`
`, AGIS disputes
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`2
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 7 of 22 PageID #: 18005
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`Apple’s characterizations of these statements. Apple’s characterizations focus on fractional
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`elements in isolation.
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` Accordingly, whether AGIS designed the first application to
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`allow users to interact with a symbol on a map and send text to a device corresponding to the
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`symbol is a material fact in dispute precluding summary judgment.
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`10.
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`Response: Disputed.
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`
`
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`
`
` AGIS disputes
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`Apple’s characterizations of these statements. Whether AGIS designed the first application to
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`allow users to interact with a symbol on a map and send IP-based messages to a device
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`corresponding to the symbol is a material fact in dispute precluding summary judgment.
`
`2.
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`Hardware Components Recited in the Claims
`
`11.
`
`Response: Disputed. The claims recite numerous hardware components such as
`
`an “interactive display.” See, e.g., Dkt. 229-4 at claim 24. The dependent claims require
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`additional hardware components such as “a Global Positioning Satellite (GPS) receiver.” See,
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`e.g. Dkt. 229-4 at claim 35.
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`12.
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`Response: Disputed.
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` AGIS disputes
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`Apple’s characterizations of these statements. For example, Apple’s statements that “the devices
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`3
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 8 of 22 PageID #: 18006
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`recited in the claims were not the first devices that could send, receive, and display location
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`information from other devices in a group” does not accurately reflect the record and this
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`statement remains in dispute.
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`13.
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`Response: Disputed.
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` AGIS disputes
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`Apple’s characterizations of these statements. It is AGIS’s position that Mr. Malcolm Beyer and
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`Mr. Christopher Rice are the inventors of the claimed servers.
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`3.
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`Prototype Software
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`14.
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`Response: Undisputed that AGIS and its expert made the quoted statements.
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`Disputed to the extent Apple has misconstrued these facts to imply that the invention of patent
`
`eligible software requires the use of a previously-unknown operating system or a previously-
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`unknown programming language. AGIS also disputes this paragraph to the extent it conflates
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`enablement with patentable subject matter.
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`D.
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`15.
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`16.
`
`17.
`
`18.
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`19.
`
`The Accused Products
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`Response: Undisputed that AGIS has accused at least these Apple products.
`
`Response: Undisputed that AGIS has accused at least these Apple products.
`
`Response: Undisputed that AGIS has accused at least these Apple products.
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`Response: Undisputed that AGIS has accused at least these Apple products.
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`Response: Undisputed that AGIS has accused at least these Apple products.
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`III. COUNTER-STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`4
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 9 of 22 PageID #: 18007
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`2.
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`1
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`3.
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`The ’728 Patent is incorporated by reference in each of the Asserted Patents. Dkt
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`229-5, ’055 Patent at 2:1-4; Dkt. 229-4, ’251 Patent at 2:4-7; Dkt. 229-3, ’838 Patent at 2:1-4;
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`Dkt. 229-6, ’829 Patent at 2:4-7.
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`4.
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`The ’728 Patent states that the field of the invention “relates generally to an
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`integrated communications system using a plurality of cellular PDA/GPS phones for the
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`management of a group of people through use of a communications net and, specifically, provide
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`each user with a cellular phone that has features that permit all the users to know each other’s
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`location and status, to rapidly call and communicate data among the users by touching display
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`screen symbols and to enable the users to easily access data concerning other users and other
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`database information.” Ex. C, ’728 Patent at 1:6-15.
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`5. The ’728 patent states
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`1 References to Exhibits A-C refer to the Exhibits to the Declaration of Alfred R. Fabricant
`attached hereto
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`5
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 10 of 22 PageID #: 18008
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`
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`Ex. C, at Fig. 1; 2:18-54.
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`IV.
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`LEGAL STANDARDS
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`Summary judgment is proper if the pleadings, depositions, answers to interrogatories, and
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`admissions on file, together with the affidavits, if any, show that there is no genuine issue as to
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`any material fact and that the moving party is entitled to judgment as a matter of law. Baker v.
`
`Putnal, 75 F.3d 190, 198 (5th Cir. 1996). In considering a summary judgment motion, the court
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`must “view the evidence in the light most favorable to the non-moving party.” United States v.
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`Renda Marine, Inc., 667 F.3d 651, 655 (5th Cir. 2012).
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`A patent may be obtained for “any new and useful process, machine, manufacture, or
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`composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Thus,
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`Section 101 specifies four independent categories of inventions or discoveries that are eligible
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`for protection: (1) processes, (2) machines, (3) manufactures, and (4) compositions of matter.
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`6
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 11 of 22 PageID #: 18009
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`Bilski v. Kappos, 561 U.S. 593, 601 (2010). As the Supreme Court recognized, “‘Congress
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`plainly contemplated that the patent laws would be given wide scope’” in the Patent Act of 1952,
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`and Congress took that approach “to ensure that ‘ingenuity should receive a liberal
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`encouragement.’” Id. (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980). With
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`Congress’s objectives in mind, the Supreme Court has historically recognized three limited
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`exceptions to patent eligible subject matter: “laws of nature, natural phenomena, and abstract
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`ideas.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013);
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`Chakrabarty, 447 U.S. at 309; see also Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127,
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`130 (1948); Le Roy v. Tatham, 14 How. (U.S.) 156, 174-75 (1853). Courts now analyze
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`whether a patent is directed to an “abstract idea” under 35 U.S.C. § 101 pursuant to a two-step
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`process (hereinafter “Alice Step One” and “Alice Step Two”), as described below in Sections
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`VI.B and VI.C. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
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`V.
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`ARGUMENT
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`Apple seeks summary judgment that four of the asserted patents, the ’251 Patent, the ’838
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`Patent, the ’055 Patent, and the ’829 Patent (the “Asserted Patents”), are invalid as not directed
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`to patent eligible subject matter.2 Apple’s arguments fail for numerous reasons: first, the alleged
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`“abstract concept” of a digital map room is a non-abstract, patent eligible subject; second, even if
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`the alleged digital map-room were an “abstract concept,” the Asserted Patents are directed to
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`more than merely a digital map-room and provide a technical solution to a technical problem and
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`thus the claims are not an abstract concept under Step 1 of Alice; third, even if the claims were
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`directed to an abstract concept under Step 1 of Alice, summary judgment is inappropriate here,
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`where the claims include an inventive concept under Step 2 of Alice or, at the very least, where
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`questions of fact remain that preclude summary judgment; and fourth, Apple did not carry its
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`2 Apple did not move for summary judgment of invalidity with regard to the ’970 Patent.
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`7
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 12 of 22 PageID #: 18010
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`burden of representativeness and its arguments fail with regard to the claims not specifically
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`argued.
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`A.
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`Background of the Patents
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`Each of the Asserted Patents claim priority to U.S. Patent No. 7,031,728 and each
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`incorporates the specification of the ’728 Patent by reference. Dkt. 229-5, ’055 Patent at 2:1-4;
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`Dkt. 229-4, ’251 Patent at 2:4-7; Dkt. 229-3, ’838 Patent at 2:1-4; Dkt. 229-6, ’829 Patent at 2:4-
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`7. Apple’s motion makes no mention of the ’728 Patent and ignores the disclosure that is
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`incorporated by reference. The Field of the Invention generally states that one of the purposes of
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`the invention provides “each user with a cellular phone that has features that permit all the users
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`to know each other’s locations and status” and “to rapidly call and communicate data among the
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`users by touching display screen symbols.” Ex. C, ’728 Patent at 1:9-13.
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`The specification of the ’728 Patent describes prior art systems as utilizing a
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`“cumbersome process.” Id. at 1:37-67. The ’728 Patent describes some of the benefits of the
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`invention as (a) the ability to report location information and display that information on a map
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`display, (b) the ability to exchange other entities of interest, (c) the ability to make rapid voice
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`and data calls, (d) the ability to make rapid conference calls, and (e) the ability to remotely
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`control the cellular phone/PDA/GPS systems. Id. at 2:18-52. Each of these goals is
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`accomplished by “touching the display screen at [the] location.” Id. at 1:50-51. An excerpt of
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`the relevant portion of the specification is set forth above along with the exemplary software and
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`hardware configurations of Figure 1. See supra 7.
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`Additionally, while the Asserted Patents state that the “heart of the invention lies in the
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`software application,” the specification further indicates that the software must run on the
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`integrated “display function screen.” Ex. C, ’728 Patent at 7:61-63. Further, this display
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`includes “various areas of interest the particular local map section.” Id. at 7:63-67. The ’728
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`8
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 13 of 22 PageID #: 18011
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`Patent provides additional exemplary embodiments demonstrating how the software can interact
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`with the display to provide map-based interactivity. Id. at 7:60-9:31.
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`While the ’728 Patent generally describes solving problems in the art using groups and
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`“nets,” Ex. C, ’728 Patent at 10:24-30, the ’251 Patent specification describes solutions to
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`problems where groups are utilized via a Server. Dkt. 229-4,’251 Patent at 3:43-45.
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`B.
`
`Alice Step 1: The Asserted Claims Are Not Directed To An
`Abstract Idea
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`Apple grossly oversimplifies the technology of the Asserted Claims and incorrectly
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`characterizes them as the “end result of performing the functions of a Map Room.” Dkt. 229 at
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`12. First, a “Map Room,” as characterized by Defendants is a physical structure. See, e.g., Dkt.
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`229 at p. 4, Photo 1. With regard to computerized map rooms, Apple states that “a situational
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`awareness, communications, and command-and-control system” is abstract. The Federal Circuit
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`has cautioned that “describing the claims at such a high level of abstraction and untethered from
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`the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish,
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`LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Defendant’s broad reading, as
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`cautioned by the Federal Circuit in Enfish, would capture all command-and-control systems,
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`indicating that Defendant has classified the abstract idea at an inappropriately high level.
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`Second, even if Apple were correct that a Map Room is an abstract concept, the
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`inventions claimed in the Asserted Patents provide specific implementations of solutions to
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`technical problems in the field of command-and-control systems and are thus not directed to an
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`abstract idea. See e.g., Enfish, 822 F.3d at 1339. The claims here are directed to more than mere
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`general purpose computer components and Apple’s summary of the claims’ scope ignores
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`numerous limitations that are central to the patents’ solutions. For example, with regard to
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`9
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`

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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 14 of 22 PageID #: 18012
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`Claim 1 of the ’251 Patent, Apple’s summary on pages 12-13 of its Motion ignores the
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`highlighted items below:
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`1. A computer-implemented method comprising:
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`with a first device, receiving a message from a second device, wherein the message
`relates to joining a group;
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`based on receiving the message from the second device, participating in the group,
`wherein participating in the group includes sending first location information to
`a server and receiving second location information from the server, the first
`location information comprising a location of the first device, the second location
`information comprising a plurality of locations of a respective plurality of
`second devices included in the group;
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`presenting, via an interactive display of the first device, a first interactive,
`georeferenced map and a plurality of user-selectable symbols corresponding to the
`plurality of second devices, wherein the symbols are positioned on the first
`georeferenced map at respective positions corresponding to the locations of the
`second devices, and wherein the first georeferenced map includes data relating positions
`on the first georeferenced map to spatial coordinates;
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`sending, from the first device to the server, a request for a second georeferenced map
`different from the first georeferenced map, wherein the request specifies a map
`location;
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`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;
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`presenting, via the interactive display of the first device, the second georeferenced map
`and the plurality of user-selectable symbols corresponding to the plurality of second
`devices, wherein the symbols are positioned on the second georeferenced map at
`respective positions corresponding to the locations of the second devices; and
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`identifying user interaction with the interactive display selecting one or more of the user-
`selectable symbols corresponding to one or more of the second devices and positioned
`on the second georeferenced map and user interaction with the display specifying an
`action and, based thereon, using an Internet Protocol to send data to the one or more
`second devices via the server,
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`wherein the first device does not have access to respective Internet Protocol addresses of
`the second devices.
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`Dkt. 229 at 12-13 (bold emphasis in original, highlighting added for comparison).
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`10
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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 15 of 22 PageID #: 18013
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`As can be seen from the comparison above, Apple ignores the limiting features such as
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`“identifying user interaction with the interactive display” to “select[] one or more of the user-
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`selectable symbols.” Id. As described above in the Statement of Facts, this interactive map
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`display with user-selectable symbols is described as solving numerous shortcomings with the
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`prior art. See, e.g., Ex. C at 2:18-3:20 (describing “touching the display screen” at the “location
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`on the PDA display.”). The limitations related to the interactive map-based display are
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`inconsistent with the allegedly abstract Map Room where communication based on interaction
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`with display symbols was not possible.
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`Moreover, the improvements of the claimed inventions, like the improvements in Enfish,
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`overcome technical problems with communication systems. See Enfish, 822 F.3d at 1339
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`(specific implementation of a solution to a problem is not an abstract idea); see also Intellectual
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`Ventures II LLC v. Fedex Corp. et al., No. 2:16-cv-00980, Dkt. No. 526 at 20-21 (E.D. Tex. May
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`10, 2018) (holding that invention directed towards overcoming technological problem with
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`machine scanners was not patent ineligible). By way of example, the specification of the '728
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`Patent
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`indicates how
`
`the
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`location sharing and map-based communications overcome
`
`shortcomings in the prior art, such as those in U.S. Patent Application No. 2003/0139150 which
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`required a “keypad with telephone functions” and did not provide for “displaying the location of
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`other similarly equipped systems,” “making a call by touching the display screen at a net
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`participant’s symbol,” or “sending text messages, photographs or videos by touching the net
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`participant(s)’ symbol(s) on the display screen.” Id.
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`Apple’s argument that the claims are the end result of performing the “functions of a Map
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`Room” is essentially a re-hash of Apple’s failed Markman positions where Apple argued that the
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`claims were governed by § 112(6) because they were “result-oriented.” See Dkt. 205 at 31. The
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`Court did not adopt Defendants’ “result-oriented” argument at Markman and held that the claims
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`themselves were not governed by § 112(6) because they set forth algorithms. Dkt. 205 at 32.
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`Apple makes the same mistake in the context of its § 101 motion and again fails to appreciate the
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`ordered steps of the claims; this mistake is fatal. In Finjan v. Blue Coat Systems, the Federal
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`Circuit confirmed that, while claiming a result is not patentable, claims are not abstract where the
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`claims “recite specific steps.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed.
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`Cir. 2018). The claims here similarly recite specific steps and are thus not directed to an abstract
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`concept.
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`
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`Regarding the remaining claims, Apple ignores differences in claim scope which are
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`material to the analysis. For example, the Asserted Claims of the ’055 Patent require
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`“facilitating initiation of Internet Protocol (IP) based communication between the first device and
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`the respective second devices by using respective telephone numbers to send, from the first
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`device to the second devices, respective Short Message Service (SMS) messages including a
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`telephone number of the first device and information usable by the respective second device to
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`send IP-based communication to the first device.” See Dkt. 299-5 at independent Claim 1.
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`Apple does not even attempt to explain how this facilitation of IP communication utilizing SMS
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`messages, on its face a technical solution to a technical problem, is captured by the alleged
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`abstract concept of a “Map Room.” Similarly with regard to the ’838 Patent, Apple ignores the
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`technical solution of “sending, to a second server, a request for a second georeferenced map data
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`different from the first georeferenced map data.” See Dkt. 299-3 at independent Claim 54.
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`Apple bears the burden of demonstrating representativeness, and it has failed to carry that burden.
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`See, e.g., Intellectual Ventures II, No. 2:16-cv-00980-JRG, Dkt. No. 526 at 9-10; Perdiemco,
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`LLC v. Industrack LLC, No. 2:15-CV-1216-JRG-RSP 2016 WL 5719697, at *7 (E.D. Tex. Sept.
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`Case 2:17-cv-00513-JRG Document 272 Filed 01/08/19 Page 17 of 22 PageID #: 18015
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`21, 2016), report and recommendation adopted, No. 2:15-CV-727-JRG-RSP 2016 WL 5475707
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`(E.D. Tex. Sept. 29, 2016).
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`
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`Finally, Apple discusses statements made by AGIS’s expert Dr. Carbonell in a
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`declaration submitted in connection with AGIS’s Markman briefing. However, Apple’s
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`argument appears to delve into enablement as opposed to inventiveness. Dkt. 229 at 16. Whether
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`implementing the claims would have involved “routine programming” is irrelevant to the
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`patentability analysis. Apple cites to no case law to support the proposition that “routine
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`programming” results in an abstract concept.
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`Accordingly, this Court should determine that the Asserted Claims are not directed to an
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`abstract idea.
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`C.
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`Alice Step 2: The Asserted Claims Disclose an Inventive Concept
`that is Substantially More than an Abstract Idea
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`Even if the Court finds that the Asserted Claims are directed to an abstract idea in Step 1,
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`then in Step 2 the Court must determine whether it recites meaningful limitations that transform
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`the abstract idea into a patent-eligible invention. Defendant’s Motion should be denied because
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`the limitations of the Asserted Claims suffice to make that transformation at least when taking
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`into account the ordered combination of steps.
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`In the introductory paragraph on page 17 of Apple’s brief, Apple states that it will show:
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`Second, there can be no genuine dispute that, considered together as an ordered
`combination, those claim limitations do not recite an improvement in computer
`technology.
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`Dkt. 229 at 17 (emphasis in original). However, Apple fails to address this point at all. Instead,
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`Apple’s argument addresses the scope of AGIS’s infringement case, which has no bearing on the
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`patentability analysis. Apple’s failure to substantively address whether the claims’ ordered
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`combinations of steps means that Apple cannot carry its heavy burden and at least this failure is
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`fatal to Apple’s motion and the motion should be denied.
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`
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`Additionally, as AGIS discussed above, the claims provide numerous improvements over
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`the prior art. Apple incorrectly states that “only a single challenge” is associated with the claims.
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`For example, Apple neglects to consider the disclosure of the ’728 Patent which is incorporated
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`by reference. In the ’728 Patent, as described above, numerous shortcomings of the prior art are
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`described and these shortcomings are addressed by the inventive arrangements of the claims
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`which include, e.g., map-based communication with interactive symbols. Ex. C at 2:18-3:20
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`Further, the claims of the Asserted Patents do not raise the concerns the Court alluded to
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`in Bascom. For example, “[t]he claims do not merely recite the abstract idea . . . along with the
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`requirement to perform it on the Internet. . . .” Bascom Global Internet Servs. v. AT&T Mobility,
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`827 F.3d 1341, 1350 (2016). “Nor do the claims preempt all ways of [performing the idea] on
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`the Internet; rather, they recite a specific, discrete implementation. . . .” Id. That specific,
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`discrete implementation comprises the claim elements discussed above.
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`
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`Finally, it remains Apple’s burden to demonstrate that the patented inventions do not
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`constitute inventive concepts, a burden Apple cannot meet, particularly where it has not cited to
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`any evidence that the claimed arrangements were well-known, conventional, or generic. See,
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`e.g., Intellectual Ventures I LLC v. J. Crew Grp., Inc., No. 6:16-CV-196-JRG 2016 WL
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`4591794, at *6 (E.D. Tex. Aug. 24, 2016) (“Having closely considered the ’324 Patent and the
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`parties’ arguments, the Court concludes J. Crew has not met its burden under the Alice
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`framework. J. Crew takes an overly generalized view of the claim language that vitiates
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`meaningful limitations.”). Additionally, because there are unresolved issues of material fact,
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`particularly with regard to whether the claims are inventive concepts, summary judgment is
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`inappropriate and AGIS disputes numerous “facts” alleged by Apple in its Motion. See supra 5-
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`6.
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`Accordingly, this Court should fi