Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 1 of 14 PageID #: 18248
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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` Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC., et al.,
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` Defendants.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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` Plaintiff,
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`v.
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`APPLE INC.,
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` Defendant.
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`§
`§
`§
`§
`§
`§
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`§
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`§
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`§
`§
`§
`§
`§
`§
`§
`§
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`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`
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`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`APPLE INC.’S OPPOSITION TO DKT. NO. 236, AGIS SOFTWARE DEVELOPMENT
`LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO INVALIDITY
`OVER THE FBCB2 SYSTEM
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 2 of 14 PageID #: 18249
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`I.
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`II.
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1
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`RESPONSE TO AGIS’S STATEMENT OF UNDISPUTED MATERIAL
`FACTS .................................................................................................................................1
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`A.
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`B.
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`Apple’s Statement Of Undisputed Material Facts ...................................................1
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`Response To AGIS’s Statement Of Undisputed Material Facts ..............................2
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`III.
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`RESPONSE TO AGIS’S STATEMENT OF ISSUE TO BE DECIDED ...........................3
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`IV.
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`LEGAL STANDARD ..........................................................................................................3
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`V.
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`ARGUMENT .......................................................................................................................4
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`A.
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`B.
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`C.
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`AGIS Is Not Entitled To Summary Judgment Even If Its Motion To Strike
`The “Dynamically Elected Servers” Theory (Dkt. No. 233) Is Granted. ................4
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`AGIS Is Not Entitled To Summary Judgment Even If Its Motion To Strike
`Allegedly New Invalidity Theories (Dkt. No. 234) Is Granted. ..............................6
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`No Support Exists For AGIS’s Request That The Court Preclude Apple
`From Raising Evidence Or Testimony Associated With The FBCB2
`System At Trial. .......................................................................................................8
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`VI.
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`CONCLUSION ....................................................................................................................8
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`i
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 3 of 14 PageID #: 18250
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`Cases
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`TABLE OF AUTHORITIES
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`Pages
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`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ............................................................................................................ 3
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`Atlas Powder Co. v. Ireco, Inc.,
`190 F.3d 1342 (Fed. Cir. 1999)........................................................................................... 3
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`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001)........................................................................................... 4
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`Rules
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`Fed. R. Civ. P. 56(c) ....................................................................................................................... 3
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`ii
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 4 of 14 PageID #: 18251
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`TABLE OF EXHIBITS
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`Exhibit Number
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`Description
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`Ex. 1
`Ex. 2
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`Ex. 3
`Ex. 4
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`Ex. 5
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`Excerpts of Expert Report of Neil Siegel
`Excerpts of Apple’s Amended Initial and Additional Disclosures
`(served April 16, 2018)
`Excerpts of AGIS Notice of Subpoena to Neil Siegel
`Neil Siegel’s Response to Subpoena of AGIS Software Development,
`LLC
`Excerpts of Invalidity Expert Report of Dr. Paul Clark
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`iii
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 5 of 14 PageID #: 18252
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`I.
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`INTRODUCTION
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`AGIS’s Motion for Partial Summary Judgment of No Invalidity Over the FBCB2 System
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`(Dkt. No. 236) depends on the Court granting AGIS’s motions to strike portions of the expert
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`report of Dr. Neil Siegel (Dkt. Nos. 233, 234). Both of AGIS’s motions to strike should be denied,
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`for reasons Apple explains fully in its responses to each motion (see Dkt. Nos. 257, 258), and, for
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`that reason, this motion should be denied as well.
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`Moreover, even if the Court does strike the portions of the Siegel Report of which AGIS
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`complains, this motion should still be denied, because Dr. Siegel’s report would contain ample
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`support for his opinion that FBCB2 anticipates or renders obvious every asserted claim of the four
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`“Location Patents.”1 AGIS’s motion wholly ignores that support. Indeed, AGIS’s motion fails to
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`identify any specific claim limitation that would be left unsupported if either motion to strike were
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`granted, or even recognize that the substantial evidence concerning the FBCB2 system (including
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`other portions of Dr. Siegel’s report) raises genuine disputes of material fact as to the invalidity of
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`each patent. Because that evidence is more than sufficient to demonstrate the invalidity of the
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`asserted patents to a jury—and AGIS has not even attempted to argue otherwise—AGIS’s motion
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`should be denied.
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`II.
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`RESPONSE TO AGIS’S STATEMENT OF UNDISPUTED MATERIAL FACTS
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`A.
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`Apple’s Statement Of Undisputed Material Facts
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`Dr. Siegel is an engineer and professor at the University of Southern California. (Ex. 1
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`(Siegel Report) ¶¶ 7-9.) Prior to joining USC in 2015, he spent most of his career at defense
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`contractor Northrop Grumman Corporation (formerly TRW Inc.), where he worked on a variety
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`1 U.S. Patent Nos. 9,467,838 (the “’838 patent”), 9,445,251 (the “’251 patent”), 9,749,829 (the
`“’829 patent”), and 9,408,055 (the “’055 patent”).
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 6 of 14 PageID #: 18253
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`of situational awareness, communications, and command-and-control systems for the military and
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`first responders. (Id. ¶¶ 10-12, 14.) From 1992 until 2004, he led the development of FBCB2
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`(also known as “Force XXI Battle Command Brigade-and-Below,” “Blue Force Tracker,” and
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`“Appliqué”). (Id. ¶¶ 51, 57-63.) As a result, he has extensive factual knowledge of the FBCB2
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`system’s features. (See id.) Apple accordingly disclosed in its Initial Disclosures that Dr. Siegel
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`is an individual with knowledge of how the FBCB2 system works. (See Ex. 2 at 5, 11.) Apple
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`accepted a subpoena for fact testimony on behalf of Dr. Siegel, and Dr. Siegel gave AGIS the
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`opportunity to depose him as a fact witness in this case. (See Ex. 3 (Notice of Subpoena to Neil
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`Gilbert Siegel) at 5; Ex. 4 (Dr. Siegel’s Response to AGIS’s Subpoena) at 3-8.)
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`B.
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`Response To AGIS’s Statement Of Undisputed Material Facts
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`With regard to paragraphs 1-3 of AGIS’s Statement of Undisputed Material Facts, Apple
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`agrees that AGIS asserts the Location Patents against Apple in this case. Apple agrees that it
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`contends that the FBCB2 system is prior art to the Location Patents. Apple contends that the
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`FBCB2 system anticipates the Location Patents. Apple also contends that the Location Patents
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`are invalid as obvious in view of the FBCB2 system and the knowledge of a person of ordinary
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`skill in the art at the time of the alleged invention of the Location Patents.
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`With regard to paragraph 4 of AGIS’s Statement of Undisputed Material Facts, Apple
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`agrees that the testimony of Dr. Neil Siegel supports Apple’s contention that the FBCB2 system
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`anticipates and renders obvious the Location Patents. Dr. Siegel served an expert report in this
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`case explaining his opinion that FBCB2 anticipates and renders obvious the Location Patents. His
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`analysis relies in part on his factual knowledge derived from personal experience developing and
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`implementing the FBCB2 system. He also cites documents that corroborate his factual statements
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`about how the FBCB2 system worked as of September 21, 2004.
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`2
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 7 of 14 PageID #: 18254
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`With regard to paragraph 5 of AGIS’s Statement of Undisputed Material Facts, Apple
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`agrees that AGIS filed two motions to strike portions of the Siegel report. One motion seeks to
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`strike portions of the Siegel report in which Dr. Siegel describes the FBCB2 system’s “dynamic
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`server election” feature. (See Dkt. No. 233.) Dr. Siegel discussed this feature in portions of his
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`analysis of some of the claims of the ’838, ’251, and ’829 patents; he does not discuss dynamic
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`server election in his analysis of any claim of the ’055 patent. (See Ex. 1 (Siegel Report) ¶¶ 71,
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`100, 104, 164, 168, 183, 219, 235, 243, 265, 273, 418, and 470 (paragraphs of Siegel Report that
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`discuss dynamic server election); Ex. 1 (Siegel Report) ¶¶ 281-406 (discussion of ’055 patent).)
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`AGIS’s second motion seeks to strike the entire Siegel report, based on Dr. Siegel’s citation to
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`corroborating documents that Apple disclosed in its invalidity contentions. (See Dkt. No. 234.)
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`Apple has opposed each motion, explaining why the Court should deny AGIS’s motions to strike.
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`(See Dkt. Nos. 257, 258.)
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`III. RESPONSE TO AGIS’S STATEMENT OF ISSUE TO BE DECIDED
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`Apple disagrees with AGIS’s statement of the issues to be decided, because Apple does
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`not agree with AGIS’s premise that, if either of its motions to strike is granted, “the record contains
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`no evidence that [FBCB2] meets each and every limitation of the asserted claims of the Location
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`Patents.”
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`IV.
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`LEGAL STANDARD
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`Summary judgment is only appropriate if the evidence fails to create a genuine issue of
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`material fact. Fed. R. Civ. P. 56(c). All factual inferences are to be drawn in favor of the
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`nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Anticipation is a
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`question of fact. Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999).
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`3
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 8 of 14 PageID #: 18255
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`Obviousness is a question of law based on underlying facts. McGinley v. Franklin Sports, Inc.,
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`262 F.3d 1339, 1349 (Fed. Cir. 2001).
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`V.
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`ARGUMENT
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`AGIS’s motion seeks partial summary judgment of no invalidity in view of the FBCB2
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`system, contingent upon the Court deciding to grant AGIS’s two motions to strike portions of Dr.
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`Neil Siegel’s expert report. AGIS’s motions to strike should be denied, for the reasons Apple
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`explains in its oppositions to those motions. (See Dkt. Nos. 257, 258.) On that basis alone, this
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`motion should be denied. But even if the Court grants either of AGIS’s motions to strike in whole
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`or in part, AGIS is not entitled to summary judgment because substantial factual disputes would
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`remain concerning the invalidity of every asserted claim in view of the FBCB2 system. Further,
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`no basis exists for AGIS’s broad request that the Court wholly preclude Apple from presenting
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`any evidence or testimony associated with the FBCB2 system at trial.
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`A.
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`AGIS Is Not Entitled To Summary Judgment Even If Its Motion To Strike
`The “Dynamically Elected Servers” Theory (Dkt. No. 233) Is Granted.
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`AGIS seeks summary judgment that none of the Location Patents is invalid in view of
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`FBCB2, assuming that the Court grants AGIS’s Motion to Strike Portions of the Expert Report of
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`Neil Siegel Relating to Dynamically Elected Servers (Dkt. No. 233). In that motion, AGIS seeks
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`to strike specific portions of the Siegel report relating to a feature of the FBCB2 system that Dr.
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`Siegel refers to as “dynamically electing servers.” (Dkt. No. 236 at 4; Dkt. No. 233 at 4 (citing
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`paragraph numbers).) Dr. Siegel uses that term to refer to the process by which the FBCB2 system
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`designated a particular computer to act as the server for the entire system. (See Ex. 1 (Siegel
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`Report) ¶¶ 71, 100, 104, 164, 168, 183, 219, 235, 243, 265, 273, 418, 470.) AGIS claims that
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`summary judgment of no invalidity is warranted if that motion is granted because “the asserted
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`claims of the Location Patents each include one or more” limitations with respect to which Dr.
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`4
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`Siegel discusses the FBCB2 system’s “dynamic server election” feature, and that no evidence of
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`invalidity would exist if those portions of Dr. Siegel’s report are stricken. (Dkt. No. 236 at 1, 4.)
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`AGIS is wrong, and summary judgment should be denied.
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`First, the portions of the Siegel report that AGIS seeks to strike pertain to only three of the
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`four Location Patents. Dr. Siegel does not discuss the FBCB2 system’s dynamic server election
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`feature in his analysis of any claim of the ’055 patent. (See Ex. 1 (Siegel Report) ¶¶ 281-406.)
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`None of the paragraphs AGIS identifies in its motion to strike discusses any claim of the ’055
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`patent. (See id. ¶¶ 71, 100, 104, 164, 168, 183, 219, 235, 243, 265, 273, 418, and 470; Dkt. No.
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`233 (seeking to strike same paragraphs of Siegel report).) Thus, AGIS’s motion to strike Dr.
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`Siegel’s testimony regarding dynamic server election does not impact any of his opinions
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`concerning the claims of the ’055 patent, and AGIS is therefore not entitled to partial summary
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`judgment of no invalidity of the ’055 patent regardless of the outcome of that motion.
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`Second, with respect to the ’838, ’251, and ’829 patents, even if the Court strikes the
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`paragraphs of Dr. Siegel’s report identified in AGIS’s motion to strike (which Apple opposes),
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`that would not justify summary judgment of no invalidity in view of the FBCB2 system. That is
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`because Dr. Siegel’s report discloses ample additional evidence concerning the invalidity of the
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`relevant server-based claim limitations. Specifically, in dozens of other paragraphs of the Siegel
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`report—which AGIS did not move to strike—Dr. Siegel describes the FBCB2 system’s various
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`types and uses of servers, further supporting his conclusion that the FBCB2 system anticipates or
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`renders obvious the pertinent server limitations.2 (See, e.g., Ex. 1 (Siegel Report) ¶ 95 (explaining
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`2 AGIS could not have credibly sought to strike those paragraphs of Dr. Siegel’s report. Although
`AGIS incorrectly argues that Apple did not previously disclose that the FBCB2 system was set up
`to “dynamically elect” servers, there is no dispute that Apple disclosed the FBCB2 system’s use
`of a server in the manner set forth in the asserted claims. (See Dkt. No. 233 at 4-6 (acknowledging
`that AGIS understood that Apple alleged that the FBCB2 system uses a server, and only purports
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`5
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 10 of 14 PageID #: 18257
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`that FBCB2 BDC and V4 computers acted as servers); ¶¶ 96-97 (explaining that part of one of the
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`processes by which FBCB2 devices could join a group involved sending a message to server); ¶
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`99 (explaining that FBCB2 devices sent location information to a server, which then broadcast that
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`information to other members of the devices’ groups); ¶ 103 (explaining that FBCB2 devices could
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`receive maps from a server while in the field); ¶¶ 108-112 (explaining that FBCB2 devices could
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`send data to one another via a server).) AGIS does not, and cannot, argue that the operation of the
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`FBCB2 system as described in those paragraphs of the Siegel report relates to, or is dependent
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`upon, the manner in which the computer acting as the server was designated to play that role.
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`Thus, even if the Court grants AGIS’s motion to strike, and Dr. Siegel is not permitted to explain
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`to the jury the details of dynamic server election—that is, to explain how as a factual matter the
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`FBCB2 system was set up to use a particular computer as a server—Dr. Siegel’s testimony would
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`still include detailed explanations as to how the FBCB2 system used servers to perform the
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`functions set forth in the asserted claims of the ’838, ’251, and ’829 patents. Based at least on that
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`testimony, a reasonable jury could conclude that the FBCB2 system anticipates or renders obvious
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`those claims. AGIS has not argued otherwise. Accordingly, the Court should deny AGIS’s
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`motion.
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`B.
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`AGIS Is Not Entitled To Summary Judgment Even If Its Motion To Strike
`Allegedly New Invalidity Theories (Dkt. No. 234) Is Granted.
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`AGIS alternatively moves for summary judgment that the Location Patents are not invalid
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`in view of the FBCB2 system, assuming that the Court grants its Motion to Strike the Expert Report
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`of Dr. Neil Siegel. (Dkt. No. 234.) That motion to strike argues that Dr. Siegel’s report discloses
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`new theories that the Location Patents are obvious in view of FBCB2 in combination with Dr.
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`to be surprised by Dr. Siegel’s description of how the FBCB2 system “dynamically elected”
`servers).)
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`6
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 11 of 14 PageID #: 18258
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`Siegel’s patents. (Id. at 1.) As Apple’s opposition explains in detail, AGIS’s motion is baseless.
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`(See generally Dkt. No. 258.) Dr. Siegel’s report does not mention any “obviousness combination”
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`of the FBCB2 system and any of Dr. Siegel’s patents. Instead, as Dr. Siegel states explicitly in his
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`report, he cites his patents because they describe features of the FBCB2 system. (See, e.g., Ex. 1
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`(Siegel Report) ¶¶ 75, 83, 97, 119, 154, 161, 186, 191, 194, 216, 222, 227, 230, 237, 244, 250,
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`267, 274, 280, 303, 324, 345, 350, 376, 404, 415, 431, 437, 467, 485.) Despite the fact that Dr.
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`Siegel’s report does not state or suggest that any Location Patent is obvious in view of the FBCB2
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`system in combination with a Siegel patent, AGIS asks the Court to strike Dr. Siegel’s entire
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`report as allegedly dependent upon such combinations. (Dkt. No. 234 at 5.)
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`If Dr. Siegel’s report truly included theories of obviousness based on the FBCB2 system
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`in combination with the Siegel patents, AGIS would have been able to identify the portions of the
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`report that disclose those theories, and to craft a motion to strike that would remove them. But
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`seeking that relief—which at least would have been commensurate with its complaint—would not
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`have given AGIS the chance to achieve what appears to be its real goal in moving to strike Dr.
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`Siegel’s report: preventing Dr. Siegel from appearing at trial. Indeed, even if this Court were to
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`strike every reference to Dr. Siegel’s patents, Dr. Siegel’s report would still contain ample factual
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`support for his contentions that the FBCB2 system anticipates or renders obvious every limitation
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`of every asserted claim of each of the Location Patents. (See, e.g., Ex. 1 (Siegel Report) ¶¶ 92-
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`112 (discussion of claim 1 of the ’838 patent).) As such, AGIS is not entitled to summary judgment
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`under any circumstances.
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`7
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 12 of 14 PageID #: 18259
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`C.
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`No Support Exists For AGIS’s Request That The Court Preclude Apple
`From Raising Evidence Or Testimony Associated With The FBCB2 System
`At Trial.
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`In the “Conclusion” portion of its motion, AGIS requests that the Court “preclude Apple
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`from raising the FBCB2 system and any evidence or testimony associated with the FBCB2 system,
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`at trial.” (Dkt. No. 236 at 6.) AGIS does not discuss this request elsewhere in its motion or provide
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`any basis for granting that extremely broad relief. Even assuming for the sake of argument that
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`Dr. Siegel’s expert report were excluded in its entirety, AGIS provides no basis to preclude Apple’s
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`other technical expert, Dr. Paul Clark, from discussing opinions about the FBCB2 system that are
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`included in his report (which AGIS has not moved to strike). (See, e.g. Ex. 5 (Clark Report) ¶¶
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`75-76, 571, 926, 1336, 1375, 1671, 2077.) Nor does AGIS explain why Apple should be precluded
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`from calling or questioning fact witnesses about the FBCB2 system—including Dr. Siegel himself,
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`whom Apple disclosed early in the case as having factual knowledge concerning that system. (See
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`Ex. 2 (Apple Initial Disclosures) at 5, 11.) Accordingly, AGIS’s baseless request to preclude any
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`evidence or testimony related to the FBCB2 system should be denied.
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`VI. CONCLUSION
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`For the reasons described above, Apple respectfully requests that this Court DENY AGIS’s
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`Motion for Partial Summary Judgment of No Invalidity over the FBCB2 System (Dkt. No. 236).
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`8
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 13 of 14 PageID #: 18260
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`Dated: January 7, 2019
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`By: Respectfully submitted:
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`/s/ Melissa R. Smith
`Melissa Richards Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`John M. Desmarais
`Paul A. Bondor
`Michael P. Stadnick
`Ameet A. Modi
`Cosmin Maier
`Kerri-Ann Limbeek
`Brian Matty
`Tom BenGera
`Kathryn Bi
`Francesco Silletta
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`Email: jdesmarais@desmaraisllp.com
`Email: mstadnick@desmaraisllp.com
`Email: pbondor@desmaraisllp.com
`Email: amodi@desmaraisllp.com
`Email: cmaier@desmaraisllp.com
`Email: klimbeek@desmaraisllp.com
`Email: bmatty@desmaraisllp.com
`Email: tbengera@desmaraisllp.com
`Email: kbi@desmaraisllp.com
`Email: fsilletta@desmaraisllp.com
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`Case 2:17-cv-00513-JRG Document 275 Filed 01/09/19 Page 14 of 14 PageID #: 18261
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and
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`correct copy of the foregoing document by electronic mail on January 7, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`10
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