Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 1 of 12 PageID #: 19195
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`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,
`
`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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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`FILED UNDER SEAL
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`
`
`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
`
`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS 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
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`

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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 2 of 12 PageID #: 19196
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`
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`TABLE OF CONTENTS
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`Pages
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`I.
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`THE ASSERTED CLAIMS ARE SUBJECT MATTER INELIGIBLE .............................1
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`A.
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`B.
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`The Asserted Claims Are Directed To An Abstract Idea. .......................................1
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`The Asserted Claims Do Not Contain An Inventive Concept. ................................2
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`II.
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`APPLE’S MOTION IS RIPE FOR RESOLUTION AS A MATTER OF LAW. ...............3
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`A.
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`B.
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`Apple’s Motion Provides Support For A Finding Of Subject Matter
`Ineligibility Of Every Asserted Claim Of The Location Patents. ............................4
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`AGIS’s Opposition Does Not Raise A Genuine Dispute Of Material Fact
`That Precludes Summary Judgment Of Subject Matter Ineligibility. ......................5
`
`i
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 3 of 12 PageID #: 19197
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`
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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) ............................................................................................................ 5
`
`Bilski v. Kappos,
` 561 U.S. 593 (2010) ........................................................................................................... 6
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
`776 F.3d 1342 (Fed. Cir. 2014)........................................................................................... 1
`
`First National Bank of Arizona v. Cities Service Co.
` 391 U.S. 253 (1968) ........................................................................................................... 5
`
`In re TLI Commc’ns LLC Patent Litig.,
`823 F.3d 607 (Fed. Cir. 2016)............................................................................................. 2
`
`Integrated Tech. Sys., Inc. v. First Internet Bank of Indiana,
`No. 2:16-CV-00417-JRG-RSP, 2017 WL 631195 (E.D. Tex. Jan. 30, 2017) .................... 6
`
`Intellectual Ventures I LLC v. Erie Indemnity Co.,
`850 F.3d 1315 (Fed. Cir. 2017)........................................................................................... 3
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001)........................................................................................... 3
`
`Network Architecture Innovations LLC v. CC Network Inc.,
`No. 2:16-CV-00914-JRG, 2017 WL 1398276 (E.D. Tex. Apr. 18, 2017) ......................... 4
`
`Two-Way Media Ltd. v. Comcast Cable Commcns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017)....................................................................................... 1, 3
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`Statutes
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`35 U.S.C. § 101 ....................................................................................................................... 1, 3, 6
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`Rules
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`Fed. R. Civ. P. 56(c)(1) ................................................................................................................... 5
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`ii
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 4 of 12 PageID #: 19198
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`
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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
`Ex. 5
`Ex. 6
`Ex. 7
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`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
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`Ex. 13
`Ex. 14
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`Ex. 15
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`Ex. 16
`Ex. 17
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`Ex. 18
`Ex. 19
`Ex. 20
`Ex. 21
`Ex. 22
`Ex. 23
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`Ex. 24
`Ex. 25
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`List of Dependent Claims by Category
`Docket Sheet for AGIS Software Development, LLC v. Apple Inc., Civil
`Action No. 2:17-CV-516-JRG (E.D. Tex.)
`U.S. Patent No. 9,467,838
`U.S. Patent No. 9,445,251
`U.S. Patent No. 9,408,055
`U.S. Patent No. 9,749,829
`AGIS Software Development, LLC’s Final Election of Asserted Claims
`to Defendant Apple, Inc.
`Christopher Rice Deposition Transcript Excerpts
`Sandell Blackwell Deposition Transcript Excerpts
`Malcolm Beyer Deposition Transcript Excerpts
`Excerpt from George McKee Elsey, An Unplanned Life (Missouri 2005)
`Excerpt from William Manchester, The Last Lion: Winston Spencer
`Churchill Alone, 1932-1940 (Bantum 1988)
`Joseph McAlexander Deposition Transcript Excerpts
`AGIS Software Development, LLC’s Opening Claim Construction Brief
`(Dkt. No. 165) Excerpts
`Declaration of Jaime G. Carbonell in Support of Plaintiff’s Opening
`Claim Construction Brief (Dkt. No. 165-1) Excerpts
`Claim Construction Memorandum and Order (Dkt. No. 205) Excerpts
`Plaintiff’s First Amended Complaint for Patent Infringement (Dkt. No.
`17)
`Joseph McAlexander Infringement Report Excerpts
`Scott Lopatin Deposition Transcript Excerpts
`Navin Suparna Deposition Transcript Excerpts
`Apple Production Document
`Roberto Garcia Deposition Transcript Excerpts
`Sandell Blackwell Deposition Transcript Excerpts from Advanced
`Ground Information Systems, Inc. v. Life360, Civil Action No. 9:14-
`CV-80651-DMM (S.D. Fla.)
`U.S. Patent No. 7,031,728
`AGIS Software Development, LLC’s Opening Claim Construction Brief
`(Dkt. No. 165) – Additional Excerpts
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`iii
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 5 of 12 PageID #: 19199
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`The asserted claims of the Location Patents are subject matter-ineligible under 35 U.S.C.
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`§ 101. In its opposition, AGIS attempts to avoid summary judgment by creating fact disputes. But
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`there is no genuine dispute as to any fact that is material to the § 101 analysis. The Court should
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`enter summary judgment that the asserted claims are invalid under § 101.
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`I.
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`THE ASSERTED CLAIMS ARE SUBJECT MATTER INELIGIBLE
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`A.
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`The Asserted Claims Are Directed To An Abstract Idea.
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`Apple’s motion (Dkt. No. 229 (“motion”)) explains that AGIS’s claims are directed to an
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`abstract idea because they focus on the functions of a Map Room—situational awareness,
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`communications, and command-and-control—and recite only the routine use of computer
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`hardware for implementing those functions on a computer. AGIS does not dispute that the claims
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`recite situational awareness, communications, and command-and-control functionality. Instead, it
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`argues that the claims are directed to a “specific implementation” of a digital map room and do not
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`preempt every implementation of that idea because they require the use of servers and user-
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`selectable symbols. (See Dkt. No. 261 (“Opp”) at 8-11.) But the Alice inquiry is not whether the
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`claims preempt every implementation of an abstract idea; rather, it is whether the claims are
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`directed to, or focus on, an abstract idea. See Two-Way Media Ltd. v. Comcast Cable Commc’ns,
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`LLC, 874 F.3d 1329, 1339-40 (Fed. Cir. 2017) (claims abstract even though not preemptive); OIP
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`Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015).
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`The recitation of computer components that perform only “well-understood, routine,
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`conventional activities” cannot save claims from abstraction. Content Extraction & Transmission
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`LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347-8 (Fed. Cir. 2014). There is no
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`genuine dispute that the use of user-selectable symbols as recited in the claims was routine and
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`conventional at the time of the alleged invention, because the undisputed evidence shows that prior
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`art systems displayed entities on maps with user-selectable symbols. (See Part I.B, infra.) Nor is
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 6 of 12 PageID #: 19200
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`there a genuine dispute that the servers recited in the claims—which are limited only by their
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`ability to send, receive, and store data—were routine and conventional computer components by
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`the time of the alleged invention. (See motion at 7-8 ¶ 13; see also In re TLI Commc’ns LLC
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`Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (holding that receiving and storing data are
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`generic server functions).) Because the asserted claims recite only an abstract idea and
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`conventional computers for implementing it, they are “directed to” that idea under Alice.
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`B.
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`The Asserted Claims Do Not Contain An Inventive Concept.
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`The asserted claims do not contain an inventive concept that transforms them into
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`patentable subject matter. AGIS argues that the Location Patents solve a technological problem
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`outlined in U.S. Pat. No. 7,031,728 (the “’728 patent” (Ex. 24)).1 But the solution described in
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`that patent does not supply an inventive concept for two reasons: the solution is not present in the
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`claims of the Location Patents, and the solution is not an advance over prior art technology.
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`AGIS’s opposition highlights portions of the ’728 patent that purport to improve upon prior
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`art software applications. The ’728 patent explains that, while earlier situational awareness
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`systems provided map displays with user-selectable symbols, one could not send communications
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`or data to a selected user without opening a separate application and entering contact information.
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`(See Ex. 24 (’728 patent) at 1:49-67.) The ’728 patent purports to overcome this alleged
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`shortcoming by providing software that allows PDA users to send data or call other users by
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`selecting “a[n appropriate] switch” within the software application. (See id. at 2:18-20, 2:26-52.)
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` AGIS argues that the Location Patents solve the problem described in the ’728 patent (see
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`Opp. at 11). But AGIS cites no support for the proposition (and none exists) that the claims of the
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`Location Patents require that a user be able to select a user-selectable symbol and initiate
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`1 AGIS alleges that the ’728 patent—to which the Location Patents claim priority—is incorporated
`by reference into each of the Location Patents. (See Opp. at 8.)
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`2
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 7 of 12 PageID #: 19201
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`communications without opening a separate application. Nor does any asserted claim of any
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`Location Patent require the particular solution outlined in the ’728 patent—namely, sending data
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`or initiating calls by selecting a “switch.” Because the solution to the alleged problem presented
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`in the ’728 patent is not in the claims of any Location Patent, those claims do not recite the solution
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`to that technical problem. See Two-Way Media, 874 F.3d at 1338-39; Intellectual Ventures I LLC
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`v. Erie Indemnity Co., 850 F.3d 1315, 1331-32 (Fed. Cir. 2017).
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`Moreover, there is no evidence that the purported solution outlined in the ʼ728 patent
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`represents an improvement in the generic technological environment recited in the claims—as it
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`must, if it is to qualify as an inventive concept. See Smart Sys. Innovations, LLC v. Chicago Transit
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`Auth., 873 F.3d 1364, 1374 (Fed. Cir. 2017). In fact, there is no genuine dispute that every element
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`of the purported solution described in the ’728 patent is prior art. The ’728 patent itself states that
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`map displays with user-selectable symbols representing users and entities are prior art. (See Ex.
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`24 (’728 patent) 1:49-60.)
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` Thus, the solution
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`described in the claims of the ’728 patent does not recite any improvement in computer technology.
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`II.
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`APPLE’S MOTION IS RIPE FOR RESOLUTION AS A MATTER OF LAW.
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`Subject-matter eligibility under § 101 is a question of law that may rest on subsidiary
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`factual findings. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1349 (Fed. Cir. 2001). AGIS
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`attempts to avoid summary judgment by arguing that Apple’s motion is not factually supported or
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`relies on disputed facts. Both arguments are without merit. Apple’s motion provided complete
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`legal and factual support for the relief it requests. Because AGIS has not identified a genuine
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`dispute as to any material fact, summary resolution of Apple’s motion is appropriate.
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`3
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 8 of 12 PageID #: 19202
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`A.
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`Apple’s Motion Provides Support For A Finding Of Subject Matter
`Ineligibility Of Every Asserted Claim Of The Location Patents.
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`Apple’s motion addresses every limitation of every claim in this case. Apple does not, as
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`AGIS contends, ask the Court to grant summary judgment based on a representative claim, or
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`“ignore” claims that recite new technology or an inventive concept. (See Opp at 8, 9, 10, 11, 12.)
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`In its Alice step one analysis, Apple’s motion first shows that the bulk of each claim is
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`directed to an abstract idea—illustrating what Apple contends that idea is by highlighting the
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`portions of claim 1 of the ’251 patent that are representative of that idea. (Motion at 12-13.)
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`Then, Apple cites evidence that all of the technology recited in each asserted claim predates the
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`Location Patents.2 (Id. at 15-17 (indep. claims); 20-23 (dep. claims).)
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`In its Alice step two analysis, Apple’s motion addresses whether the claims contain an
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`inventive concept. Apple first notes the lack of any teaching in the specification (or any other
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`evidence) that the claims—considered individually or as an ordered combination—represent an
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`improvement in computer technology (such as the solution to a “problem presented by combining”
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`prior art functionality”). (See Motion at 17-23; In re TLI, 823 F.3d at 612; Network Architecture
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`Innovations LLC v. CC Network Inc., No. 2:16-CV-00914-JRG, 2017 WL 1398276, at *6 (E.D.
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`Tex. Apr. 18, 2017) (“Steps that simply spell out what it means to “apply it on a computer” cannot
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`confer patent-eligibility.”)). Such an absence of affirmative evidence is sufficient to support
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`judgment as a matter of law that challenged claims lack an inventive concept. See, e.g., TLI, 823
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`F.3d at 612-13. But in this case, Apple also cited affirmative evidence that the claims are no more
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`than the sum of their routine, conventional parts. Specifically, Apple cited AGIS’s claim
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`2 For example, with regard to the specific claim limitation AGIS says Apple ignored—sending
`another user SMS messages consisting of a telephone number and an IP address, so that the user
`can send an IP-based message back (Opp. at 12)—Apple cited evidence that SMS messages and
`IP communications existed at the time of the alleged invention. (See Motion at 6 ¶ 10.)
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`4
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 9 of 12 PageID #: 19203
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`construction expert, Dr. Carbonell, who repeatedly declared that creating the software described
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`in AGIS’s claims would have been a matter of “routine[] program[ming]” at the time of the alleged
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`invention. (Motion at 8 ¶ 14, 16.) AGIS relied on those assertions to argue that the claims were
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`not governed by 35 U.S.C. § 112(6) (Dkt. No. 165 (Ex. 25) at 18-19 (citing Carbonell Decl. at ¶¶
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`65-93)), and this Court ruled in AGIS’s favor on that issue. (Dkt. No. 205 at 34.) Far from
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`“irrelevant,” as AGIS now contends (Opp. at 13), those statements show that AGIS’s claims
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`require only routine and conventional technology. AGIS cannot abandon those assertions now.
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`B.
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`AGIS’s Opposition Does Not Raise A Genuine Dispute Of Material Fact That
`Precludes Summary Judgment Of Subject Matter Ineligibility.
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`A party opposing summary judgment and asserting that a fact is genuinely disputed must
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`“cit[e] to particular parts of materials in the record,” or “show[] that the materials cited do not
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`establish the absence or presence of a genuine dispute, or that an adverse party cannot produce
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`admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1). That is, a party may not rest
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`upon mere allegations or denials, but instead “must set forth specific facts showing that there is a
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`genuine issue for trial[.]” First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 288
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`(1968). Moreover, a party opposing summary judgment must show that an alleged factual dispute
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`could affect Courts analysis of the issue under governing law. Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 248 (1986). AGIS has not raised a genuine dispute as to any material fact that
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`could affect the outcome of this motion.
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`First, AGIS does not dispute most of the facts in Apple’s motion. Those facts are primarily
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`drawn from three sources: the specification of the asserted patents, deposition testimony of AGIS’s
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`fact and expert witnesses, and the declaration of AGIS’s claim construction expert. (See Motion
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`at 3-8, ¶¶ 6-14.) AGIS does not dispute the veracity of those statements, only their legal
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`significance (e.g., whether they limit the claims’ scope). (See, e.g., Opp. at 2-4 ¶¶ 6-14.)
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`5
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 10 of 12 PageID #: 19204
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`Second, many of the factual disputes AGIS cites in its opposition are irrelevant to the legal
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`analysis of subject matter eligibility. For example, AGIS argues that the parties dispute whether
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`AGIS came up with the idea embodied in the claims or was the first to implement it effectively.
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`(See Opp. ¶ 3-5.) Maybe so—but the resolution of such disputes is immaterial to the § 101 inquiry,
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`because claims to an abstract idea are subject matter ineligible regardless of whether the patentee
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`was the first to think of or implement it.3 Integrated Tech. Sys., Inc. v. First Internet Bank of
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`Indiana, No. 2:16-CV-00417-JRG-RSP, 2017 WL 631195, at *4 (E.D. Tex. Jan. 30, 2017).
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`Third, the other alleged fact disputes AGIS cites in its opposition are not genuine. For
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`example, AGIS claims that there is a factual dispute as to whether the Location Patent inventors,
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`Mr. Beyer and Mr. Rice, “are the inventors of the claimed servers.” (Opp. at 4 ¶ 13.) But AGIS
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`does not cite any evidence it could produce to support its position. (Id.) Because Apple cited
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`ample evidence that Mr. Beyer and Mr. Rice did not invent the claimed servers,4 no reasonable
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`jury could find in AGIS’s favor on that issue absent contradictory evidence.5
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`3 Similarly, AGIS argues that there is a fact dispute as to whether it was the first to make software
`that allowed users to “interact with a symbol on a map and send text” or “interact with a symbol
`on a map and send IP-based messages.” (Opp. at 3 ¶¶ 9, 10 (emphasis added).) Again, the question
`at issue is whether the claims are subject-matter eligible—not whether they are novel. If AGIS’s
`claims are directed to an abstract idea, it does not matter whether they are new. See Bilski v.
`Kappos, 561 U.S. 593, 602 (2010).
`4
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`5 Similarly, AGIS argues that there is a fact dispute as to whether the claims of the asserted patents
`list just two hardware components that implement the idea of the asserted claims (“devices” and
`“servers”), because the claims also recite an “interactive display” and a “GPS receiver.” (See Opp.
`at 3 ¶ 11.) But the Location Patents make clear that these components are part of the claimed
`“device.” (See ’251 pat. (Ex. 4) 15:4 (reciting “interactive display of the first device”); id. 20:12-
`18 (the “device includes a Global Positioning Satellite (GPS) receiver”)). And the specification
`makes clear that the claimed “devices” could encompass PDAs, cell phones, and other devices that
`were already in existence. (See Motion at 7 ¶ 12.) Therefore, there is no genuine factual dispute.
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`6
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`Case 2:17-cv-00513-JRG Document 297 Filed 01/16/19 Page 11 of 12 PageID #: 19205
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`Dated: January 14, 2019
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`By: Respectfully submitted:
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`
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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
`Ameet A. Modi
`Cosmin Maier
`Kerri-Ann Limbeek
`Brian Matty
`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: pbondor@desmaraisllp.com
`Email: amodi@desmaraisllp.com
`Email: cmaier@desmaraisllp.com
`Email: klimbeek@desmaraisllp.com
`Email: bmatty@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 297 Filed 01/16/19 Page 12 of 12 PageID #: 19206
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have consented
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`to electronic services are being served with a copy of this document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) on this the 14th day of January, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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