Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 1 of 11 PageID #: 19299
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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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`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY
`JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 8,213,970
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 2 of 11 PageID #: 19300
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`I.
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`TABLE OF CONTENTS
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`Pages
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`THE COURT SHOULD GRANT SUMMARY JUDGMENT OF NON-
`INFRINGEMENT................................................................................................................1
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`A.
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`B.
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`All Claims Require That The “Response List” Cannot Be Cleared Unless
`A “Response” Is Selected From That “Response List.” ..........................................1
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`No Factual Dispute Exists Regarding The Operation Of The Accused
`Feature: The Accused “Response List” Can Be Cleared Absent Selection
`Of A “Response” From The “Response List.”.........................................................2
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`II.
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`AGIS IS ESTOPPED FROM ASSERTING DOCTRINE OF EQUIVALENTS. ..............4
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`A.
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`B.
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`Estoppel Bars Any Assertion Of Infringement Under The Doctrine Of
`Equivalents For Claim 1 Of The ’970 Patent...........................................................4
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`Estoppel Bars Any Assertion Of Infringement Under The Doctrine Of
`Equivalents For Claim 6 Of The ’970 Patent...........................................................5
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`i
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 3 of 11 PageID #: 19301
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`Cases
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`TABLE OF AUTHORITIES
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`Pages
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`Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc.,
`389 F.3d 1370 (Fed. Cir. 2004)........................................................................................... 2
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`GeoTag, Inc. v. Frontier Commc'ns Corp.,
`No. 2:10-CV-00265-JRG, 2014 WL 282731 (E.D. Tex. Jan. 24, 2014) ............................ 5
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`Iris Connex, LLC v. Acer Am. Corp.,
`No. 2:15-CV-1909-JRG, 2016 WL 4596043 (E.D. Tex. Sep. 2, 2016) ............................. 5
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`Statutes
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`35 U.S.C. § 112(6) ...................................................................................................................... 1, 2
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 4 of 11 PageID #: 19302
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`Exhibit Number
`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
`Ex. 6
`Ex. 7
`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
`Ex. 13
`Ex. 14
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`TABLE OF EXHIBITS1
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`Description
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`U.S. Patent No. 8,213,970
`McAlexander Infringement Report Excerpts
`’970 File History Excerpt – 2010-09-20 Office Action
`’970 File History Excerpt – 2010-12-17 Reply to Office Action
`’970 File History Excerpt – 2011-03-11 Office Action
`’970 File History Excerpt – 2011-09-09 Reply to Office Action
`Find My iPhone Support Document
`McAlexander Deposition Excerpts
`Zingde Deposition Excerpts
`Declaration of Paul C. Clark
`AGIS Infringement Contentions (2018-09-21) Excerpts
`Additional McAlexander Deposition Excerpts
`Additional McAlexander Infringement Report Excerpts
`Apple-AGIS Attorney Correspondence
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`1 Exhibits 1-10 were filed with Apple’s opening brief (Dkt. No. 228). Exhibits 11-14 are filed
`herewith.
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 5 of 11 PageID #: 19303
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`I.
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`THE COURT SHOULD GRANT SUMMARY JUDGMENT OF NON-
`INFRINGEMENT.
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`The asserted ʼ970 patent claims require that a “response list” displayed on a device must
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`be cleared through selection of a “response” from that “response list.” AGIS does not dispute that
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`the accused “response list”—the display of several options on an Apple device placed into Lost
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`Mode—can be cleared by other means, without selecting a “response” from the “response list.”
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`That undisputed fact warrants summary judgment of non-infringement. AGIS’s arguments (which
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`focus on different functionality and hinge on new, untimely expert opinions) should be rejected as
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`improper and, in any event, without substantive merit.
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`A.
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`All Claims Require That The “Response List” Cannot Be Cleared Unless A
`“Response” Is Selected From That “Response List.”
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`Claim 6 of the ’970 patent recites “providing a manual response list on the display of the
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`recipient PDA/cell phone that can only be cleared by the recipient providing a required response
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`from the list.” Neither party proposed that the term needed construction. AGIS does not dispute
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`that the plain meaning requires that there be only one way to clear the “response list”—selection
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`of a “response” from that “response list.” (See Dkt. No. 262 (“Opp.”) at 9-10.)
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`The corresponding limitation of claim 1 was construed under 35 U.S.C. § 112(6) as having
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`the function “requiring a manual response from the response list by the recipient in order to clear
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`recipient’s response list from recipient’s cell phone display.” 2 (Dkt. No. 205 at 22.) AGIS does
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`not dispute that the plain meaning of this function requires that there be only one way to clear the
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`“response list”—selection of a response from that list. (See Opp. at 9-10.) Rather, AGIS argues
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`that the corresponding structure, 8:37-57 of the ’970 patent and equivalents thereof, does not have
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`such a clearing requirement. Id. But the case that AGIS relies upon confirms that “[l]iteral
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`2 All emphasis has been added unless otherwise stated.
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 6 of 11 PageID #: 19304
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`infringement of a § 112, ¶ 6 limitation requires that the relevant structure in the accused device
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`perform the identical function recited in the claim and be identical or equivalent to the
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`corresponding structure in the specification.”3
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`B.
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`No Factual Dispute Exists Regarding The Operation Of The Accused Feature:
`The Accused “Response List” Can Be Cleared Absent Selection Of A
`“Response” From The “Response List.”
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`In its P.R. contentions and expert report, AGIS identified the claimed “response list”
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`; Ex. 2 at A-a60, 62.) A screenshot of the alleged “response list”—as identified in AGIS’s
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`expert report—was included on page 4 of Apple’s opening brief.
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`In that brief, Apple provided unrebutted evidence showing that the alleged “response list”
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`can be cleared from the recipient device’s display without a “manual response” or “required
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`response” being selected from the “response list”—i.e., by instead selecting “Turn Off Lost Mode”
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`from a different device. (See Dkt. 228 (“Mot.”) at 3, 4, 8; Ex. 10 ¶¶ 427-28 (depicting “response
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`list” being cleared).) AGIS does not—because it cannot—dispute that that accused “response
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`list” is cleared upon selection of “Turn Off Lost Mode” on a different device.4 (See Opp. 7-8.)
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`3 Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d 1370, 1378 (Fed.
`Cir. 2004). AGIS’s vague suggestion that an O2 Micro issue exists that could preclude summary
`judgment is inapposite. (See Opp. at 8-9.) AGIS’s manufactured claim-scope dispute involves
`the construed structure of claim 1’s clearing limitation, not the claimed function, which the Court
`has already construed to have its plain meaning. (See Dkt. 205 at 22.) Because Apple does not
`perform the claimed function, the Court need not address AGIS’s interpretation of the
`corresponding structure to resolve the present motion.
`4 AGIS’s contention that “Apple does not indicate whether all versions of its software from 2012
`to present include the “Turn off” functionality” is meritless. (See Opp. at 1.) (cont’d . . . )
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`2
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 7 of 11 PageID #: 19305
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`Indeed, AGIS’s expert, Mr. McAlexander admitted that selecting “Turn Off Lost Mode” on
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`another device disables Lost Mode on the alleged “recipient” device. (See Ex. 2 at A-a65.) Mr.
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`McAlexander also conceded that doing so “clear[s] the screen” of the lost device (the alleged
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`“recipient” device that displays the “response list”). (See Ex. 12 at 267:9-13.)
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`Those admissions foreclose infringement. Indeed, AGIS acknowledged as much in its P.R.
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`contentions, explaining that remotely disabling Lost Mode “essentially rescinds the forced
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`message”—the message that causes the “response list” to be displayed—and therefore “such a use
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`case is not within the scope of the claims.” (Ex. 11 at A-180.)5 So to avoid summary judgment,
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`AGIS abandons its contentions and expert report to argue, for the first time, that
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` (Opp. at 5, see also id. at 8.)6 But whether a device
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` has no bearing on the claim language7—specifically, whether the accused “response list”
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` must be cleared through the selection of a “response”
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`from the “response list” (as the claims require), or whether it can be cleared by other means.8
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` (Ex. 13 ¶¶ 261-270). Similarly, AGIS’s insinuation that it was somehow unaware of the
`“Turn Off Lost Mode” functionality is meritless; its expert discussed that functionality in his report
`and deposition testimony. (Ex. 2 at A-65); (Ex. 12 at 267:9-13).
`5 As its contentions demonstrate, AGIS was well aware of “Lost Mode” since early in the case. Its
`suggestion that Apple did not provide discovery (Opp. at 2) is baseless, and it ignores the parties’
`compromise on discovery issues, including the sufficiency of Apple’s interrogatory response to
`identify the limitations that Apple contended were not infringed. (See Ex. 14.)
`6 AGIS relies on “additional testing” by its expert, set forth in an untimely declaration along with
`its opposition. (See Dkt. 262-5.) Apple will move to strike that untimely declaration, which
`contains new opinions outside the scope of Mr. McAlexander’s expert report. In any event, the
`new opinions presented in that declaration do not support AGIS’s position.
`7 Indeed, Mr. McAlexander alleges the “response list”
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`(See Ex. 2 at A-a60-61).
`8 AGIS’s rebuttal (Opp. at 8) that Apple’s evidence (Ex. 10 ¶ 428-29) depicts a device that is still
`“locked” is a red herring—AGIS does not dispute that the accused “response list” is cleared.
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 8 of 11 PageID #: 19306
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`The Apple witness testimony cited by AGIS is consistent. The testimony of Mr. Suparna
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`concerns clearing Lost Mode using the lost device, not whether Lost Mode (and the alleged
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`“response list”) may also be cleared from a different device, without selecting a “response” from
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`the “response list” (as required by the claims). (See Opp. at 4.) And Mr. Zingde’s testimony
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`confirms that a device can be removed from Lost Mode (i.e., that the alleged “response list” can
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`be cleared) through user interaction with a different device, without selection of a “response” from
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`the alleged “response list.” (Ex. 9 at 142:16-143:17, 144:25-145:18.)9 Because no dispute exists
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`that the accused “response list” can be cleared without selection of a response from that “response
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`list,” summary judgment of non-infringement should be granted.
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`II.
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`AGIS IS ESTOPPED FROM ASSERTING DOCTRINE OF EQUIVALENTS.
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`A.
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`Estoppel Bars Any Assertion Of Infringement Under The Doctrine Of
`Equivalents For Claim 1 Of The ’970 Patent.
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`AGIS amended claim 1 of the ʼ970 patent during prosecution. AGIS does not (and cannot)
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`rebut the presumption that the amendments were made for patentability. (See Mot. at 8-9.) Nor
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`did AGIS rebut the presumption that it surrendered the “equivalents” identified in Apple’s opening
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`brief. (See Mot. at 9, n. 4.) These facts preclude any assertion under the doctrine of equivalents.
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`But once again, in an effort to avoid summary judgment, AGIS manufactures a new theory through
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`its new and untimely expert declaration.10 AGIS’s technical expert argues (as a matter of claim
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`scope) that
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` (See Opp. at 11, Dkt. 262-5 ¶ 9.) But prosecution history estoppel is a legal issue
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`for the Court’s resolution, not for experts. GeoTag, Inc. v. Frontier Commc'ns Corp., No. 2:10-
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`9 AGIS’s claim that “the sole statement [by Mr. Zingde] relied on by Apple was made on redirect
`within an objectionable line of questioning” (Opp. at 4.) is false. Mr. Zingde provided the same
`answer in response to questions from AGIS’s counsel. (Ex. 9 at 144:25-145:18.)
`10 The declaration is untimely and improper, and Apple will move to strike it. (See supra n.6.)
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 9 of 11 PageID #: 19307
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`CV-00265-JRG, 2014 WL 282731, at *1 (E.D. Tex. Jan. 24, 2014).
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`In any event, AGIS fails to rebut the presumption that it surrendered
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` To do so, it must prove that the alleged equivalent was either
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`“unforeseeable or otherwise not within the scope of the patentee’s surrender.” Id. at *2. But the
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`alleged
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` equivalent was foreseeable and within the scope of
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`surrender according to AGIS’s own infringement contentions. (Ex. 11 at A-180
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` And AGIS relied on this very concept—
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`—to overcome prior art
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`rejections.11 As such, it “can hardly be said to be merely tangential.”12 AGIS therefore cannot
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`rebut the presumption that it surrendered all equivalents related to “clearing” limitation.13
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`B.
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`Estoppel Bars Any Assertion Of Infringement Under The Doctrine Of
`Equivalents For Claim 6 Of The ’970 Patent.
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`AGIS argues that its amendment to the “list” limitation recited in claim 6 was not “the
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`‘substantial reason related to patentability.’” (Opp. at 11-12.) But estoppel applies to an
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`amendment made for “a substantial reason related to patentability, including to avoid prior art[.]”
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`GeoTag, 2014 WL 282731 at *1. Whether the amendment resulted in allowance is irrelevant. See
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`id. at *2. Here, no dispute exists that the amendment was made to overcome prior art, foreclosing
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`an assertion of infringement under the doctrine of equivalents. (See Mot. at 10; Opp. at 11-12.)
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`11 Ex. 6 at 8 (“There is no discussion [in the prior art] concerning … the requirement . . . that the
`recipient must respond with a particular answer selected from previously provided list of
`potential answers especially before the recipient’s display screen can be cleared.”); Opp. at 12
`(“the manner in which these lists were then cleared was the primary reason related to
`patentability”).
`12 Iris Connex, LLC v. Acer Am. Corp., No. 2:15-CV-1909-JRG, 2016 WL 4596043, at *21 (E.D.
`Tex. Sep. 2, 2016).
`13 AGIS is estopped from relying on the new equivalence theory for claim 6 for the same reasons.
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 10 of 11 PageID #: 19308
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`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
`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: 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
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`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`Dated: January 14, 2019
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`Case 2:17-cv-00513-JRG Document 299 Filed 01/16/19 Page 11 of 11 PageID #: 19309
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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 14, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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