Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 1 of 10 PageID #: 19319
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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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`Case No. 2:17-CV-0513-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`APPLE, INC.,
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`Defendant.
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S SUR-REPLY
`TO APPLE INC.’S REPLY RE SEALED PATENT MOTION TO STRIKE PORTIONS
`OF THE OPENING EXPERT REPORT OF MR. JOSEPH MCALEXANDER
`THAT RELY ON UNTIMELY DISCLOSED INFRINGEMENT THEORIES (DKT. 232)
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`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 2 of 10 PageID #: 19320
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`I.
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`INTRODUCTION
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`The facts tell a story of ample notice of AGIS’s long-disclosed infringement theories, and
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`Apple’s Reply (Dkt. 267) fails to show otherwise. Apple does not identify any specific prejudice
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`it would suffer if its motion were denied. Instead, AGIS would be severely prejudiced by the
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`relief sought in Apple’s over-reaching motion because AGIS would be precluded from
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`addressing central theories set forth in its earliest contentions despite compliance with the rules.
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`II.
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`AGIS DISCLOSED FAMILY SHARING IN ITS EARLIEST CONTENTIONS
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`Apple’s Reply acknowledges that the focus of the “predetermined network of
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`participants” is the Apple ID. Dkt. 267 at 1. Apple’s Reply further admits that AGIS’s
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`September 2017 contentions gave Apple notice that AGIS accused the family sharing feature in
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`the context of the “predetermined network of participants limitation.” Id. Apple’s motion must
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`fail because it cannot dispute that AGIS’s contentions placed Apple on notice that AGIS accused
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`Apple’s Find My iPhone application using the Apple ID.
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`Apple’s Reply raises a new argument; that Mr. McAlexander identifies family sharing
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`with multiple “different Apple IDs” to meet the predetermined network limitation. Dkt. 267 at 1.
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`However, Apple’s Reply is inconsistent with its own Motion and its own documents. Apple’s
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`Motion originally framed the issue as: “The predetermined network of participants is a group of
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`Apple devices all using the same ‘Apple ID,’ including Family Sharing utilizing at least the
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`organizer’s Apple ID.” Dkt. 232 at Tables 1 and 2. Now that AGIS has demonstrated this
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`theory, Apple attempts to characterize the theory as based on multiple Apple IDs. Dkt. 276 at 1.
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 3 of 10 PageID #: 19321
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`this is the exact scenario AGIS depicted in its original September 2017 contentions, which
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`include a screen shot of Family Sharing between “John” and “Rose.”:
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` Indeed,
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`Dkt. 251-2 at A-6 (emphasis added). Apple essentially seeks to preclude Mr. McAlexander from
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`discussing this figure which depicts two devices using a “common Apple ID” i.e. family sharing
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`even though it was disclosed in September 2017. Dkt. 232 at 1-3.
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`Thus, AGIS’s original contentions, Mr. McAlexander’s report, and every shred of
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`evidence in this case indicate that the alleged infringer’s Apple ID is utilized to determine the
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`scope of the predetermined network whether or not family sharing is activated. See e.g. Dkt.
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`251-5 at A-1, A-5; 250-6 at ¶¶170-172. Apple cannot dispute that the disclosure of the Apple ID
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`is broad enough to encompass uses of the Apple ID whether or not family sharing is activated.
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`Apple has known that the Apple ID functionality implicates family sharing and does not dispute
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`that family sharing has been accused in the scope of the ’970 Patent since 2017. Dkt. 267 at 2.
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`Apple does not dispute that extensive discovery was conducted regarding the family sharing
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`feature in the context of the ’970 Patent. Id.
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`2
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 4 of 10 PageID #: 19322
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`As evidence by Apple’s shifting theory, the true intent of Apple’s motion appears to be
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`broader relief to preclude Mr. McAlexander from discussing family sharing in the context of the
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`’970 Patent entirely. Such relief would be highly prejudicial to AGIS as AGIS would be
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`prevented from addressing (1) the full scope of the undisputed Apple ID identifier (which was
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`disclosed in 2017), and (2) family sharing in the context of “forced message alert software
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`application,” of the ’970 Patent, which is undisputed. Because AGIS disclosed the use of the
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`Apple ID as defining the network, and because AGIS disclosed family sharing as a component of
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`the “forced message alert software application program,” which operates on the predefined
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`network of the ’970 Patent, Apple cannot claim that it was not on notice of AGIS’s positions
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`regarding “family sharing” and the Court should deny Apple’s motion.
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`III. AGIS’S SEPTEMBER 2018 CONTENTIONS DISCLOSE THE NOTIFY ME
`FEATURE IN CONNECTION WITH THE ’055 PATENT
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`Apple’s motion appears to misapprehend AGIS’s contentions and the McAlexander
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`report. Apple does not dispute that AGIS’s September 2018 ‘055 contentions disclosed the
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`“notify me” feature, nor that AGIS put Apple on notice of its theories regarding the accused
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`software mechanism – which is representative of Apple map-based products. Dkt. 267 at 3.
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`Apple cannot point to any indication that it misunderstood AGIS’s identification of “notify me.”
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`Id. Apple only contends that “notify me” was not explicitly mentioned with regard to a single
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`limitation: the identification of a user specified symbol. Id.
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`However, the “identification” limitation relates to how a user interacts with symbols on
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`Apple’s map-based display. Apple does not dispute that AGIS’s contentions set forth the
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`software mechanisms for interacting with Apple’s map-based displays to select symbols and
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`points on a map. Dkt. 267 at 3. Additionally, Apple does not dispute that the source code
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`identified by AGIS is used in the context of both the general map functionality and the “notify-
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`3
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 5 of 10 PageID #: 19323
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`me” sub-feature. Dkt. 267 at 3-4. Instead, Apple complains that AGIS did not include the
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`“notify-me” feature in the “identification of a user specified symbol” claim-chart box. Id. As the
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`mechanism for accepting touch-screen input related to symbols described by AGIS is
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`representative of all Apple map-based applications, AGIS was not required to discuss the
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`“notify-me” feature in that specific box of its contentions. It appears that Apple has again sought
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`to exclude all reference to the “notify-me” feature by setting up a straw-man limitation. Apple
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`cannot claim that it was not on notice of AGIS’s positions and the Court should deny Apple’s
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`motion with regard to the “notify me” feature.
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`IV. AGIS’S SEPTEMBER 2018 CONTENTIONS DISCLOSED THE “NAME OF A
`GROUP MESSAGE” AS THE IDENTIFIER CORRESPONDING TO THE
`GROUP OF THE ’838 PATENT
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`On Reply, Apple admits that AGIS’s messages theory was disclosed. Dkt. 267 at 3-4.
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`Apple shifts its argument to allege, for the first time, that AGIS’s theory was “buried.”1 Dkt.
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`267 at 3-4. However, Apple should not be permitted to wait until this late stage to raise issues
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`with AGIS’s contentions when Apple was silent for over a year.
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`Apple also cannot point to any prejudice. It admits that it was on notice of the
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`“messages” theory in the context of the other asserted patents (which have very similar, if not
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`identical, claim limitations). Furthermore, Apple does not dispute that it conducted discovery
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`into the messages feature and had a full and fair opportunity to address it up to this point in the
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`case. The only party who could suffer any prejudice is AGIS, who would suffer severe prejudice
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`if the Court were to strike, on the eve of trial, portions of its contentions that had been disclosed
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`in early 2018.
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`V.
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`THE RELIEF APPLE SEEKS IS EXTREME AND AGIS WOULD SUFFER
`SEVERE PREJUDICE
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`1 Apple mentions AGIS's "six theories," however Apple fails to tell the Court that AGIS was not "burying" its primary theory, but instead, AGIS
`has maintained each of these theories throughout discovery and has included them in its expert report.
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`4
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 6 of 10 PageID #: 19324
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`The true intention of Apple’s motion appears to be to exclude (1) “family sharing” from
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`every limitation of the ’970 Patent, (2) the “notify me” feature from every limitation of the ’055
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`Patent, and (3) the “messages” feature from every limitation of the ’838 Patent. For each of
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`these features, Apple does not deny that it was on notice of each feature’s respective role in the
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`Accused Instrumentalities. More specifically, Apple admits that each of these functionalities
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`was disclosed in the context of AGIS’s September 2018 contentions (and in most cases much
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`earlier).
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`After being confronted with AGIS’s contentions, Apple shifts its strategy in its Reply to
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`allege that AGIS was not specific enough in its disclosure. See, e.g., Dkt. 267 at 5. However,
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`Apple does not present any evidence of a prior dispute between the parties regarding the scope of
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`AGIS’s contentions and Apple cannot identify any prejudice that it would suffer if the motion
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`were to be denied, particularly when the same accused features are present in uncontested
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`portions of AGIS’s contentions--that is, unless Apple’s true intention is to use its motion as a
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`back-door to obtain a broad ruling that would stealthily strike those portions as well. Indeed, the
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`only specific “prejudice” alleged by Apple is with regard to AGIS’s 3-6 Contentions which
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`AGIS does not rely on for purposes of this motion. Dkt. 267 at 5. Thus, if Apple’s motion were
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`granted, AGIS could suffer severe prejudice in aspects of the case that Apple does not even
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`address in its motion. Accordingly, because AGIS would suffer great prejudice if the motion
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`were to be granted, and because Apple would not suffer any real prejudice if the motion were
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`denied, the Court should deny the motion for these additional reasons.
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`VI. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court deny Apple’s
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`Motion to strike portions of the opening expert report of Mr. Joseph Alexander that rely on
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`untimely disclosed infringement theories.
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`5
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 7 of 10 PageID #: 19325
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`Dated: January 14, 2019
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`BROWN RUDNICK LLP
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`Samuel F. Baxter
`Texas Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
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`6
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 8 of 10 PageID #: 19326
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`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`7
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 9 of 10 PageID #: 19327
`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 9 of 10 PageID #: 19327
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`Case 2:17-cv-00513-JRG Document 301 Filed 01/16/19 Page 10 of 10 PageID #: 19328
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 14, 2019, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/Alfred R. Fabricant
`Alfred R. Fabricant
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