Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 1 of 7 PageID #: 19409
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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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`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S SUR-REPLY
`TO APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY
`JUDGMENT THAT U.S. PATENT NO. 7,630,724 IS NOT INCORPORATED
`INTO U.S. PATENT APPLICATION NO. 14/027,410 (DKT. 226)
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`Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 2 of 7 PageID #: 19410
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`Plaintiff AGIS Software Development LLC (“AGIS”), by and through its undersigned
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`counsel, hereby submits this sur-reply in opposition to Apple Inc.’s Motion for Summary
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`Judgment that U.S. Patent No. 7,630,724 is Not Incorporated Into U.S. Patent Application No.
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`14/027,410 (Dkt. 226) (the “Motion”).
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`Apple does not dispute that the statement at issue is an “incorporated by reference”
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`statement. Dkt. 278 at 1. Apple, however, requests removal of the ’724 Patent from the
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`incorporation statement on the grounds that the language in the ’410 Application was insufficient
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`to demonstrate that AGIS intended to incorporate by reference both the ’728 and ’724 Patents.
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`AGIS has demonstrated (1) clear intent to incorporate; and (2) clear identification of the
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`referenced patents. See Dkt. 259. AGIS has identified a clear intent to incorporate as
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`demonstrated by use of the incorporation by reference statement. Ex. 5 at ¶ 5 (“which is hereby
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`incorporated by reference”). Apple concedes that the text includes an “incorporated by
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`reference” statement, but, without citing to any authority, requires something more to keep the
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`’724 Patent in the incorporation statement. Dkt. 278 at 1. Apple neither identifies, nor explains,
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`how much more was required of AGIS, or how to interpret the portion of the statement Apple
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`wishes to exclude from incorporation. Apple merely suggests that AGIS should have
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`incorporated “all cross-referenced patents and applications” which is a nonstarter and presents
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`precisely the kind of second-guessing of legal advice that should be excluded from the Court’s
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`analysis. More importantly, Apple does not explain whether it has any legal basis to simply
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`isolate and strike a portion of an incorporation statement. Instead, Apple would have this Court
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`modify AGIS’s patent rights to exclude a significant portion of the patent specification so that
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`Apple can gain an advantage in this litigation. Apple’s request for removal of the ’724 Patent
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`from the incorporation-by-reference statement is thus legally questionable (as presented by
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`Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 3 of 7 PageID #: 19411
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`Apple) and highly prejudicial to AGIS. Further, AGIS has clearly identified the patents to be
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`incorporated by reference through identification of both the patent numbers. Id. As a result,
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`AGIS has demonstrated clear intent to incorporate by reference both the ’724 and ’728 Patents.
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`Apple incorrectly characterizes AGIS’s argument with regard to the “Cross Reference to
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`Related Applications.” AGIS does not argue that this statement alone is sufficient to incorporate
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`by reference the ’724 Patent. Instead, AGIS argued, and Apple does not dispute, that the ’410
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`Application recites the ’724 Patent in two places: first in the cross-reference statement, and
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`second, in the incorporation-by-reference statement. Dkt. 259 at 3-4. AGIS further argued that
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`the second recitation of the ’724 Patent was for the purpose of incorporation by reference and not
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`a mere identification; if the statement were a “mere identification” as alleged by Apple, the
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`statement would be superfluous. See Dkt 259 at 3 (“If the incorporation by reference statement
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`were just another identification of the related applications, it would render this statement
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`superfluous.”). In view of these dual statements, one of ordinary skill in the art would have
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`understood that the ’724 Patent was incorporated by reference. Apple does not dispute this
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`inference.
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`Apple’s attempt to exclude Mr. McAlexander’s testimony regarding the understanding of
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`a person of ordinary skill in the art is not legally supportable. Apple cannot dispute that courts,
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`including its home district, use expert testimony to determine whether a host document
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`incorporates another document by reference. Apple does not argue how much weight should be
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`accorded to Mr. McAlexander’s opinions on the understanding of a person of ordinary skill in
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`the art when reading the language of the specification. As AGIS has stated in its opposition,
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`AGIS identified sections of Mr. McAlexander’s rebuttal expert report in response to Apple’s
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`own expert, Dr. Clark who proffers that the ’728 Patent was incorporated by reference. Dkt. 259
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`Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 4 of 7 PageID #: 19412
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`at 5-6. Further, Mr. McAlexander’s opinion provides that the appropriate standard to determine
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`whether the ’410 Application incorporates by reference the ’724 and ’728 Patents is a person
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`with reasonable skill in the art, who would understand the incorporation by reference statement
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`to mean both patents are particularly identified and incorporated by reference. Dkt. 259 at 6.
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`Mr. McAlexander’s testimony is based on evidence including the language, context, and
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`organization of the patent specification, as well as the understanding of a person of ordinary skill
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`in the art, while Mr. Clark’s opinions are devoid of any discussion of the understanding of a
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`person of ordinary skill in the art and lack evidentiary basis. Accordingly, Mr. McAlexander’s
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`opinions should be included in the determination and accorded more weight than Mr. Clark’s
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`conclusory statements.
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`In determining whether to grant summary judgment, there must be “no genuine dispute as
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`to any material fact.” Fed. R. Civ. P. 56(1); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`Apple admits that the incorporation statement is related to the larger issue of priority which
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`involves underlying questions of fact for the jury. Dkt. 278 at 2. Contrary to Apple’s arguments,
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`Apple has merely demonstrated that there is a dispute between the parties on whether the ’410
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`Application incorporates by reference the ’724 Patent. Therefore, Apple has failed to
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`demonstrate that there is an absence of a genuine issue of material fact, and should therefore be
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`precluded from a grant of summary judgment. Additionally, as set forth above, AGIS has
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`demonstrated facts sufficient to support the conclusion that the ’724 Patent has been incorporated
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`by reference.
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`Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 5 of 7 PageID #: 19413
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`CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court deny Apple’s
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`Motion for Summary Judgment that the ’724 Patent Is Not Incorporated by Reference in the ’410
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`Application.
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`Dated: January 18, 2019
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`BROWN RUDNICK LLP
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` /s/ Alfred R. Fabricant
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`
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`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
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`Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 6 of 7 PageID #: 19414
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`Samuel F. Baxter
`Texas Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`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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`Case 2:17-cv-00513-JRG Document 307 Filed 01/18/19 Page 7 of 7 PageID #: 19415
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 18, 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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