Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 1 of 15 PageID #: 19579
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
` Plaintiff,
`
`v.
`
`HUAWEI DEVICE USA INC., et al.,
`
` Defendants.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
` Plaintiff,
`
`v.
`
`APPLE INC.,
`
` Defendant.
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
`
`
`
`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
`
`APPLE INC.’S SUR-REPLY IN OPPOSITION TO DKT. NO. 236, AGIS SOFTWARE
`DEVELOPMENT LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO
`INVALIDITY OVER THE FBCB2 SYSTEM
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 2 of 15 PageID #: 19580
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Pages
`
`INTRODUCTION ...............................................................................................................1
`
`ARGUMENT .......................................................................................................................1
`
`A.
`
`AGIS Is Not Entitled To Summary Judgment Of No Invalidity Over
`FBCB2 Even If Its Motion To Strike Information About “The Process of
`Dynamically Electing Servers” (Dkt. No. 233) Is Granted. ....................................1
`
`1.
`
`2.
`
`AGIS Does Not Dispute That Its Motion To Strike Portions of Dr.
`Siegel’s Report Relating To The “Process for Dynamically
`Electing Servers” Does Not Affect The ’055 Patent. ..................................1
`
`AGIS Is Not Entitled To Summary Judgment Of No Invalidity
`Over FBCB2 As To The Other Asserted Patents.........................................2
`
`B.
`
`C.
`
`AGIS Is Not Entitled To Summary Judgment Of No Invalidity Over
`FBCB2 Even If Its Motion To Strike Allegedly New Obviousness
`Combinations (Dkt. No. 234) Is Granted. ................................................................6
`
`No Support Exists For AGIS’s Request That The Court Preclude Apple
`From Raising Evidence Or Testimony Associated With The FBCB2
`System At Trial. .......................................................................................................9
`
`III.
`
`CONCLUSION ....................................................................................................................9
`
`
`
`i
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 3 of 15 PageID #: 19581
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Pages
`
`Fleming v. Escort Inc.,
`774 F.3d 1371 (Fed. Cir. 2014)........................................................................................... 8
`
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013)........................................................................................... 9
`
`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp.,
`264 F.3d 1344 (Fed. Cir. 2001)........................................................................................... 9
`
`TransWeb, LLC v. 3M Innovative Properties Co.,
` 812 F.3d 1295 (Fed. Cir. 2016)...................................................................................... 5, 8
`
`
`
`
`
`
`ii
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 4 of 15 PageID #: 19582
`
`
`
`
`
`
`
`TABLE OF EXHIBITS
`
`Exhibit Number
`
`Description
`
`Ex. 1
`Ex. 2
`
`Ex. 3
`Ex. 4
`
`Ex. 5
`
`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
`
`
`
`iii
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 5 of 15 PageID #: 19583
`
`
`
`I.
`
`INTRODUCTION
`
`As Apple explained in its Opposition, AGIS’s motion for partial summary judgment
`
`depends on the Court granting AGIS’s motions to strike portions of Dr. Neil Siegel’s expert report
`
`(Dkt. Nos. 233, 234).1 Because both those motions to strike should be denied, so too should this
`
`motion. Further, even if the Court grants AGIS’s motions to strike, Dr. Siegel’s report would
`
`contain sufficient support for his opinion that the FBCB2 system anticipates or renders obvious
`
`every asserted claim of the four “Location Patents.”2 AGIS’s Reply does not provide any
`
`substantive explanation to the contrary, and there is no factual or legal basis for such an argument.
`
`AGIS’s motion for partial summary judgment should be denied.
`
`II.
`
`ARGUMENT
`
`A.
`
`AGIS Is Not Entitled To Summary Judgment Of No Invalidity Over FBCB2
`Even If Its Motion To Strike Information About “The Process of Dynamically
`Electing Servers” (Dkt. No. 233) Is Granted.
`
`1.
`
`AGIS Does Not Dispute That Its Motion To Strike Portions of Dr.
`Siegel’s Report Relating To The “Process for Dynamically Electing
`Servers” Does Not Affect The ’055 Patent.
`
`In its Opposition to AGIS’s motion for summary judgment, Apple explained that Dr.
`
`Siegel’s report does not discuss dynamic server election as part of his opinions concerning the
`
`’055 patent. (Dkt. No. 266 at 3.) In its Reply, AGIS does not dispute that its motion to strike does
`
`not affect any claim of the ’055 patent. Accordingly, AGIS’s motion for summary judgment
`
`should be denied as to the ’055 patent.
`
`
`1 AGIS’s motion for partial summary judgment is Dkt. No. 236; Apple’s opposition thereto is Dkt.
`No. 266; and AGIS’s reply is Dkt. No. 285.
`2 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”).
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 6 of 15 PageID #: 19584
`
`
`
`2.
`
`AGIS Is Not Entitled To Summary Judgment Of No Invalidity Over
`FBCB2 As To The Other Asserted Patents.
`
`Even if the Court grants AGIS’s motion to strike the portions of Dr. Siegel’s report
`
`regarding dynamically elected servers, AGIS is not entitled to summary judgment. AGIS argues
`
`that, absent this testimony, Apple will not have support for any server limitation of the asserted
`
`claims because Dr. Siegel “defines the FBCB2 system servers as ‘dynamically electing servers.’”
`
`(Reply at 2.) This argument misrepresents Dr. Siegel’s report. The portions of Dr. Siegel’s report
`
`that AGIS seeks to strike describe a process by which an FBCB2 computer was designated to act
`
`as a server—a process he refers to as “the process for dynamically electing servers.” Those
`
`portions of the report do not focus on the computer hardware that Dr. Siegel contends plays the
`
`role of the server in FBCB2, much less describe that hardware as a “dynamically electing server.”
`
`(See Ex. 1 (Siegel Report) ¶¶ 71, 100, 104, 161, 164, 168, 183, 219, 235, 243, 265, 273, 418, 470.)
`
`For example, in Paragraph 100 of his report, which pertains to claim 1 of the ’838 patent, Dr.
`
`Siegel states:
`
`
`
`2
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 7 of 15 PageID #: 19585
`
`
`
`
`Each of the other paragraphs AGIS seeks to strike is the same as, or substantially similar to,
`
`
`
`Paragraph 100.
`
`Dr. Siegel describes the computer hardware that could be designated as a server in FBCB2
`
`in other portions of his report that AGIS does not seek to strike. For example, in Paragraph 95 of
`
`his report (which also pertains to claim 1 of the ’838 patent), Dr. Siegel explains that FBCB2 end
`
`user computers acted as servers for the system:
`
`Dr. Siegel includes this same explanation for each asserted claim of each of the ’838, ’829, and
`
`’251 patents (i.e., the claims that include server limitations). (See Ex. 1 (Siegel Report) ¶¶ 95, 159,
`
`184, 220, 234, 264, 413, 465.) Thus, even if the Court were to strike Dr. Siegel’s statements about
`
`
`
`
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 8 of 15 PageID #: 19586
`
`
`
`the dynamic server election process that is used to designate a computer to act as the FBCB2
`
`server, Dr. Siegel’s report would still include ample evidence identifying the particular devices
`
`that meet the server limitations.
`
`Dr. Siegel’s report also confirms that FBCB2’s servers perform the functions required of
`
`servers by the asserted claims. For example, paragraph 99 of Dr. Siegel’s report (which, again,
`
`relates to claim 1 of the ’838 patent) explains that FBCB2 servers facilitate the exchange of
`
`location information among FBCB2 devices:
`
`
`
`Dr. Siegel’s report regarding every server limitation of every asserted claim includes similar
`
`statements that confirm that FBCB2 used servers in a manner that anticipates the asserted claims.
`
`(See, e.g., Ex. 1 (Siegel Report) ¶¶ 96, 97, 98, 99, 103, 105, 108, 117, 118, 133, 138, 152, 159 (Dr.
`
`Siegel’s discussion of server limitations of claim 1 of the ’838 patent and dependent claims
`
`depending from claim 1).) Thus, even if the Court were to strike Dr. Siegel’s statements about the
`
`dynamic server election process that is the FBCB2 system used to designate a computer to act as
`
`the FBCB2 server, Dr. Siegel’s report would still include evidence confirming that FBCB2 servers
`
`performed the functions outlined in the asserted claims.
`
`
`
`4
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 9 of 15 PageID #: 19587
`
`
`
`In sum, even without any information regarding the process by which FBCB2 elected a
`
`computer to act as a server, Dr. Siegel’s report would contain support for his anticipation and
`
`obviousness arguments regarding each asserted claim because it identifies the computers that acted
`
`as servers and the functions they performed. None of those statements is incomplete or dependent
`
`on the process by which the server became the “server.” (See, e.g., id.) Accordingly, even if the
`
`Court strikes portions of Dr. Siegel’s report related to the process of dynamically electing a server,
`
`summary judgment would be unwarranted.
`
`
`
`Likewise, striking the paragraphs of Dr. Siegel’s report detailing the process of
`
`dynamically electing servers would not leave unsupported Dr. Siegel’s opinions regarding the
`
`invalidity of claims requiring a “second server.”3 For each of those claims, Dr. Siegel affirms that
`
`FBCB2 anticipates the “second server” limitation. For example, in paragraph 103 of his report,
`
`Dr. Siegel affirms that FBCB2 uses a second server and that the second server performs the
`
`functions required by claim 1 of the ’838 patent:
`
`This, combined with the portions of his report (described above) that explain which FBCB2 user
`
`computers acted as servers, is sufficient to raise a genuine dispute of material fact as to whether
`
`FBCB2 anticipates the “second server” limitations. See TransWeb, LLC v. 3M Innovative
`
`Properties Co., 812 F.3d 1295, 1301-02 (Fed. Cir. 2016) (finding of anticipation “does not require
`
`
`
`
`3 Only the asserted claims of the ’838 patent (claims 5, 10, 15, 18, 19, 20, 38, 40, and 54) and
`certain asserted claims of the ’829 patent (claims 42, 50, and 68) require a “second server.” None
`of the asserted claims of the ’055 and ’251 patents require a “second server,” nor do asserted claims
`2, 8, 20, 14, 30, and 34 of the ’829 patent.
`
`
`
`5
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 10 of 15 PageID #: 19588
`
`
`
`that every detail of [prior art inventor] testimony be independently and conclusively supported”
`
`by the corroborating evidence). Dr. Siegel’s report regarding every second server limitation of
`
`every asserted claim includes similar statements affirming that FBCB2 meets the second server
`
`limitations and stating what computers could act as servers in FBCB2. Accordingly, even if the
`
`Court strikes Dr. Siegel’s report regarding dynamic server election, his report would include
`
`support for a finding of anticipation of the “second server” limitations of the asserted claims.4
`
`
`
`In sum, because none of Dr. Siegel’s opinions about the invalidity of the asserted claims
`
`depends on the process by which the server is designated to act as the server, AGIS is not entitled
`
`to summary judgment of no invalidity even if the Court strikes that testimony.
`
`B.
`
`AGIS Is Not Entitled To Summary Judgment Of No Invalidity Over FBCB2
`Even If Its Motion To Strike Allegedly New Obviousness Combinations (Dkt.
`No. 234) Is Granted.
`
`In its Opposition to AGIS’s motion for summary judgment, Apple explained that, even if
`
`the Court grants AGIS’s motion to strike Dr. Siegel’s allegedly new obviousness combinations by
`
`striking every reference in the Siegel report to Dr. Siegel’s patents, his report would still contain
`
`support for his opinion that the FBCB2 system anticipates or renders obvious every limitation of
`
`every asserted claim of each Location Patent. (Opposition at 7.) AGIS replies that, “[w]ithout the
`
`Siegel patents, Apple cannot establish that FBCB2 meets each and every limitations [sic] of the
`
`claims. Dr. Siegel’s report is dependent on the Siegel patents, as is evidenced by the extensive
`
`
`4 Moreover, Dr. Siegel’s report details his opinions that each of the “second server” limitations is
`obvious in view of FBCB2 and the knowledge of a person of ordinary skill in the art. (See Ex. 1
`(Siegel Report) ¶¶ 94, 158, 233, 263.) Dr. Siegel’s report discloses why a person of ordinary skill
`in the art would have been motivated to use a second server in FBCB2—namely, that the first
`server could become blocked or damaged. (See Ex. 1 (Siegel Report) ¶¶ 71, 100, 104, 164, 168,
`183, 219, 235, 243, 265, 273, 418, 470.) Thus, even if the Court strikes the paragraphs of Dr.
`Siegel’s report regarding the process for dynamically electing servers, Dr. Siegel should still, at a
`minimum, be allowed to present testimony that the asserted Location Patent claims requiring a
`second server are obvious in view of FBCB2 and the knowledge of a person of ordinary skill in
`the art.
`
`
`
`6
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 11 of 15 PageID #: 19589
`
`
`
`portions of the report that cite exclusively to the patents for evidentiary support[.]” (Reply at 3
`
`(emphases added).)
`
`These statements give the lie to the theory presented in AGIS’s motion to strike. (Dkt. No.
`
`234.) AGIS does not dispute that Dr. Siegel’s report presents an anticipation theory of invalidity,
`
`i.e. a theory that “FBCB2 meets each and every limitation of the claims.” AGIS does not dispute
`
`that his patents are cited as “evidentiary support.” Yet AGIS’s motion to strike asks the Court to
`
`believe that Dr. Siegel cited his patents not as evidentiary support for his anticipation theory, but
`
`instead cited them for the utterly implausible purpose of sneaking into this case a new, multi-
`
`reference obviousness combination. AGIS then asks the Court to grant the disproportionate
`
`remedy of precluding Apple from using the Siegel patents for any purpose, and, based on that
`
`relief, to grant summary judgment of no invalidity under any theory based on a lack of evidentiary
`
`support from the Siegel patents. In other words, AGIS constructed a new obviousness invalidity
`
`theory, then moved to strike it in a way that makes collateral damage of the invalidity theories
`
`Apple has advanced since the beginning of this case.
`
`AGIS’s strategy should fail, and not just because its motion to strike is meritless. Indeed,
`
`even if the Court does strike Dr. Siegel’s references to his patents, the other evidence, opinions,
`
`and corroborating documents cited in his report would still establish anticipation and obviousness.
`
`Although AGIS cites numerous paragraphs of Dr. Siegel’s report that reference the Siegel patents
`
`as corroboration for Dr. Siegel’s testimony (see Reply at 3), most of those paragraphs pertain to
`
`limitations for which Dr. Siegel cites additional documents that corroborate his testimony. (See
`
`Ex. 1 (Siegel Report) ¶¶ 97, 154, 191, 194, 227, 230, 237, 244, 250, 274, 280, 303, 324, 350, 376,
`
`404, 437.) For example, paragraph 191 cites five references in addition to a Siegel patent:
`
`
`
`7
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 12 of 15 PageID #: 19590
`
`
`
`
`
`Each of the few paragraphs of Dr. Siegel’s report that do not pertain to a limitation citing
`
`other corroboration relates to FBCB2’s “unit task organization” tool for setting up groups, which
`
`is outlined and claimed in Dr. Siegel’s ’559 patent. (See, e.g., Ex. 1 (Siegel Report) ¶ 96-97.) At
`
`most, this evidence is relevant to one limitation of each asserted claim. AGIS provides no authority
`
`for the proposition that Apple cannot prove that those limitations are anticipated by or obvious in
`
`view of the FBCB2 system if the Court were to strike references to Dr. Siegel’s ’559 patent. To
`
`the contrary, the Federal Circuit has repeatedly held that not every individual statement from a
`
`prior art inventor regarding anticipation needs to be “independently and conclusively supported by
`
`corroborating evidence,” but instead that the evidence as a whole must be considered under a “rule
`
`of reason analysis” that examines “all pertinent evidence” in order to determine whether the
`
`testimony is credible. See TransWeb, 812 F.3d at 1301-03 (internal citations omitted) (upholding
`
`jury verdict of anticipation); Fleming v. Escort Inc., 774 F.3d 1371, 1376 (Fed. Cir. 2014); Ohio
`
`
`
`8
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 13 of 15 PageID #: 19591
`
`
`
`Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1348 (Fed. Cir. 2013); Sandt Tech., Ltd. v. Resco
`
`Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001). As Apple explained in its
`
`Opposition, Dr. Siegel was the individual responsible for developing the FBCB2 system for more
`
`than 14 years, and he has extensive factual knowledge of that system. (See Opposition at 1-2
`
`(statement of undisputed facts); see also AGIS’s Reply at 1 (not disputing Apple’s statements)).
`
`His testimony and report regarding the features of that system raise a triable issue of fact regarding
`
`the invalidity of the asserted claims as anticipated and obvious.
`
`Because Dr. Siegel’s report would raise genuine issues of fact as to the invalidity of the
`
`Location Patents even if the Court strikes his report’s references to the Siegel patents, AGIS’s
`
`motion for summary judgment in view of AGIS’s motion to strike should be denied.
`
`C.
`
`No Support Exists For AGIS’s Request That The Court Preclude Apple From
`Raising Evidence Or Testimony Associated With The FBCB2 System At Trial.
`
`In its Opposition to AGIS’s motion, Apple pointed out that AGIS failed to provide any
`
`support for its request to “preclude Apple from raising the FBCB2 system and any evidence or
`
`testimony associated with the FBCB2 system, at trial.” (Dkt. No. 266 at 8.) AGIS’s Reply does
`
`not cite any such support, or even mention its original request. Accordingly, AGIS’s request to
`
`preclude any evidence or testimony related to the FBCB2 system should be denied.
`
`III. CONCLUSION
`
`For the reasons described above, Apple respectfully requests that this Court DENY AGIS’s
`
`Motion for Partial Summary Judgment of No Invalidity over the FBCB2 System (Dkt. No. 236).
`
`
`
`
`
`9
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 14 of 15 PageID #: 19592
`
`Dated: January 22, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`By: Respectfully submitted:
`
`
`
`/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
`Joze Welsh
`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
`Email: jwelsh@desmaraisllp.com
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
`
`
`
`10
`
`

`

`Case 2:17-cv-00513-JRG Document 314 Filed 01/22/19 Page 15 of 15 PageID #: 19593
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing document was filed electronically in
`
`compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and
`
`correct copy of the foregoing document by electronic mail on January 22, 2019.
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`11
`
`