Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 1 of 8 PageID #: 19687
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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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`§
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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 RELATIVE TO SEALED MOTION
`FOR SUMMARY JUDGMENT OF APPLICATION OF POST-AIA LAW
`TO U.S. PATENT NOS. 9,408,055; 9,445,251; 9,467,838; AND 9,749,829; AND
`FOR SUMMARY JUDGMENT OF UNENFORCEABILITY
`DUE TO UNCLEAN HANDS (DKT. 227)
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`Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 2 of 8 PageID #: 19688
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`Plaintiff AGIS Software Development LLC (“AGIS”) hereby submits its Sur-Reply to
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`Defendant Apple Inc.’s (“Apple”) Reply to Sealed Motion for Summary Judgment of
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`Application of Post-AIA Law to U.S. Patent Nos. 9,445,251; 9,467,838; and 9,749,829; and for
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`Summary Judgment of Unenforceability Due to Unclean Hands (Dkt. 227).
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`I.
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`INTRODUCTION
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`Apple’s motion lacks merit. First, Apple does not and cannot point to any authority,
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`binding or persuasive, in support of its interpretation that AIA law must apply where the USPTO
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`specifically designated a patent as pre-AIA over the applicant’s objections. The issue of whether
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`AIA law applies to the district-court review of the patents-in-suit, which issued from transitional
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`applications examined by the PTO under pre-AIA law, appears to be a matter of first impression.
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`Second, Apple fails to acknowledge the substance of highly-relevant written correspondence in
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`which AGIS expressly states that it did not dispute (1) statements made during prosecution, and
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`(2) the PTO’s examination of the ’838 patent under AIA. Combined with the fact that AGIS
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`requested review of its transitional applications under AIA review, which Apple does not
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`dispute, shows that AGIS made no misrepresentations to the PTO or Apple. Indeed, “forcing
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`Apple to bring” this motion over disagreement about statutory interpretation of new law––
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`without precedent––does not invoke the doctrine of unclean hands.
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`II.
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`THE UNDISPUTED FACTS SHOW THAT APPLE SHOULD NOT PREVAIL AS
`A MATTER OF LAW
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`“In granting summary judgment, the court must ensure that there is no reasonable version
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`of material disputed facts whereby the non-movant could prevail . . . and that the judgment is
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`correct as a matter of law.” Vivid Techs. v. Am. Sci. & Eng’g., Inc., 200 F.3d 795, 807 (Fed. Cir.
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`1999) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)).
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`Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 3 of 8 PageID #: 19689
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`A.
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`Apple’s Alleged Prior Art is An Invention that May be Sworn Behind Under
`Post-AIA 102(g)
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`Apple concedes that the patents in question are transitional patents, such that § 102(g)
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`provides for swearing behind inventions by showing earlier conception and reasonably diligent
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`reduction to practice. Dkt. 286 at 2. An invention as defined by 35 U.S.C. §100 must
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`demonstrate conception and reduction to practice. Teva Pharmaceutical Industries Ltd. v.
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`AstraZeneca Pharmaceuticals LP, 661 F.3d 1378, 1381 (Fed. Cir. 2011). Conception and
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`reduction to practice are questions of law based on subsidiary factual findings. Id.
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`The FBCB2 system featured in Apple’s invalidity contentions and invalidity expert report
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`is a prior art invention that may be sworn behind both pre-AIA and post-AIA by transitional
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`patents.
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` Apple’s argument that it “does not
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`intend to assert prior art invention under § 102(g) at trial,” [Dkt. 286 at 2] is irrelevant; statutory
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`categorization of prior art under § 102 is a question of law with subsidiary factual
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`determinations, not up to the discretion of any given defendant. See Dow Chemical Co. v. Astro-
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`Valcour, Inc., 267 F.3d 1334, 1340 (Fed. Cir. 2001) (examining criteria such as inventor’s belief
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`that “he invented anything,” and filing of patent applications in finding that the requirements of
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`102(g) were met). Thus, the undisputed facts of this case support a finding that FBCB2 is an
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`invention that may be sworn behind by the patents in question, even if found to be covered by
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`AIA law.
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`B.
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`AGIS Did Not Take a Position Inconsistent with Representations Made to the
`USPTO
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`The doctrine of unclean hands applies in cases where a party is “tainted with
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`inequitableness or bad faith relative to the matter in which he seeks relief.” Precision Instrument
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`Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 814, 65 S. Ct. 993, 997, 89
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`2
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`Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 4 of 8 PageID #: 19690
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`L. Ed. 1381, 65 USPQ 133 (1945). “In patent cases, unclean hands applies only in ‘extreme
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`circumstances,’ such as knowingly making false statements in an affidavit, or defrauding the
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`PTO through perjury and bribery. Bombardier Recreational Prods., Inc. v. Arctic Cat Inc., No.
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`12-2706 JRT/LIB, 2017 WL 5610220, at *2 (D. 8 Minn. Nov. 20, 2017) (citing
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`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., No. 15-1202 2017 WL 275465, at *7
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`(E.D. Tex. Jan. 20, 2017)); see also Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556,
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`1571 (Fed. Cir. 1983). As noted in its Reply, Apple filed this Motion despite possessing highly-
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`relevant written correspondence in which AGIS represented that it did not dispute (1) statements
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`made during prosecution, and (2) the PTO’s examination of the ’838 patent under AIA. Dkt. 286
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`at 2. Apple does not deny that it withheld this written correspondence from the Court, failing to
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`inform the Court of AGIS’s statements which are inconsistent with Apple’s position in this
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`Motion. The full record thus shows that AGIS made no misrepresentation of any sort; Apple’s
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`accusations lack merit and are unsupported.
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`C.
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`Apple Cannot Show That Post-AIA Law Governs the Patents in Question
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`Apple fails to show any binding or persuasive authority supporting its position that the
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`USPTO’s official determination that pre-AIA law applied during prosecution of the patents in
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`question, over the applicant’s urgings, should now be reversed. Nor does Apple suggest that the
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`deference due to the USPTO is abrogated in determining whether pre-AIA law applies to a
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`patent application. See Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467
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`U.S. 837, 844 (1984).
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`Apple concedes that the PTO did not erroneously or unreasonably apply pre-AIA law.
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`See Dkt. 227. As the doctrine of unclean hands does not apply here, and Apple does not even
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`purport to make any showing that the PTO’s determination is not entitled to deference as a
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`matter of law, pre-AIA law must govern the ‘055, ‘251, ‘828, and ‘829 patents, allowing AGIS
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`3
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`Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 5 of 8 PageID #: 19691
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`to swear behind all statutory categories of prior art references. Indeed, Apple submits no
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`authority to indicate otherwise. Thus, because Apple cannot meet its burden to show that AIA
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`law should govern the patents in question as a matter of law, it should not prevail in summary
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`judgment.
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`III. 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 in its entirety.
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`Dated: January 22, 2019
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`BROWN RUDNICK LLP
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` /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
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`Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 6 of 8 PageID #: 19692
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`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 State 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 319 Filed 01/23/19 Page 7 of 8 PageID #: 19693
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
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`pursuant to the Protective Order entered in this case.
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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`Case 2:17-cv-00513-JRG Document 319 Filed 01/23/19 Page 8 of 8 PageID #: 19694
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 22, 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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