Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 1 of 7 PageID #: 19707
`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 1 of 7 PageID #: 19707
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`EXHIBIT 16
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`EXHIBIT 16
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`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 2 of 7 PageID #: 19708
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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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`APPLE INC.,
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`Defendant.
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`Civil Action No. 2:17-cv-513-JRG
`LEAD CASE
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`Civil Action No. 2:17-cv-0516-JRG
`Consolidated Case
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`APPLE INC.’S PRELIMINARY ELECTION OF PRIOR ART REFERENCES
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`Defendant Apple Inc. (“Apple”) serves its Preliminary Election of Prior Art References, as
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`set forth below, pursuant to the Court’s Second Amended Docket Control Order (Dkt. No. 115)
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`and in view of Plaintiff AGIS Software Development, LLC’s (“AGIS”) April 16, 2018 Preliminary
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`Election of Asserted Claims. Apple expressly reserves its right to assert at or before trial that the
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`patents-in-suit are invalid for additional reasons, including (without limitation) under 35 U.S.C.
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`§§ 101 and/or 112. Apple further expressly reserves its rights to assert additional prior art
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`references uncovered during the course of fact discovery (including, but not limited to, any
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`references based upon discovery from third parties).
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`I.
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`U.S. Pat. No. 8,213,970
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`The asserted claims of U.S. Pat. No. 8,213,970 are invalid in view of the following prior
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`art references alone, in combination with certain references as identified in the exhibits to Apple’s
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`December 1, 2017 invalidity contentions cited herein, and/or in combination with the knowledge
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`of a person of ordinary skill in the art prior to the date of the alleged invention of the asserted
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`claims:
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`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 3 of 7 PageID #: 19709
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`(cid:120) United States Patent Publication No. 2003/0217109, entitled “Method and Apparatus
`for Automatic Notification and Response” to Ordille (APLAGIS_00012105 - APL-
`AGIS_00012144), as demonstrated in Exhibit A-1 to Apple’s December 1, 2017
`invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent Application No. 08/0219416, entitled “Method and System for
`Obtaining Feedback from at Least One Recipient Via a Telecommunication Network”
`to Roujinsky (APL-AGIS_00012145 - APLAGIS_00012161), as demonstrated in
`Exhibit A-2 to Apple’s December 1, 2017 invalidity contentions and in any subsequent
`amendments thereto.
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`(cid:120) United States Patent No. 7,609,669, entitled “Voice Directed System and Method
`Configured for Assured Messaging to Multiple Recipients” to Sweeney (APL-
`AGIS_00012170 - APL-AGIS_00012180), as demonstrated in Exhibit A-3 to Apple’s
`December 1, 2017 invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent No. 7,386,589, entitled “Managed Messaging Platform with
`Message Response Aggregation” to Tanumihardja (APLAGIS_00012181 - APL-
`AGIS_00012235), as demonstrated in Exhibit A-4 to Apple’s December 1, 2017
`invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent No. 6,816,878, entitled “Alert Notification System” to Zimmers
`(APL-AGIS_00012236 - APL-AGIS_00012283), as demonstrated in Exhibit A-5 to
`Apple’s December 1, 2017 invalidity contentions and in any subsequent amendments
`thereto.
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`(cid:120) United States Patent No. 5,692,032, entitled “Mobile Terminal Having One Key User
`Message Acknowledgment Function” to Seppanen (APLAGIS_00012162 - APL-
`AGIS_00012169), as demonstrated in Exhibits A-1, A-2, A-3, A-4 and A-5 to Apple’s
`December 1, 2017 invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent Publication No. 2006/0178128, entitled “Method of Operating a
`Mobile Communication Device and Mobile Communication System During an
`Emergency Situation” to Eaton (APL-AGIS_00012094 - APL-AGIS_00012104), as
`demonstrated in Exhibits A-1, A-2, A-3, A-4 and A-5 to Apple’s December 1, 2017
`invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent No. 6,148,332, entitled “Mandatory Message Display and
`Reporting System” to Brewer (APL-AGIS_00012914 - APLAGIS_00012922), as
`demonstrated in Exhibits A-1, A-2, A-3, A-4 and A-5 to Apple’s December 1, 2017
`invalidity contentions and in any subsequent amendments thereto.
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`II.
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`Each of U.S. Pat. Nos. 9,408,055; 9,445,251; 9,467,838; and 9,749,829
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`The asserted claims of U.S. Pat. Nos. 9,408,055; 9,445,251; 9,467,838; and 9,749,829 are
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`invalid in view of the following prior art references alone, in combination with certain references
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`2
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`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 4 of 7 PageID #: 19710
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`as identified in the exhibits to Apple’s December 1, 2017 invalidity contentions cited herein, and/or
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`in combination with the knowledge of a person of ordinary skill in the art prior to the proper
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`priority date of the asserted claims:
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`(cid:120) United States Patent Application No. 2007/0281690, entitled “Displaying and Tagging
`Places of Interest on Location-Aware Mobile Communication Devices in a Local Area
`Network” to Altman (APLAGIS_00011797 - APL-AGIS_00011823), as demonstrated
`in Exhibit B-3, C-3, D-3, and E-3 to Apple’s December 1, 2017 invalidity contentions
`and in any subsequent amendments thereto.
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`(cid:120) United States Patent No. 7,353,034, entitled “Location Sharing and Tracking Using
`Mobile Phones or Other Wireless Devices” to Haney (APL-AGIS_00011875 - APL-
`AGIS_00011939), as demonstrated in Exhibit B-7, C-7, D-7, and E-7 to Apple’s
`December 1, 2017 invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent No. 7,917,866, entitled “Method, System, and Graphical User
`United States Patent No. 7,917,866, entitled “Method, System, and Graphical User
`Interface for Meeting-Spot-Related Online Communications” to Karam
`Interface for Meeting-Spot-Related Online Communications” to Karam (APL-
`AGIS_00011940 - APL-AGIS_00011962), as demonstrated in Exhibit B-8, C-8, D-8,
`and E-8 and in any subsequent amendments thereto.
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`(cid:120) United States Patent Application No. 2002/0115453, entitled “Method and System for
`Location Based Wireless Communication Services” to Poulin (APL-AGIS_00011986
`- APL-AGIS_00012004), as demonstrated in Exhibit B-10, C-10, D-10, and E-10 to
`Apple’s December 1, 2017 invalidity contentions and in any subsequent amendments
`thereto.
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`(cid:120) United States Patent No. 7,450,003, entitled “User-Defined Private Maps” to Weber
`United States Patent No. 7,450,003, entitled “User-Defined Private Maps” to Weber
`(APL-AGIS_00012073 - APL-AGIS_00012093), as demonstrated in Exhibit B-11, C-
`11, D-11, and E-11 to Apple’s December 1, 2017 invalidity contentions and in any
`subsequent amendments thereto.
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`(cid:120) United States Patent No. 7,330,112, entitled “Location-Aware Services” to Emigh
`United States Patent No. 7,330,112, entitled “Location-Aware Services” to Emigh
`(APL-AGIS_00011851 - APL-AGIS_00011874), as demonstrated in Exhibit B-13, C-
`13, D-13, and E-13 to Apple’s December 1, 2017 invalidity contentions and in any
`subsequent amendments thereto.
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`(cid:120) United States Patent No. 6,867,733, entitled “Method and System for a Plurality of
`Mobile Units to Locate One Another” to Sandhu (APLAGIS_00012005 - APL-
`AGIS_00012017), as demonstrated in Exhibit B-12, C-12, D-12, and E-12 to Apple’s
`December 1, 2017 invalidity contentions and in any subsequent amendments thereto.
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`(cid:120) United States Patent No. 7,271,742, entitled “Method and Apparatus for Sending,
`Retrieving and Planning Location Relevant Information”
`to Sheha (APL-
`AGIS_00012018 - APL-AGIS_00012072), as demonstrated in Exhibit B-12, C-12, D-
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`3
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`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 5 of 7 PageID #: 19711
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`12, and E-12 to Apple’s December 1, 2017 invalidity contentions and in any subsequent
`amendments thereto.
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`(cid:120) The ActiveCampus system, as described in at least the materials identified in Exhibits
`B-1, C-1, D-1, and E-1 to Apple’s Patent Rule 3-3 Invalidity Contentions served
`December 1, 2017, and in any subsequent amendments thereto.
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`(cid:120) AGIS’s LifeRing product and its prototypes, as described in at least the materials
`identified in Exhibits B-2, C-2, D-2, and E-2 to Apple’s Patent Rule 3-3 Invalidity
`Contentions served December 1, 2017, and in any subsequent amendments thereto.
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`(cid:120) The AT&T Find Friends system, as described in at least the materials identified in
`The AT&T Find Friends system,
`Exhibits B-5, C-5, D-5, and E-5 to Apple’s Patent Rule 3-3 Invalidity Contentions
`served December 1, 2017, and in any subsequent amendments thereto.
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`(cid:120) The BuddySpace system, as described in at least the materials identified in Exhibits B-
`The BuddySpace system,
`6, C-6, D-6, and E-6 to Apple’s Patent Rule 3-3 Invalidity Contentions served
`December 1, 2017, and in any subsequent amendments thereto.
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`(cid:120) The Navizon system, as described in at least the materials identified in Exhibits B-9,
`C-9, D-9, and E-9 to Apple’s Patent Rule 3-3 Invalidity Contentions served December
`1, 2017, and in any subsequent amendments thereto.
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`(cid:120) The Automatic Packet/Position Reporting System, as described in at least the materials
`identified in Exhibits B-4, C-4, D-4, and E-4 to Apple’s Patent Rule 3-3 Invalidity
`Contentions served December 1, 2017, and in any subsequent amendments thereto.
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`(cid:120) The Force XXI Battle Command, Brigade and Below system, as described in at least
`The Force XXI Battle Command, Brigade and Below system, as described in at least
`the materials identified in B-14, C-14, D-14, and E-14 to Apple’s Patent Rule 3-3
`the materials identified in B-14, C-14, D-14, and E-14 to Apple’s Patent Rule 3-3
`Invalidity Contentions served December 1, 2017, and in any subsequent amendments
`Invalidity Contentions served December 1, 2017, and in any subsequent amendments
`thereto.
`thereto.
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`In addition, as Apple explained in its December 1, 2017 Patent Rule 3-3 Invalidity
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`Contentions and April 16, 2018 Amended Patent Rule 3-3 Invalidity Contentions, U.S. Pat. Nos.
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`9,408,055; 9,445,251; 9,467,838; and 9,749,829 are entitled to a priority date no earlier than
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`October 31, 2014. Apple expressly reserves its right to assert at trial that, under that priority date,
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`to the extent that any of the accused Apple products are determined to infringe any claim of any
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`of those asserted patents, those accused Apple products would also render the claims invalid under
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`at least AIA 35 U.S.C. § 102(a)(1) because they were each in public use and on sale or available
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`for download before the effective filing date of those patents. Apple further reserves the right to
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`4
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`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 6 of 7 PageID #: 19712
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`assert at trial that, under that priority date, earlier AGIS patents and/or applications, including
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`(without limitation) U.S. Patent No. 7,630,724, would also render the claims invalid under at least
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`AIA 35 U.S.C. § 102(a)(1) because they were publicly available before the effective filing date of
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`the those asserted patents.
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`Dated: April 30, 2018
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`By:
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`5
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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
`Michael P. Stadnick
`Ameet A. Modi
`Kerri-Ann Limbeek
`Brian Matty
`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: mstadnick@desmaraisllp.com
`Email: amodi@desmaraisllp.com
`Email: klimbeek@desmaraisllp.com
`Email: bmatty@desmaraisllp.com
`Email: kbi@desmaraisllp.com
`Email: fsilletta@desmaraisllp.com
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`Attorneys for Defendant Apple Inc.
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`Case 2:17-cv-00513-JRG Document 320-1 Filed 01/23/19 Page 7 of 7 PageID #: 19713
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via electronic mail
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`per Local Rule CV-5(a)(3) on April 30, 2018. Any other counsel of record will be served
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`by First Class U.S. mail on this same date.
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`/s/ Melissa R. Smith
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