Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 1 of 9 PageID #: 19762
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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 REGARDING
`SEALED MOTION FOR SUMMARY JUDGMENT OF
`NON-INFRINGEMENT OF U.S. PATENT NO. 8,213,970 (DKT. 228)
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`Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 2 of 9 PageID #: 19763
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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 Regarding its Sealed Motion for Summary Judgment of
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`Non-Infringement of U.S. Patent No. 8,213,970 (Dkt. 228).
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`I.
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`APPLE FAILS TO ESTABLISH THERE ARE NO FACTUAL DISPUTES
`REGARDING NON-INFRINGEMENT OF THE ‘970 PATENT
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`Apple alleges that there is no dispute that the response list can be cleared without
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`selecting a response from the response list. Dkt. 294 at 1. AGIS has provided evidence to the
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`contrary, including Apple’s expert report and testimony of Apple witnesses. Dkt. 262 at 8.
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`Because genuine issues of material fact exist, AGIS requests that this Court deny Apple’s motion
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`for summary judgment.
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`A.
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`Apple Fails to Establish that “Selecting ‘Turn Off Lost Mode’ From a
`Different Device” Clears the Display
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`Apple’s motion fails to explain the inconsistencies between the testimony provided by its
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`own witnesses and its alleged non-infringement theory, revealing key disputed facts that
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`preclude summary judgment. Regardless of whether selecting “Turn Off Lost Mode” from a
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`different device actually turns off “Lost Mode,”
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`122:3. Apple provides no evidence to suggest otherwise, other than mere conjecture.
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` Dkt. 262-8 at 132:18-134:1; Dkt. 262- 8 at 121:7-
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`Instead, Apple argues that “AGIS abandons its contentions and expert report” to argue
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`that even if Lost Mode is turned off and stopped, the locked device remains locked with a
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`passcode, and “whether a device ‘remains locked’ has no bearing on the claim language.” Dkt.
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`294 at 3. Apple thus concedes AGIS’s point that whether Lost Mode is turned off or stopped
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`Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 3 of 9 PageID #: 19764
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`from a different device does not affect whether the device is unlocked and the response list is
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`cleared. As AGIS pointed to in its opposition to Apple’s motion, the response list is not cleared
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`simply by turning off or stopping Lost Mode from a different device. Dkt 262 at 3-4.
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`1 Apple fails to provide any evidence that the response list is
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`cleared by taking the phone out of Lost Mode from a different device using the iCloud website.2
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`Whether the response list is cleared by turning off or stopping Lost Mode from a different device
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`is thus a factual issue that precludes a finding of summary judgment.
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`Moreover, Apple dismisses, without explanation,
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` Dkt. 294 at 1. Apple’s failure to rebut this
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`argument is fatal, as it effectively concedes that there exist materials facts at issue. To be clear,
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`AGIS does not state that the structure does not have such a clearing requirement—rather
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` Dkt. 262 at 9. Apple presents no evidence to rebut that there exists a genuine factual
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`dispute regarding the application of the claims to the allegedly infringing product.
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`Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 4 of 9 PageID #: 19765
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`B.
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`AGIS’s Expert Declaration Is Not Untimely or Improper
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`Apple’s attempt to advance to judgment this highly-disputed factual issue is prejudicial to
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`AGIS and reeks of gamesmanship. Apple’s motion is based on a new non-infringement theory
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`raised for the first time in this case. Apple disclosed no meaningful non-infringement theories in
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`response to AGIS’s November 8, 2017 Interrogatory Request No. 6 which sought detailed non-
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`infringement theories on a limitation-by-limitation basis. See Ex. A, Apple’s Sixth Supplemental
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`Responses to AGIS’s First Set of Interrogatories. During discovery, AGIS raised to Apple the
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`very prejudice of Apple’s failure to provide meaningful non-infringement positions.
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`. Contrary to Apple’s assertions,
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`Mr. McAlexander’s declaration is not untimely. Fed. R. Civ. P. Rule 56 permits the use of
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`affidavits or declarations to support or oppose a motion for summary judgment.
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`Mr. McAlexander’s declaration does not contain “new opinions outside the scope of
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`Mr. McAlexander’s expert report.” Dkt. 294 at 3, n. 5. Rather, Mr. McAlexander’s declaration
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`merely reiterates his opinions from his expert report, and therefore, does not offer any new
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`theories as alleged by Apple. Dkt. 262-4. Mr. McAlexander’s declaration was submitted in
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`support of facts disputed by Apple and contains no additional facts. Furthermore, conflicting
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`declarations and facts contained therein are a factual dispute which precludes a finding of
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`summary judgment. See Metropolitan Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330,
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`1338-1339, 87 U.S.P.Q.2d 1140 (Fed. Cir. 2008) (“The conflict in declarations created a genuine
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`issue of material fact that made summary judgment inappropriate.”). Even if the Court does not
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`allow Mr. McAlexander’s declaration, Apple advances evidence provided by its own expert
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`which is disputed by AGIS and Mr. McAlexander’s expert report. Moreover, the disputed
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`evidence advanced by Apple will be the subject of cross-examination and can be used to
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`impeach Apple’s witness.
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`Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 5 of 9 PageID #: 19766
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`II.
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`APPLE FAILS TO ESTABLISH PROSECUTION HISTORY ESTOPPEL TO
`BAR ASSERTION OF INFRINGEMENT UNDER THE DOCTRINE OF
`EQUIVALENTS
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`Apple fails to establish any prosecution disclaimer, and AGIS has shown that it
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`surrendered no claim scope during prosecution. AGIS has not surrendered claim scope related to
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`the ability to cancel or withdraw a forced response from a device other than the targeted device,
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`and
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`AGIS’s opposition thus demonstrates that there is, at the very least, a factual dispute between
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`parties regarding the infringement under the doctrine of equivalents.
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`Moreover, this is a question of literal infringement and Apple has not shown there is no
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`question of fact with regard to literal infringement.3 See supra Section I. Regardless, there still
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`exist factual issues regarding prosecution history estoppel that must be resolved including, but
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`not limited to, (1) whether the accused devices meet the claims; and (2) equivalence.4
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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 of No Infringement of the ’970 Patent.
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`3 Apple cites to Iris Connex, LLC v. Acer Am. Corp. to support its argument that the amendment was made to
`overcome prior art. Dkt. 294 at 5, n. 12. AGIS notes that in the Iris Connex case, the court found no literal
`infringement, and plaintiff and its expert did not argue there was literal infringement under the court’s
`construction of the claims for a single, physically removable camera. No. 2:15-CV-1909-JRG, 2016 WL
`4596043, at *19-*20 (E.D. Tex. Sept. 2, 2016). Here, there is a factual dispute regarding whether there is
`literal infringement. Further, Apple’s argument that AGIS has surrendered all equivalents is without merit
`and again, factual issues remain precluding a finding of summary judgment.
`4 “Whether an accused device or method infringes a claim with a § 112, ¶ 6 limitation, i.e., whether it
`performs the identical function with the same structure, materials, or acts described in the specification or
`an equivalent thereof, is a question of fact.” IMS Tech. Inc. v. Haas Automation, Inc., 206 F.3d 1422,
`1429, 54 U.S.P.Q.2d 1129 (Fed. Cir. 2000) (where summary judgment was vacated because factual
`questions existed as to whether the accused device and its use was a § 112, ¶ 6 equivalent to the
`corresponding structure of a tape cassette).
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`Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 6 of 9 PageID #: 19767
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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
`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
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
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`Case 2:17-cv-00513-JRG Document 322 Filed 01/23/19 Page 7 of 9 PageID #: 19768
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`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 322 Filed 01/23/19 Page 8 of 9 PageID #: 19769
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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 322 Filed 01/23/19 Page 9 of 9 PageID #: 19770
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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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