Case 2:17-cv-00513-JRG Document 323 Filed 01/23/19 Page 1 of 8 PageID #: 19775
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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 INVALIDITY OF U.S. PATENT NOS. 9,467,838; 9,445,251;
`9,408,055; AND 9,749,829 UNDER 35 U.S.C. § 101 (DKT. 229)
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`Case 2:17-cv-00513-JRG Document 323 Filed 01/23/19 Page 2 of 8 PageID #: 19776
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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 Invalidity
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`of U.S. Patent Nos. 9,467,838; 9,445,251; 9,408,055; and, 9,749,829 Under 35 U.S.C. § 101
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`(Dkt. 229).
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`Apple’s Reply fails to establish that the asserted claims are invalid under 35 U.S.C. § 101
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`by clear and convincing evidence because (1) the claims are not directed to an abstract idea, even
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`under Apple’s shift in argument in its Reply, (2) the claims are directed to an inventive concept,
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`and (3) there exist numerous factual disputes that undercut the very facts Apple alleged were
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`material in its opening brief.
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`I.
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`THE CLAIMS ARE NOT DIRECTED TO AN ABSTRACT IDEA
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`Regarding the allegedly abstract idea, as AGIS explained in its opposition, a “Map
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`Room” is not an abstract idea. Dkt. 261 at 7. Apple does not directly address whether “map
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`rooms” are physical constructs, but instead, shifts its argument on Reply to argue that the
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`allegedly abstract idea is “situational awareness, communications, and command-and-control
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`functionality.” Dkt. 291 at 1. However, even this shift in Apple’s argument for an “abstract
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`idea” fails.
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`AGIS explained, and Apple did not refute, that the asserted claims are directed to, among
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`other things, interacting with user-selectable symbols on a map. Dkt. 261 at 7. These limitations
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`take the inventions of the patents-in-suit out of any alleged “abstract idea.” In response, Apple
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`walks back its preemption argument and states that claims may be abstract even though they are
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`not preemptive. Dkt. 291 at 1. Apple uses phrases such as “bulk of each claim” when
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`characterizing the allegedly abstract idea, all but ignoring the numerous highlighted features
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`identified by AGIS in its Response. (Compare Dkt. 291 at 4 with Dkt. 261 at 10). Further,
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`Apple fails to distinguish Enfish or Finjan, which apply here. As was the case in Enfish, Apple
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`Case 2:17-cv-00513-JRG Document 323 Filed 01/23/19 Page 3 of 8 PageID #: 19777
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`attempts to over-generalize (i.e., by relying on the “bulk of each claim”) and falls into the trap
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`identified by the Federal Circuit. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337, 118
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`U.S.P.Q.2d 1684 (Fed. Cir. 2016). The claims of AGIS’s patents, like those in Finjan, contain
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`numerous algorithmic steps, as confirmed by the Court in its Markman Order. Finjan, Inc. v.
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`Blue Coat Systems, Inc., 879 F.3d 1299, 1305-1306, 125 U.S.P.Q.2d 1282 (Fed. Cir. 2018).
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`One example of Apple’s overzealous application of the “map room” is its failure to
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`account for the “user-selectable symbols.” Apple only attempts to reconcile this failure by
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`alleging that it is “undisputed” that the user-selectable symbols were known in the art. Dkt. 291
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`at 1-2.
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` Apple treats this failure in a footnote, where it claims this dispute only relates
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`to novelty. Dkt. 291 at 6, n. 3. Apple forgets that it had relied on these alleged “material facts”
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`in its opening brief. Dkt. 229 at 6.
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`Another example of Apple’s “map room” failure is with regard to the “wherein the first
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`device does not have access to respective Internet Protocol addresses of the second devices.”
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`This limitation proved to be critical in the denial of numerous Inter Partes Review Petitions,
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`albeit, in the context of patentability. See e.g., IPR2018-00817; IPR2018-00818; IPR2018-
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`01081. This limitation sets forth yet another example of a specific implementation of a solution
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`to a technological problem, not an abstract idea. See Enfish, 822 F.3d at 1339 (specific
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`implementation of a solution to a problem is not an abstract idea); see also Intellectual Ventures
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`II LLC v. Fedex Corp. et al., No. 2:16-cv-00980, Dkt. No. 526 at 20-21 (E.D. Tex. May 10,
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`2018) (holding that invention directed towards overcoming technological problem with machine
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`Case 2:17-cv-00513-JRG Document 323 Filed 01/23/19 Page 4 of 8 PageID #: 19778
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`scanners was not patent ineligible). Accordingly, because the claims are not directed to an
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`abstract idea, Apple’s Motion should be denied
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`II.
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`THE CLAIMS CONTAIN AN INVENTIVE CONCEPT
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`In its Response, AGIS identified an inventive concept in the claims. Dkt. 261 at 13-14.
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`On Reply, Apple merely sets up straw men arguments, such as requiring that the claims include
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`language such as “without opening a separate application” in order to be inventive. Dkt. 291 at
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`2. Apple cannot dispute that at least the inventive claim elements directed to the use of “user-
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`selectable symbols” provide a patent eligible inventive concept. Indeed, as AGIS points out in
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`its Response, the claim language that supports this portion of the inventive concept was ignored
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`by Apple in its Motion. See Dkt. 261 at 10; see also Dkt. 291 at 4 (“bulk of each claim”).
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`Additionally, Apple refers to AGIS’s expert at claim construction, Dr. Carbonell;
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`however, Apple’s characterizations of Dr. Carbonell’s testimony are incorrect. Apple
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`generalizes Dr. Carbonell’s testimony as related to “creating the software described in AGIS’s
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`claims.” Dkt. 291 at 5. However, Dr. Carbonell’s testimony related to each claimed step. As
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`explained above, the Court found that the claims of AGIS’s patents include algorithms made up
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`of steps. Dkt. 205. Whether each step could have been programmed goes towards enablement,
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`not inventiveness. See Dkt. 261 at 13. Dr. Carbonell did not say that each step was known, let
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`alone that the algorithm was known or that the algorithm was not inventive. If Apple were
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`correct, any claim that recites an enabled algorithm would be invalid under 35 U.S.C. §101.
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`Case 2:17-cv-00513-JRG Document 323 Filed 01/23/19 Page 5 of 8 PageID #: 19779
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`III. APPLE’S MOTION DOES NOT RELY ON UNDISPUTED MATERIAL FACTS
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`Apple concedes that there are disputes of fact; however, on Reply, Apple contends that
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`“most” disputed facts are not “material.” Dkt. 291 at 5. Apple’s argument fails for two reasons.
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`First, even if Apple were correct, it admits that it does not address all of AGIS’s factual disputes,
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`only “most” or “many.” Dkt. 291 at 5-6. Second, Apple ignores that AGIS disputes the very
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`facts that Apple relied on as material in its original Motion. See Dkt. 229 at 1 (“Statement of
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`Undisputed Material Facts”); see also Dkt. 229 at ¶ 9 (citing to disputed testimony from named
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`inventor Christopher Rice).
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`Accordingly, because there exist disputes of material fact, summary judgment is
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`inappropriate and Apple’s Motion should be denied.
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`IV. 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
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`Case 2:17-cv-00513-JRG Document 323 Filed 01/23/19 Page 6 of 8 PageID #: 19780
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`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 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 323 Filed 01/23/19 Page 7 of 8 PageID #: 19781
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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 323 Filed 01/23/19 Page 8 of 8 PageID #: 19782
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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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