Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 1 of 13 PageID #: 19785
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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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`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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`§
`§
`§
`§
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`§
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`§
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`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`APPLE INC.’S SUR-REPLY IN OPPOSITION TO DKT. NO. 235, AGIS SOFTWARE
`DEVELOPMENT LLC’S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO
`INVALIDITY
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 2 of 13 PageID #: 19786
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1
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`ARGUMENT .......................................................................................................................1
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`A.
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`Genuine Factual Disputes Regarding Whether Poulin Invalidates AGIS’s
`Asserted Claims Preclude Summary Judgment. ......................................................1
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`1.
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`AGIS’s Conclusory Attorney Arguments Regarding Poulin Do Not
`Warrant Summary Judgment On Anticipation. ...........................................1
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`2.
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`AGIS Continues To Ignore Evidence Of Obviousness. ...............................3
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`B.
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`Genuine Factual Disputes Regarding Whether The FBCB2 System
`Invalidates AGIS’s Asserted Claims Preclude Summary Judgment. ......................4
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`1.
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`2.
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`AGIS’S Reply Acknowledges Disputed Facts As To Whether The
`First Devices In The FBCB2 System Have Access To The IP
`Addresses Of Other Devices. .......................................................................4
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`Dr. Siegel’s Report Is Unequivocal That FBCB2 Anticipates The
`IP Access Limitations. .................................................................................5
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`C.
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`AGIS Does Not Dispute That Its Motion Does Not Pertain To All
`Asserted Claims. ......................................................................................................7
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`I.
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`II.
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`i
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 3 of 13 PageID #: 19787
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Pages
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`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ............................................................................................................ 4
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`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013)........................................................................................... 6
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`GE Lighting Sols. v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)........................................................................................... 2
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`TransWeb, LLC v. 3M Innovative Properties Co.,
`812 F.3d 1295 (Fed. Cir. 2016)........................................................................................... 5
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`Wi-LAN USA, Inc. v. Ericsson, Inc.,
`675 F. App’x. 984 (Fed. Cir. 2017) .................................................................................... 4
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`ii
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 4 of 13 PageID #: 19788
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`TABLE OF EXHIBITS
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`Exhibit Number
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`Description
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`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
`Ex. 6
`Ex. 7
`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
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`US Pat. No. 9,445,251
`US Pat. No. 9,408,055
`US Pat. No. 9,467,838
`US Pat. No. 9,749,829
`US Pat. Pub. No. US20020115453 (Poulin)
`Clark Invalidity Report Excerpts
`Siegel Invalidity Report Excerpts
`Siegel Deposition Excerpts
`AGIS’s Final Election of Asserted Claims
`McAlexander Infringement Report Excerpts
`Rice Deposition Excerpt
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`iii
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 5 of 13 PageID #: 19789
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`I.
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`INTRODUCTION
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`AGIS maintains its mission to avoid facing invalidity challenges at trial. Apple highlighted
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`ample evidence that, at the very least, raises genuine factual disputes regarding both the Poulin
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`prior art patent and the FBCB2 prior art system. AGIS once again tries to sidestep that evidence
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`by either mischaracterizing the facts or wholly ignoring them. Neither tactic warrants summary
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`judgment. AGIS’s motion should be denied.
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`II.
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`ARGUMENT
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`A.
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`Genuine Factual Disputes Regarding Whether Poulin Invalidates AGIS’s
`Asserted Claims Preclude Summary Judgment.
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`1.
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`AGIS’s Conclusory Attorney Arguments Regarding Poulin Do Not
`Warrant Summary Judgment On Anticipation.
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`AGIS’s Reply does not demonstrate the absence of a genuine factual dispute regarding
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`anticipation in view of Poulin for three reasons. First, AGIS falsely claims that Apple applied a
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`special definition of the “user-selectable symbols” limitation that is the basis for AGIS’s motion.
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`Second, AGIS provides only unsupported attorney argument in an attempt to dismiss the evidence
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`and expert opinions that preclude summary judgment. Third, AGIS completely ignores its own
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`expert’s opinions and its dependent claims, both of which undermine AGIS’s motion.
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`AGIS now frames its arguments as Poulin failing to meet “Apple’s [d]efinition of ‘[u]ser-
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`[s]electable [s]ymbols’” (Dkt. No. 284 (“Reply”) at 2), but AGIS never explains what Apple’s
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`supposed “definition” is or how it supports AGIS’s motion. That is because Apple did not impose
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`a “definition” of user-selectable symbols. Instead, Apple explained how the record—disclosures
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`in Poulin and Dr. Paul Clark’s expert report applying those disclosures to AGIS’s claims—defeat
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`AGIS’s motion. (Dkt. No. 265 (“Opposition”) at 9-11.) Apple did so not based on any special
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`“definition” of “user-selectable symbols,” but instead with specific citations to the evidence and
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`opinions that preclude summary judgment. (Id.)
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`Beyond its false framing of Apple’s Opposition as applying a “definition” for the user-
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`selectable limitation, AGIS’s Reply offers only conclusory attorney arguments that do not support
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`its summary judgment request. As Apple and Dr. Clark explained, Poulin describes an interactive
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`web-based display with selectable symbols that facilitate communications between users through
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`the display. (Opposition at 9-11 (citing Ex. 61 ¶¶ 595-606).) AGIS dismisses Poulin and Dr. Clark
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`as allegedly not showing “that the web-based display is interactive or that the symbols are ‘user-
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`selectable,’” but AGIS provides no evidence, reasoning, or explanation to substantiate that claim.
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`(See Reply at 2.) Instead, AGIS apparently concedes a key point fatal to its motion: “Poulin on
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`its face describes symbols positioned on the map that are user-selectable as is required.” (Id.)
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`Even if AGIS attempts to retract that statement or explain it away as a typographical error, its
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`reliance on attorney argument and unsupported dismissal of evidence and expert opinion cannot
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`support summary judgment. GE Lighting Sols. v. AgiLight, Inc., 750 F.3d 1304, 1312 (Fed. Cir.
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`2014) (“[A]ttorney argument, alone, may not create a material question of fact regarding technical
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`evidence.”).
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`While AGIS’s arguments fail to provide a basis for granting its motion, AGIS’s silence on
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`key facts and evidence is even more illuminating. AGIS never addresses inconsistencies in its
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`own expert’s opinions and in the asserted claims. Apple highlighted those inconsistencies in its
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`Opposition, and they are fatal to AGIS’s motion. Apple explained that Mr. McAlexander’s
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`infringement analysis, in which
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` conflicts with AGIS’s argument that Dr. Clark fails to show
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`a symbol selected from an interactive map. (Opposition at 11 (citing Ex. 10 at B-a101-108).)
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`AGIS offers no explanation for that inconsistency; its Reply does not even attempt to address Mr.
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`1 Exs. 1-10 were filed with Apple’s Opposition. Ex. 11 is filed herewith.
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`2
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`McAlexander’s contradictory interpretation. Apple also explained that AGIS’s independent
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`claims cannot require directly interacting with a display screen because that feature is recited in
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`dependent claims. (Opposition at 11 (citing Ex. 3 at 16:18-23 (’838 patent claim 15)).) AGIS is
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`again silent. The Reply never once mentions the conflicting dependent claims. AGIS cannot
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`credibly claim that summary judgment is proper while failing to even mention its own claims and
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`experts that undermine that request.
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`2.
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`AGIS Continues To Ignore Evidence Of Obviousness.
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`AGIS tries once again to escape the evidence and expert opinion of Dr. Clark regarding
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`obviousness by wholly ignoring it. In his expert report, Dr. Clark explains that “user-selectable
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`symbols” were obvious either in view of Poulin or in view of Poulin in combination with another
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`reference, Altman. Apple explained how that evidence and opinion defeats summary judgment.
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`(See Opposition at 11-12 (citing Ex. 6 ¶¶ 603-604).) AGIS’s Reply does not show any lack of
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`genuine disputes. Instead, AGIS merely claims that it is not “[e]vidence [s]ufficient to [e]stablish”
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`obviousness. (Reply at 2-3.) AGIS does so without actually addressing Dr. Clark’s obviousness
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`opinions, and AGIS’s claim that the evidence on obviousness is “silent with regard to ‘user-
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`selectable’” (Reply at 3) is wrong. Dr. Clark explained that “select[ing] a second device from [a]
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`map” would have been obvious in view of Poulin and in view of the combination of Poulin and
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`Altman to simplify data transmission. (Ex. 6 ¶¶ 603-604.) Moreover, as Dr. Clark also noted,
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`AGIS’s inventors
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` (Ex. 11 at 293:17-22; see also Ex. 6 ¶ 606.) Each of those opinions directly targets “user-
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`selectable” symbols, contrary to AGIS’s assertion. Instead of addressing the substance of the
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`opinions, AGIS instead ignores them and invites the court to weigh the evidence and find that it is
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`not “sufficient” for obviousness. Such weighing of the evidence is within the purview of the jury
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`3
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 8 of 13 PageID #: 19792
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`at trial; it is not proper grounds for summary judgment. Wi-LAN USA, Inc. v. Ericsson, Inc., 675
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`F. App’x. 984, 990 (Fed. Cir. 2017) (“[W]hen ruling on a motion for summary judgment,
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`‘[c]redibility determinations, the weighing of evidence, and the drawing of legitimate inferences
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`from the facts are jury functions, not those of a judge.’”) (quoting Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 255 (1986)).
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`B.
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`Genuine Factual Disputes Regarding Whether The FBCB2 System
`Invalidates AGIS’s Asserted Claims Preclude Summary Judgment.
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`1.
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`AGIS’S Reply Acknowledges Disputed Facts As To Whether The
`First Devices In The FBCB2 System Have Access To The IP
`Addresses Of Other Devices.
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`Apple’s Opposition explains why the FBCB2 system anticipates asserted claim limitations
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`that require claimed devices not to have access to the IP addresses of other devices in their group.
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`While an FBCB2 device had the IP address of its server, and the server had the IP addresses of the
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`FBCB2 devices it was serving, an FBCB2 device and its server did not need to be part of the same
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`“group.” (Opposition at 16-17 (citing Ex. 7 ¶¶ 75-76, 118, 215, 430, 484; Ex. 8 at 196:21-197:2,
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`200:19-23, 201:13-21).) Hence, in that use case, the FBCB2 system anticipates the claim
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`limitations. (Id.)
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`As Apple also explained in its Opposition, Dr. Siegel’s expert report states that FBCB2
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`anticipates the “IP access” limitations and explains how FBCB2 managed to operate while denying
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`each FBCB2 device access to the IP addresses of each other FBCB2 device. (See Opposition at
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`13-14.) Dr. Siegel also explained that anticipating use case in his deposition and cited additional
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`evidence supporting his testimony in his report.2 (See id. at 16-17.) AGIS now replies that the
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`2 AGIS’s Reply implies that Dr. Siegel somehow provided new testimony for Apple’s response.
`(Reply at 4 (stating that the IP access limitations could not be met, “unless Dr. Siegel is now
`asserting that each and every FBCB2 device has different functionality simply because they are
`within or outside of a group”).) To be clear, Apple’s Opposition includes no new opinions from
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`4
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`anticipating use case is not even possible, arguing that if a server outside of a device’s group has
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`that device’s IP address, then other devices within the device’s group would have to have access
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`to that IP address. (Reply at 4.) AGIS’s factual assertion—for which AGIS cites no evidence—
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`is countered by the factual assertions advanced by Dr. Siegel at his deposition and in his report.
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`Such factual disputes preclude summary judgment and, accordingly, AGIS’s motion should be
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`denied.
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`2.
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`Dr. Siegel’s Report Is Unequivocal That FBCB2 Anticipates The IP
`Access Limitations.
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`AGIS further argues that Apple’s Opposition did “not address AGIS’s assertion that there
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`is no evidence within Dr. Siegel’s report or testimony stating that access to IP addresses is
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`precluded.” (Reply at 4.) To the contrary, Apple devoted more than two pages of its Opposition
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`outlining the evidence that the FBCB2 system anticipates the IP access limitations. (Opposition
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`at 13-15 (Part IV.B.2.).) Specifically, Dr. Siegel’s report states that the FBCB2 system anticipates
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`each claim with an IP access limitation, explains how FBCB2 operated to meet that limitation, and
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`cites a patent which corroborates that FBCB2 operated in the manner he described. (Id. at 13-14.)
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`Moreover, Dr. Siegel has personal knowledge of the FBCB2 system and confirmed and explained
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`the statements in his report during his deposition. (Id. at 14.) Dr. Siegel’s testimony about the
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`operation of the FBCB2 system he invented, and the corroborating documents he cites in support
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`of that testimony, are evidence upon which Apple will rely at trial to prove anticipation.
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`TransWeb, LLC v. 3M Innovative Properties Co., 812 F.3d 1295, 1302 (Fed. Cir. 2016) (upholding
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`jury verdict of invalidity based on oral testimony and corroborating evidence of prior art inventor).
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`Dr. Siegel. Apple’s Opposition cites to, and relies entirely on, statements in Dr. Siegel’s report
`and deposition testimony.
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 10 of 13 PageID #: 19794
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`AGIS cites no authority that supports granting summary judgment despite the existence of
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`such evidence. AGIS attempts to compare this case to Cheese Systems, but the scenario at issue
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`in that case is not analogous to the facts here. In Cheese Systems, the Federal Circuit was
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`evaluating a written prior art reference to assess whether the document disclosed all of the elements
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`of a claimed invention. See Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d
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`1341, 1351-52 (Fed. Cir. 2013). In that case, the prior art reference merely alluded to the
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`possibility of an invention with similarities to the claimed invention. Id. But because the reference
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`did not disclose several limitations of the claims (and in fact suggested an alternate approach), the
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`panel held that, even construing ambiguities in its favor, the defendant had not raised a genuine
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`dispute of material fact that the document anticipated the claims. Id.
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`Conversely, here the anticipating prior art reference in question is the FBCB2 system.
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`Ample evidence exists regarding that system—including, at least, Dr. Siegel’s personal knowledge
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`regarding the operation of the system (based on his personal experience as the designer of that
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`system); Dr. Siegel’s deposition testimony regarding FBCB2 devices’ IP access; corroborating
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`documents Dr. Siegel cites throughout his report; and the opinions and bases expressed in Dr.
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`Siegel’s report demonstrating that FBCB2 anticipates the claims. All of that evidence provides
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`explicit support that the actual FBCB2 system meets each limitation of the asserted claims. The
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`alleged ambiguity AGIS cites—Dr. Siegel’s statement that the FBCB2 devices do not “need
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`access” to each other’s IP addresses (as opposed to “not having access”)—must be considered in
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`light of all of that evidence. Accordingly, construing any ambiguity in the evidence in Apple’s
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`favor, there is at least a genuine dispute of material fact as to whether the FBCB2 system meets
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`the IP access limitations. Such a factual dispute precludes summary judgment and, accordingly,
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`AGIS’s motion should be denied.
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 11 of 13 PageID #: 19795
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`C.
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`AGIS Does Not Dispute That Its Motion Does Not Pertain To All Asserted
`Claims.
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`In its Opposition, Apple explained that only a subset of the asserted claims contain the
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`“user-selectable symbols” limitation that is the bases of AGIS’s motion regarding Poulin.
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`(Opposition at 12.) AGIS’s Reply does not dispute that user-selectable symbols are not included
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`in each of claims 2, 8, 10, 30, 34, 42, and 68 of the ’829 patent. AGIS’s Motion should be denied
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`for those claims for that additional reason.
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`Apple also explained that only a subset of the asserted claims contain the limitation
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`requiring that a first device does not have access to IP addresses of second devices. (Opposition
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`at 17-18.) AGIS’s Reply does not dispute that that limitation is not included in each of claims 10,
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`15, 18, 19, 20, 38, 40, and 54 of the ’838 patent; claims 5, 7, 24, 32, 36, 42, and 54 of the ’055
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`patent; and claims 2, 8, 10, 14, 34, 42, 50, and 68 of the ’829 patent. Accordingly, AGIS’s Motion
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`should also be denied for those claims for that additional reason.
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 12 of 13 PageID #: 19796
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`Dated: January 22, 2019
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`By: Respectfully submitted:
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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
`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.
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`Case 2:17-cv-00513-JRG Document 325 Filed 01/24/19 Page 13 of 13 PageID #: 19797
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and
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`correct copy of the foregoing document by electronic mail on January 22, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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