Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 1 of 16 PageID #: 4435
`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 1 of 16 PageID #: 4435
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`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 2 of 16 PageID #: 4436
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`
`
`
`v.
`
`HTC CORPORATION,
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`LG ELECTRONICS, INC.,
`
`Plaintiff,
`
`Defendant.
`
`
`
`
`
`
`
`
`Case No. 2:17-cv-00514-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`Case No. 2:17-cv-00515-JRG
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`DEFENDANT LG ELECTRONICS, INC.’S AMENDED INVALIDITY CONTENTIONS
`PURSUANT TO PATENT LOCAL RULE 3-6
`
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 3 of 16 PageID #: 4437
`
`I.
`
`INTRODUCTION
`
`Pursuant to Local Patent Rule (“P.R.”) 3-6, Defendant LG Electronics, Inc. (“LGEKR” or
`
`“Defendant”) hereby serves its Amended Invalidity Contentions on Plaintiff AGIS Software
`
`Development LLC (“AGIS” or “Plaintiff”). Defendant’s investigation related to the above-
`
`captioned case is continuing, and, as such, these contentions and disclosures are based on
`
`information reasonably obtained by Defendant to date. Defendant reserves the right to
`
`supplement or modify these contentions, consistent with any applicable Court order.
`
`AGIS has asserted the following patents and claims against Defendant in this case:
`
`• claims 1, 3, 5, and 8 of U.S. Patent No. 8,213,970 (the “ʼ970 Patent”);
`“ʼ055 Patent”);
`“ʼ251 Patent”); and
`“ʼ838 Patent”)
`
`• claims 1, 2, 7, 22, 24, 28, 32, 36, 42, 49, and 54 of U.S. Patent No. 9,408,055 (the
`
`• claims 1, 5, 6, 12, 15, 19, 24, 27, 29, 31, and 35 of U.S. Patent No. 9,445,251 (the
`
`• claims 1, 5, 7, 10, 15, 18-20, 27, 38, 40, and 54 of U.S. Patent No. 9,467,838 (the
`
`The ’970 Patent, ’055 Patent, ’251 Patent, and ’838 Patent are collectively referred to herein as
`
`the “patents-in-suit” and the claims identified above are collectively referred to herein as the
`
`“asserted claims.”
`
`Defendant’s Invalidity Contentions are based in whole or in part on their present
`
`understanding of AGIS’s contentions concerning the scope and construction of the asserted
`
`claims, including from AGIS’s Infringement Contentions, and Defendants’ own understanding of
`
`the scope and construction of those claims. AGIS’s Infringement Contentions are deficient at
`
`least insofar as they fail to articulate how any single accused product or application (or its use)
`
`
`
`
`1
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 4 of 16 PageID #: 4438
`
`Claim 32:
`
`• “wherein the first device uses an Internet Protocol to transmit the user-specified symbol,
`location, and information associated with the [second] entity.”
`
`
`Claim 36:
`
` •
`
` “wherein the database is stored on the first server.”
`
`Claim 39:
`
`• “wherein the message including the identifier corresponding to the group is a first message,
`and wherein the method further comprises performing by the first device: sending, to a
`particular second device via the first server, a second message related to remotely controlling
`the particular second device to perform an action, wherein the particular second device is
`configured to perform the action based on receiving the second message.”
`
`Claim 47:
`
`• “wherein the information associated with the facility comprises a uniform resource locator
`(URL) of a web site associated with the facility.”
`
`Claim 48:
`
`• “further comprising performing, by the first device: identifying user interaction with the
`interactive display selecting the symbol corresponding to the facility and user interaction
`with the display specifying an action, and based thereon, loading a web page associated with
`the facility.”
`
`Claim 51:
`
`• “wherein the first server is the second server.”
`
`
`B.
`
`Patent Local Rule 3-3(a)-(c) Initial Disclosures
`
`Pursuant to P.R. 3-3(a), and as detailed below and in the attached Exhibits, Defendant
`
`contends that the asserted claims of the patents-in-suit are invalid as anticipated and/or obvious
`
`under (pre-AIA and/or AIA) 35 U.S.C. §§ 102 and 103 over at least the following prior art.
`
`Exhibit
`(Chart)
`
`Reference
`
`Inventor or
`Author
`
`A-1
`
`U.S. Patent Application Ordille et al.
`
`
`
`
`18
`
`Date of Issue or
`Publication or
`Public Use /
`Availability
`Nov. 20, 2003
`
`Filing Date
`
`June 26, 2002
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 5 of 16 PageID #: 4439
`
`Publication No. US
`2003/0217109
`
`U.S. Patent Application
`Publication No. US
`2008/0219416
`
`U.S. Patent No.
`7,609,669
`
`U.S. Patent No.
`7,386,589
`
`U.S. Patent No.
`6,816,878
`
`U.S. Patent No.
`7,912,913
`
`U.S. Patent No.
`7,619,584
`
`A-2
`
`A-3
`
`A-4
`
`A-5
`
`A-9
`
`A-8
`
`Roujinsky
`
`Sept. 11, 2008
`
`Feb. 15, 2008
`
`Sweeney
`
`Oct. 27, 2009
`
`Feb. 14, 2005
`
`Tanumihardja et
`al.
`
`June 10, 2008
`
`June 27, 2001
`
`Zimmers et al.
`
`Nov. 9, 2004
`
`Feb. 11, 2000
`
`Accapadi et al.
`
`Mar. 22, 2011
`
`Sept. 15, 2005
`
`Wolf
`
`Nov. 17, 2009
`
`Sept. 8, 2006
`
`A-10
`
`WO 2008/1188878
`
`Swanburg et al.
`
`Oct. 2, 2008
`
`Mar. 24, 2008
`
`C-1
`E-1
`G-1
`
`C-5
`E-5
`G-5
`C-5
`E-5
`G-5
`C-6
`E-6
`G-6
`C-4
`E-4
`G-4
`
`C-3
`E-3
`G-3
`C-2
`E-2
`G-2
`
`
`
`
`U.S. Patent Application
`Publication No. US
`2007/0281690
`
`U.S. Patent No.
`6,867,733
`
`U.S. Patent No.
`7,271,742
`
`U.S. Patent No.
`7,450,003
`
`U.S. Patent Application
`Publication No. US
`2002/0115453
`
`7,917,866
`7,330,112
`
`U.S. Patent No.
`
`U.S. Patent No.
`
`Altman et al.
`
`Dec. 6, 2007
`
`June 1, 2006
`
`Sandhu et al.
`
`Mar. 15, 2005
`
`Apr. 9, 2001
`
`Sheha et al.
`
`Sept. 18, 2007
`
`Mar. 3, 2003
`
`Weber et al.
`
`Nov. 11, 2008
`
`Feb. 24, 2006
`
`Poulin et al.
`
`Aug. 22, 2002
`
`Feb. 15, 2002
`
`Karam
`
`Mar. 29, 2011
`
`Dec. 30, 2005
`
`Emigh et al.
`
`Feb. 12, 2008
`
`Sept. 9, 2004
`
`19
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 6 of 16 PageID #: 4440
`
`A-6
`A-7
`A-7
`
`A-7
`
`C-15
`E-15
`C-14
`C-15
`E-14
`E-15
`G-14
`G-15
`C-14
`E-14
`C-15
`E-15
`
`C-15
`E-15
`
`E-15
`G-15
`
`G-15
`
`G-15
`
`A-6
`
`C-7
`E-7
`G-7
`C-8
`E-8
`G-8
`
`C-9
`E-9
`G-9
`
`
`
`
`U.S. Patent No.
`6,854,007
`U.S. Patent No.
`5,325,310
`U.S. Patent No.
`5,742,905
`U.S. Patent No.
`6,204,844
`U.S. Patent No.
`6,366,782
`
`Hammond
`
`Feb. 8, 2005
`
`Sept. 17, 1998
`
`Johnson et al.
`
`June 28, 1994
`
`June 26, 1992
`
`Pepe et al.
`
`Apr. 21, 1998
`
`Sept. 19, 1994
`
`Fumarolo
`
`Mar. 20, 2001
`
`Oct. 8, 1999
`
`Fumarolo et al.
`
`Apr. 2, 2002
`
`Oct. 8, 1999
`
`U.S. Patent No.
`7,353,034
`U.S. Patent Application
`Publication No. US
`2002/0173906
`U.S. Patent Application
`Publication No. US
`2002/0027901
`U.S. Patent Application
`Publication No. US
`2004/0054428
`U.S. Patent Application
`Publication No. US
`2004/0157590
`U.S. Patent Application
`Publication No. US
`2005/0221876
`U.S. Patent Application
`Publication No. US
`2006/0218232
`The ActiveCampus
`system
`
`The AGIS’s LifeRing
`Product and its
`prototypes (the “AGIS
`system”)
`APRS Protocol
`Reference 1.0 (“APRS
`1.0”) and The
`Automatic
`Packet/Position
`
`Haney
`
`
`
`Apr. 1, 2008
`
`Apr. 4, 2005
`
`Muramatsu
`
`Nov. 21, 2002
`
`May 14, 2002
`
`Liu et al.
`
` Mar. 7, 2002
`
`Sept. 4, 2001
`
`Sheha et al.
`
`Mar. 18, 2004
`
`Mar. 3, 2003
`
`Lazaridis et al.
`
`Aug. 12, 2004
`
`Oct. 31, 2003
`
`Van Bosch et al.
`
`Oct. 6, 2005
`
`Apr. 5, 2004
`
`Kubala et al.
`
`Sept. 28, 2006
`
`Mar. 24, 2005
`
`UCSD
`
`AGIS
`
`Bruninga
`
`20
`
`N/A
`
`N/A
`
`N/A
`
`made available to
`the public no later
`than April 2003
`made available to
`the public by
`October 30, 2005
`
`APRS 1.0 was
`published on or
`before August 29,
`2000
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 7 of 16 PageID #: 4441
`
`Reporting System
`(“APRS System”)
`
`The AT&T Find Friends
`system
`
`AT&T
`
`The APRS System
`made available to
`the public no later
`than September 21,
`2004
`made available to
`the public no later
`than June 24, 2002
`The BuddySpace system Open University made available to
`the public at least
`by June 2002 and
`no later than
`September 21,
`2004
`made available to
`the public at least
`by October 2005,
`and no later than
`February 20, 2006
`made available to
`the public no later
`than March 21,
`2003
`March 15, 2005
`
`The Navizon system
`
`Navizon Inc.
`
`Force XXI Battle
`Command, Brigade And
`Below (“FBCB2”)
`
`U.S. Army
`
`U.S. Patent No.
`6,868,333
`
`Melen
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`Jan. 15, 2003
`
`C-10
`E-10
`G-10
`C-11
`E-11
`G-11
`
`C-13
`E-13
`G-13
`
`C-12
`E-12
`G-12
`
`C-16
`E-16
`G-16
`C-17
`E-17
`G-17
`
`
`U.S. Patent No.
`6,292,747
`
`Amro et al.
`
`Sept. 18, 2001
`
`April 20, 2000
`
`In addition to the references identified above, the prior art references and systems
`
`identified below, and the “References Cited” on the face of the patents-in-suit, may render
`
`obvious alone or in combination with any other reference cited herein the asserted claims of the
`
`patents-in-suit, as set forth in exemplary fashion in Exhibits B, D, F, and H; provide background
`
`and context pertinent to the teachings, and interpretation of, the prior art referenced by the claim
`
`charts (Exhibits A-H); and may also be indicative of the relevant state of the art and/or the
`
`knowledge of one of ordinary skill in the art at the time of inventions of the patents-in-suit, such
`
`that it demonstrates, for example, the lack of invention between the asserted claims and the prior
`
`
`
`
`21
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 8 of 16 PageID #: 4442
`
`art as well as teachings, suggestions, and motivations to combine. This prior art is exemplary
`
`only, and is not in any way intended to limit the scope of what one of ordinary skill in the art
`
`would have understood at the times of the alleged inventions.
`
`In addition to the references disclosed in these contentions, the exhibits thereto, the
`
`patents-in-suit and their prosecution histories, and the common sense of those in the industry at
`
`the time of the alleged inventions, invalidity may be demonstrated by the live testimony of
`
`witnesses, which will be identified in accordance with the case schedule. Such witnesses may be
`
`used, among other purposes, to discuss issues of prior art systems, prior art references, and the
`
`knowledge of one of skill in the art at the time of the alleged invention. Although additional
`
`information may be identified through discovery, such witnesses may include at least the
`
`following: (the FBCB2 system) James L. Conatser, Vincent E. Grizio, Michael Boudreau, Pete
`
`Coughlan, and Richard J. Dunn, III; (BuddySpace) Yanna Vogiazou, Marc Eisenstadt, Martin
`
`Dzbor, Jiri Komzak, Kevin Page, Danius T. Michaelides, Simon Buckingham Shum, Yun-Heh
`
`Chen-Burger, Jeff Dalton, David C. DeRoure, Stephen Potter, Nigel R. Shadbolt, Austin Tate,
`
`and Michelle Bachler; (Navizon) Cyril Houri; (ActiveCampus) William G. Griswold, Robert
`
`Boyer, Steven W. Brown, Tan Minh Truong, Ezekiel Bhasker, Gregory R. Jay, R. Benjamin
`
`Shapiro, Patricia Shanahan, Matt Ratto, Lin Liu, Jean Aw, Gabriele Wienhausen, Jeremy Weir,
`
`Jolete Truong, Adriene Jenik, Jim Hollan, Leigh Star, Gabe Littman, and other individuals in the
`
`Department of Computer Science and Engineering at UCSD; (AGIS LifeRing) Peter Sauerbrey,
`
`Scott Brown; (APRS) Bob Bruninga, Stan Horzepa, Glen Burnie, Ian Wade, Jim Carter, and Jeff
`
`Lehman; and/or (AT&T Find Friends) Jeremy Pemble, and Clay Collier. Defendants further
`
`intend to seek discovery regarding the above-mentioned prior art systems, in addition to other
`
`
`
`
`22
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 9 of 16 PageID #: 4443
`
`systems (e.g., Map Messenger, Loopt location app) that may be related to the patent and printed
`
`publication references disclosed in these contentions.
`
`Defendant reserves the right to rely upon additional prior art, information, testimony,
`
`and/or knowledge to demonstrate what one of ordinary skill would have understood at the times
`
`prior to the date of alleged invention of the asserted claims of the patents-in-suit.
`
`Reference
`
`Inventor or Author
`
`WO 2008/030702
`U.S. Patent Application
`Publication No. US
`2006/0035647
`U.S. Patent Application
`Publication No. US
`2005/0113123
`U.S. Patent No.
`7,593,740
`U.S. Patent Application
`Publication No. US
`2002/0115450
`U.S. Patent Application
`Publication No. US
`2007/0218885
`U.S. Patent No.
`6,772,142
`U.S. Patent No.
`6,504,503
`U.S. Patent No.
`6,108,704
`U.S. Patent Application
`Publication No. U.S.
`2006/0178128
`U.S. Patent No.
`5,692,032
`U.S. Patent No.
`6,148,332
`WO 03/074973
`US Patent Application
`Publication No. US
`2002/0194378
`US Patent Application
`Publication No. US
`
`
`
`
`Wolf
`Eisner et al.
`
`Date of Issue or
`Publication
`Mar. 13, 2008
`Feb. 16, 2006
`
`Filing Date
`
`Aug. 22, 2007
`Oct. 14, 2005
`
`Torvinen
`
`May 26, 2005
`
`Nov. 20, 2003
`
`Crowley et al.
`
`Sept. 22, 2009
`
`May 11, 2005
`
`Muramatsu
`
`Aug. 22, 2002
`
`Dec 12, 2001
`
`Pfleging et al.
`
`Sept. 20, 2007
`
`Mar. 16, 2006
`
`Kelling et al.
`
`Aug. 3, 2004
`
`Oct. 31, 2000
`
`Saint Hilaire et al.
`
`Jan. 7, 2003
`
`Sept. 28, 2001
`
`Hutton
`
`Eaton
`
`Seppanen
`
`Brewer
`
`Sheha et al.
`Foti
`
`Aug. 22, 2000
`
`Sept. 25, 1995
`
`Aug. 10, 2006
`
`Dec. 19, 2003
`
`Nov. 25, 1997
`
`Nov. 27, 1995
`
`Nov. 14, 2000
`
`Apr. 26, 1999
`
`Sept. 12, 2003
`Dec. 19, 2002
`
`Mar. 3, 2003
`Apr. 5, 2001
`
`Ilkka et al.
`
`July 13, 2006
`
`Oct. 10, 2001
`
`23
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 10 of 16 PageID #: 4444
`
`2006/0155871
`US Patent Application
`Publication No. US
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`U.S. Patent No.
`7,103,333
`U.S. Patent No.
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`U.S. Patent No.
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`U.S. Patent No.
`8,250,155
`U.S. Patent No.
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`US Patent Application
`Publication No. US
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`EP1148754A2
`EP2348423A2
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`U.S. Patent No.
`8,000,724
`US Patent Application
`Publication No. US
`2003/0100326
`US Patent Application
`Publication No. US
`2004/0266456
`US Patent Application
`Publication No. US
`2007/0200713
`US Patent Application
`Publication No. US
`2005/0265256
`US Patent Application
`Publication No. US
`2006/0030339
`WO 0217567
`WO 03071825
`
`
`
`
`Baudino
`
`Apr. 12, 2007
`
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`
`Lazaridis et al.
`
`Sept. 5, 2006
`
`Oct. 31, 20003
`
`Fish
`
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`
`May 20, 2004
`
`Phillips et al.
`
`Dec. 7, 2010
`
`May 27, 2005
`
`Corry et al.
`
`Aug. 21, 2012
`
`Aug. 26, 2008
`
`Fux et al.
`
`Feb. 5, 2013
`
`July 27, 2006
`
`Kuhlke et al.
`
`May 20, 2010
`
`Nov. 18, 2008
`
`Hoisko
`Hermele
`Tsuji et al.
`
`Oct. 24, 2001
`July 27, 2011
`June 9, 1998
`
`Apr. 17, 2001
`Aug. 28, 2001
`Sept. 1, 1992
`
`Jackson et al.
`
`Nov. 5, 2002
`
`Oct. 8, 1999
`
`Muramatsu
`
`Muramatsu
`
`Rayburn
`
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`
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`
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`
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`
`Aug. 16, 2011
`
`Oct. 7, 2002
`
`Grube et al.
`
`Mar. 29, 2003
`
`Nov. 27, 2001
`
`Bostrom et al.
`
`Dec. 30, 2004
`
`June 30, 2003
`
`Weber et al.
`
`Aug. 30, 2007
`
`Feb. 24, 2006
`
`Delaney
`
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`
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`
`Zhovnirovsky
`
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`
`Aug. 3, 2005
`
`Spaargaren
`Spaargaren
`
`Feb. 28, 2002
`Aug. 28, 2003
`
`Aug. 28, 2001
`Feb. 25, 2002
`
`24
`
`

`

`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 11 of 16 PageID #: 4445
`
`US Patent Application
`Publication No. US
`2003/0149527
`U.S. Patent No.
`7,292,935
`US Patent Application
`Publication No. US
`2004/0192299
`U.S. Patent No.
`7,031,700
`
`
`Sikila
`
`Yoon
`
`Aug. 7, 2003
`
`Feb. 8, 2001
`
`Nov. 6, 2007
`
`Feb. 11, 2004
`
`Wilson et al.
`
`Sept. 30, 2004
`
`Dec. 20, 2002
`
`Weaver et al.
`
`Apr. 18, 2006
`
`Nov. 9, 2003
`
`In addition, Defendant intends to rely on all prior art references disclosed, listed and/or
`
`asserted as prior art to the patents-in-suit (or any patent related to the patents-in-suit) by any
`
`entity during the course of any other litigation (past, present/ongoing, or future) and/or any re-
`
`examinations, inter partes review petitions, or other proceeding before the U.S. Patent &
`
`Trademark Office (past, present/ongoing, or future).
`
`As stated earlier, Defendant incorporates by reference all invalidity contentions served on
`
`AGIS related to the patents-in-suit or any patent related to the patents-in-suit by any defendant in
`
`other litigation (past, present/ongoing, or future). Defendant intends to rely on any additional
`
`prior art references discussed or disclosed in any expert report on the invalidity of the patents-in-
`
`suit, in this action or any other litigation. Defendant also intends to rely on references identified
`
`in the file histories of the patents-in-suit, any related applications thereto, or related patents.
`
`The asserted patents are invalid because the patents-in-suit fail to meet one or more of the
`
`requirements for patentability under 35 U.S.C. §§ 102 and/or 103. The individual bases for
`
`invalidity, including whether and how each item of prior art anticipates the asserted claim or
`
`renders it obvious, are provided herein and in the charts attached herewith as Exhibits. Each of
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`the foregoing listed prior art documents, the underlying work, and/or the underlying apparatus or
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`method qualifies as prior art under one or more sections of (pre-AIA or AIA) 35 U.S.C. § 102
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`and/or 35 U.S.C. § 103.
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`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 12 of 16 PageID #: 4446
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`Although Defendant has identified at least one citation per limitation for each reference,
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`each and every disclosure of the same limitation in the same reference is not necessarily
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`identified. Rather, in an effort to focus the issues, Defendant cited representative portions of
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`identified references in their claim charts, even where a reference may contain additional support
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`for a particular claim element. In addition, persons of ordinary skill in the art generally read a
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`prior art reference as a whole and in the context of other publications and literature. Thus, to
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`understand and interpret any specific statement or disclosure within a prior art reference, such
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`persons would rely on other information within the reference, even if not cited in a given Exhibit,
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`along with other publications and their general scientific knowledge. As such, Defendant may
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`rely upon uncited portions of the prior art references and on other publications and expert
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`testimony to provide context, and as aids to understanding and interpreting the portions that are
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`cited. Defendant may also rely on uncited portions of the prior art references, other disclosed
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`publications, and the testimony of experts to establish that a person of ordinary skill in the art
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`would have been motivated to modify or combine certain of the cited references so as to render
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`the claims obvious.
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`The asserted claims are invalid as anticipated under 35 U.S.C. § 102 in view of the prior
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`art references identified above and in the claim charts included in the attached Exhibits, which
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`identify specific examples of where each limitation of the asserted claim is found in the prior art
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`references. As explained above, the cited portions of prior art references identified in the
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`attached claim charts are exemplary only and representative of the content and teaching of the
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`prior art references, and should be understood in the context of the reference as a whole and as
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`they would be understood by a person of ordinary skill in the art. Moreover, to the extent it
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`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 13 of 16 PageID #: 4447
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`becomes an issue, any exemplary citations should not be interpreted as contradictory to any other
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`representative exemplary citations.
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`Additionally, to the extent any limitation is deemed not to be exactly met by an item of
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`prior art listed above, then any purported differences are such that the claimed subject matter as a
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`whole would have been obvious to one skilled in the art at the time of the alleged invention, in
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`view of the state of the art and knowledge of those skilled in the art. The item of prior art would,
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`therefore, render the relevant claims invalid for obviousness under 35 U.S.C. § 103(a).
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`Furthermore, the references identified above render the asserted claims obvious when the
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`references are read in combination with each other, and/or when read in view of the state of the
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`art and knowledge of those skilled in the art. Each and every reference identified is also relevant
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`to the state of the art at the time of the alleged invention. Any of the references disclosed above
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`may be combined to render obvious (and therefore invalid) the asserted claim. Defendant may
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`rely upon a subset of the above identified references or all of the references identified above,
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`including all references in the attached Exhibits, for purposes of obviousness depending on the
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`Court’s claim construction and further investigation and discovery. Moreover, Exhibits B, D, F,
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`and H, set forth exemplary, relevant citations from prior art references supporting the
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`obviousness of the asserted claims, any combination of references upon which one of ordinary
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`skill in the art would rely.
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`Motivations to combine the above items of prior art are present in the references
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`themselves, the common knowledge of one of ordinary skill in the art, the prior art as a whole, or
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`the nature of the problems allegedly addressed by the Asserted Patent and/or their related
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`patents. Where appropriate, the Exhibits attached herewith additionally disclose combinations of
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`prior references and exemplary teachings that would motivate a person of ordinary skill in the art
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`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 14 of 16 PageID #: 4448
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`to combine the references in the manner prescribed. Each reference or combination of references
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`suggested by an exemplary chart indicates whether the prior art renders the claim anticipated or
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`obvious pursuant to P.R. 3-3(b) and (c). The suggested obviousness combinations are in addition
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`to Defendants’ anticipation contentions and are not to be construed to suggest that any reference
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`included in any combination does not anticipate the claimed subject matter on its own. To the
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`extent that any reference, under the Court’s forthcoming or issued claim construction, does not
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`anticipate some or all of the asserted claim, it would have been obvious to combine that
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`reference with any of the other charted prior art references or any of the other prior art references
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`disclosed herein. While each of the references identified in the Exhibits may be the primary
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`reference in a combination with any of the references identified in the Exhibits or in these
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`invalidity contentions, Defendants have specifically identified combinations, where appropriate,
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`in the attached Exhibits, for example, in Exhibits B, D, F, and H. Combining the references
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`disclosed in the attached Exhibits would have been obvious, as the references identify and
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`address the same technical issues, such as, with location and position tracking, mapping, and
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`communication between users of devices, including mobile devices. For example, the APRS,
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`BuddySpace, ActiveCampus, FBCB2, AT&T Find Friends, AGIS LifeRing, and Navizon
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`systems, as well as at least the Altman, Weber, Karam, Poulin, Sheha, Sandu, Emigh, Haney,
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`Brewer, and Hutton references, are all concerned with the exchange of location-based data and
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`information between users of wireless devices. Each of those systems or references generally
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`seeks to solve problems associated with coordinating the positions or activities of members of a
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`group, such as military units, emergency personnel, or groups of friends. Therefore, someone of
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`skill in the art at the time of the alleged inventions would have been motivated to combine the
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`teachings of those and similar references that deal with improving systems and methods for
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`Case 2:17-cv-00514-JRG Document 108-2 Filed 01/25/19 Page 15 of 16 PageID #: 4449
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`location tracking, mapping, and communicating between users of devices (including mobile
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`devices) to meet the limitations of the various claim elements. Similarly, as additional examples,
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`the Ordille, Tanumihardja, Sweeney, Roujinsky, Eaton, Seppanen, and Zimmers references are
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`generally related to the sending, receiving, and tracking of messages between wireless devices.
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`Each of those references further seeks to solve problems associated with sending and receiving
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`messages among groups of people who are located in different places. Accordingly, someone of
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`skill in the art at the time of the alleged inventions would have been motivated to combine the
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`teachings of those and similar references that deal with improving systems and methods for the
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`transmission of messages among devices located in different places.
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`Defendant reserves the right to amend or supplement these preliminary invalidity
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`contentions to identify additional reasons that combining the references would be obvious to one
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`of ordinary skill in the art.
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`Furthermore, Defendant endeavored to interpret the claim terms for purposes of these
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`Invalidity Contentions based on Plaintiff’s infringement contentions and with consideration
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`given to the Court’s prior rulings involving the asserted claims. Thus, in certain respects, these
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`Invalidity Contentions apply the Plaintiffs’ apparent interpretation of the scope of the asserted
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`claims as set forth in its infringement contentions. In the event Plaintiff changes its infringement
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`theories, Defendants may seek to amend these Invalidity Contentions to account for any new
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`interpretations or applications of the asserted claims. Defendants also reserves the right to
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`amend or supplement these contentions regarding anticipation or obviousness of the Asserted
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`Claims, in view of further information from AGIS, information discovered during discovery, or
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`any claim construction rulings by the Court, and as consistent with P.R. 3-6. AGIS has not
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`identified what elements or combinations it alleges were not known to one of ordinary skill in the
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`art at the time. Therefore, for any claim limitation that AGIS alleges is not disclosed in a
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`particular prior art reference, Defendants reserve the right to assert that any such limitation is
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`either inherent in the disclosed reference or obvious to one of ordinary skill in the art at the time
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`in light of the same, or that the limitation is disclosed in another of the references disclosed
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`above and in combination would have rendered the asserted claim obvious.
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`In addition, as explained above, Defendants contend that the patents-in-suit are not
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`entitled to the September 21, 2004 priority date that AGIS alleges. Because it is not entitled to
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`that priority date, to the extent that any of Defendants’ accused products (including the accused
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`third-party Google applications identified in AGIS’s infringement contentions) are determined to
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`infringe any claim of any of those patents, those accused applications would also render the
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`claims invalid under at least pre-AIA or AIA 35 U.S.C. § 102 because they were each in public
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`use and on sale or available for download before the filing date of those patents. An example of
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`such an accused application includes, but is not limited to, Google Latitude, which, on
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`information and belief, was publicly available and prior to the invention of the patents-in-suit.
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`Pursuant to P.R. 3-3(c), subject to Defendants’ reservation of rights, Defendants hereby
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`submit the attached Exhibits identifying where specifically in each item of prior art each
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`limitation of each asserted claim is found.
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`C.
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`Patent L.R. 3-3(d)
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`Pursuant to P.R. 3-3(d), Defendants list below the grounds upon which the asserted
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`claims of the patents-in-suit are invalid based on indefiniteness, lack of written description, and
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`lack of enablement under (pre-AIA or AIA) 35 U.S.C. § 112.
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`1.
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`’970 Patent
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`a.
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`Indefiniteness
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