Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 1 of 16 PageID #: 4451
`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 1 of 16 PageID #: 4451
`
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`EXHIBIT B
`EXHIBIT B
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 2 of 16 PageID #: 4452
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`
`
`Plaintiff,
`
`v.
`
`HUAWEI DEVICE USA INC., HUAWEI
`DEVICE CO., LTD. AND HUAWEI
`DEVICE (DONGGUAN) CO., LTD.,
`
`Defendants.
`
`C.A. NO. 2:17-CV-0513-JRG
`LEAD CASE
`JURY TRIAL DEMANDED
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION,
`
`Defendant.
`
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`Plaintiff,
`
`v.
`
`
`ZTE CORPORATION, ZTE (USA), INC., AND
`ZTE (TX), INC.,
`
`
`Defendants.
`
`C.A. NO. 2:17-cv-514-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`C.A. NO. 2:17-cv-517-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANTS HTC CORPORATION, ZTE (USA), INC., AND ZTE (TX), INC.’S
`INVALIDITY CONTENTIONS PURSUANT TO PATENT LOCAL RULE 3-3
`
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 3 of 16 PageID #: 4453
`
`I.
`
`INTRODUCTION
`
`Pursuant to Local Patent Rules (“P.R.”) 3-3 and 3-4, Defendants HTC Corporation
`
`(“HTC”)1 and ZTE (USA), Inc., and ZTE (TX), Inc. (collectively, “ZTE”)2 (HTC and ZTE are
`
`herein, collectively, referred to as “Defendants”) hereby serve their Invalidity Contentions and
`
`accompanying document production on Plaintiff AGIS Software Development LLC (“AGIS” or
`
`“Plaintiff”). Defendants’ discovery and investigation related to the above-captioned cases are
`
`continuing, and, as such, these contentions and disclosures are based on information reasonably
`
`obtained by Defendants to date in view of the unreasonable number of claims currently asserted
`
`by AGIS. Defendants reserve the right to supplement or modify these contentions, consistent
`
`with P.R. 3-6 and any applicable Court order.
`
`AGIS has asserted the following patents and claims against Defendants in this case:
`
`• Claims 1 and 3-9 of U.S. Patent No. 8,213,970 (the “ʼ970 Patent”);
`• Claims 1-54 of U.S. Patent No. 9,408,055 (the “ʼ055 Patent”);
`• Claims 1-35 of U.S. Patent No. 9,445,251 (the “ʼ251 Patent”); and
`• Claims 1-54 of U.S. Patent No. 9,467,838 (the “ʼ838 Patent”)
`
`
`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.” That AGIS has asserted all or substantially all the claims in each of the
`
`Patents-in-Suit is overly burdensome and unsustainable. To that end, AGIS has agreed to a
`
`phased reduction of asserted claims, but, under the amended Docket Control Order (2:17-cv-
`
`00514-JRG, D.I. 39; see also 2:17-cv-00513-JRG, D.I. 89), this reduction will occur after service
`
`of these Invalidity Contentions. For at least this reason, Defendants reserve the right to amend or
`
`otherwise supplement these contentions and disclosures to the extent necessary and permitted.
`
`1 HTC Corp. serves these invalidity contentions subject to its objection and motion to dismiss for lack of personal
`jurisdiction.
`2 Defendant ZTE Corporation has not yet been served or appeared in this matter; thus, all scheduling deadlines will
`apply, if Defendant ZTE Corporation is served.
`
`- 1 -
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 4 of 16 PageID #: 4454
`
`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, Defendants
`
`contend 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
`
`A-1
`
`A-2
`
`A-3
`
`A-4
`
`U.S. Patent Application
`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
`
`Inventor or
`Author
`
`Ordille et al.
`
`Date of Issue or
`Publication or
`Public Use /
`Availability
`Nov. 20, 2003
`
`Filing Date
`
`June 26, 2002
`
`Roujinsky
`
`Sept. 11, 2008
`
`Feb. 15, 2008
`
`Sweeney
`
`Oct. 27, 2009
`
`Feb. 14, 2005
`
`Tanumihardja et
`al.
`
`June 10, 2008
`
`June 27, 2001
`
`- 19 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 5 of 16 PageID #: 4455
`
`A-5
`
`A-6
`
`A-6
`A-7
`
`A-7
`
`A-7
`
`A-8
`
`A-9
`
`U.S. Patent No.
`6,816,878
`
`U.S. Patent
`Application
`Publication No.
`U.S. Pat. No.
`6,854,007
`
`
`U.S. Patent No.
`5,325,310
`
`U.S. Patent No.
`5,742,905
`
`U.S. Patent No.
`7,619,584
`
`U.S. Patent No.
`7,912,913
`
`Zimmers et al.
`
`Nov. 9, 2004
`
`Feb. 11, 2000
`
`Kubala
`
`Sept. 28., 2006
`
`Mar. 24, 2005
`
`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
`
`Wolf
`
`Nov. 17, 2009
`
`Sept. 8, 2006
`
`Accapadi et al.
`
`Mar. 22, 2011
`
`Sept. 15, 2005
`
`A-10
`
`WO 2008/118878
`
`Swanburg et al.
`
`Oct. 2, 2008
`
`Mar. 24, 2008
`
`C-1
`E-1
`G-1
`
`C-2
`E-2
`G-2
`
`C-3
`E-3
`G-3
`
`C-4
`E-4
`G-4
`
`C-5
`E-5
`G-5
`C-5
`E-5
`G-5
`
`U.S. Patent Application
`Publication No. US
`2007/0281690
`
`U.S. Patent No.
`7,330,112
`
`U.S. Patent No.
`7,917,866
`
`U.S. Patent Application
`Publication No. US
`2002/0115453
`
`U.S. Patent No.
`6,867,733
`
`U.S. Patent No.
`7,271,742
`
`Altman et al.
`
`Dec. 6, 2007
`
`June 1, 2006
`
`Emigh et al.
`
`Feb. 12, 2008
`
`Sept. 9, 2004
`
`Karam
`
`Mar. 29, 2011
`
`Dec. 30, 2005
`
`Poulin et al.
`
`Aug. 22, 2002
`
`Feb. 15, 2002
`
`Sandhu et al.
`
`Mar. 15, 2005
`
`Apr. 9, 2001
`
`Sheha et al.
`
`Sept. 18, 2007
`
`Mar. 3, 2003
`
`- 20 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 6 of 16 PageID #: 4456
`
`C-6
`E-6
`G-6
`C-7
`E-7
`G-7
`
`C-8
`E-8
`G-8
`
`C-9
`E-9
`G-9
`
`C-10
`E-10
`G-10
`C-11
`E-11
`G-11
`
`C-12
`E-12
`G-12
`
`U.S. Patent No.
`7,450,003
`
`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
`Reporting
`System
`(“APRS
`System”)
`The AT&T
`Find Friends
`system
`The
`BuddySpace
`system
`
`Force XXI
`Battle
`Command,
`Brigade And
`Below
`(“FBCB2”)
`
`Weber et al.
`
`Nov. 11, 2008
`
`Feb. 24, 2006
`
`UCSD
`
`AGIS
`
`Bruninga
`
`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
`The APRS System
`made available to
`the public no later
`than September 21,
`2004
`
`AT&T
`
`made available to
`the public no later
`than June 24, 2002
`Open University made
`available to
`the public at
`least by June
`2002 and no
`later than
`September 21,
`2004
`made available to
`the public no later
`than March 21,
`2003
`
`U.S. Army
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`C-13
`E-13
`G-13
`
`The Navizon
`system
`
`Navizon Inc.
`
`made available to
`the public at least
`by October 2005,
`
`N/A
`
`- 21 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 7 of 16 PageID #: 4457
`
`U.S. Patent No.
`6,366,782
`
`Fumarolo et al.
`
`and no later than
`February 20, 2006
`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 No.
`6,868,333
`
`U.S. Patent No.
`6,292,747
`
`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
`
`Melen
`
`March 15, 2005
`
`Jan. 15, 2003
`
`Amro et al.
`
`Sept. 18, 2001
`
`April 20, 2000
`
`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
`
`C-16
`E-16
`G-16
`C-17
`E-17
`G-17
`
`
`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
`
`- 22 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 8 of 16 PageID #: 4458
`
`that it demonstrates, for example, the lack of invention between the asserted claims and the prior
`
`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, Clay Collier, and Kiyoshi Asamura
`
`(prosecuting attorney for JP 2007532560). Defendants further intend to seek discovery
`
`- 23 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 9 of 16 PageID #: 4459
`
`regarding the above-mentioned prior art systems, in addition to other systems (e.g., Map
`
`Messenger, Loopt location app) that may be related to the patent and printed publication
`
`references disclosed in these contentions.
`
`Defendants reserve 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
`
`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
`
`- 24 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 10 of 16 PageID #: 4460
`
`US Patent Application
`Publication No. US
`2006/0155871
`US Patent Application
`Publication No. US
`2007/0081649
`U.S. Patent No.
`7,103,333
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`7,219,303
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`8,250,155
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`US Patent Application
`Publication No. US
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`Publication No. US
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`
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`
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`
`Baudino
`
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`Lazaridis et al.
`
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`
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`
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`
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`
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`
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`
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`
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`
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`
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`
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`
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`
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`
`Hoisko
`Hermele
`Tsuji et al.
`
`Jackson et al.
`
`Muramatsu
`
`Muramatsu
`
`Rayburn
`
`Grube et al.
`
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`June 9, 1998
`
`Nov. 5, 2002
`
`Apr. 17, 2001
`Aug. 28, 2001
`Sept. 1, 1992
`
`Oct. 8, 1999
`
`Mar. 15, 2005
`
`May 14, 2002
`
`Sept. 6, 2005
`
`Dec. 12, 2001
`
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`
`Oct. 7, 2002
`
`Mar. 29, 2003
`
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`
`Bostrom et al.
`
`Dec. 30, 2004
`
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`
`Weber et al.
`
`Aug. 30, 2007
`
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`
`Delaney
`
`Dec. 1, 2005
`
`Sept. 17, 2004
`
`Zhovnirovsky
`
`Feb. 9, 2006
`
`Aug. 3, 2005
`
`- 25 -
`
`
`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 11 of 16 PageID #: 4461
`
`WO 0217567
`WO 03071825
`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.
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`
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`Spaargaren
`Sikila
`
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`Yoon
`
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`Wilson et al.
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`
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`
`Weaver et al.
`
`Beyer
`
`Beyer
`
`Beyer
`
`Beyer
`
`Beyer
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`Beyer
`
`Beyer
`
`Beyer
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`Beyer
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`Beyer
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`Beyer
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`Arisumi
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`Chiba
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`Apr. 18, 2006
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`Apr. 18, 2006
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`Dec. 8, 2009
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`Mar. 2, 2010
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`Mar. 30, 2010
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`Jul. 27, 2010
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`Sep. 28, 2010
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`Nov. 9, 2003
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`Sep. 21, 2004
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`Apr. 17, 2006
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`Jan. 16, 2007
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`Jan. 17, 2007
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`Feb. 2, 2007
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`Jan. 23, 2007
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`Dec. 14, 2010
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`Dec. 19, 2006
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`Sept. 17, 2013
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`Jan. 28, 2013
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`Jan. 29, 2013
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`Jul. 3, 2012
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`Apr. 16, 2010
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`Feb. 28, 2012
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`Sept. 19, 2005
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`July 3, 2001
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`Dec. 11, 1992
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`Nov. 16, 1993
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`April 24, 1992
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`Fujise et al.
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`March 14, 2007
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`May 14, 2003
`
`- 26 -
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`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 12 of 16 PageID #: 4462
`
`JP Application
`No.
`2002077372
`JP Application
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`2003264861
`JP Application
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`2003230172
`JP Application
`No.
`2000357296
`WO
`Application
`2003/096660
`
`
`
`Helle
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`March 15, 2002
`
`July 4, 2001
`
`Mese et al.
`
`April 9, 2006
`
`Sept. 19, 2003
`
`Ozawa
`
`Unoki
`
`Aug. 15, 2003
`
`Feb. 1, 2002
`
`Oct. 6, 2003
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`Dec. 26, 2000
`
`Seraft et al.
`
`Nov. 20, 2003
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`May 8, 2002
`
`In addition, Defendants intend 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 proceeding (past, present/ongoing, or future).
`
`As stated earlier, Defendants incorporate 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). Defendants intend 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. Defendants also intend to rely on references identified
`
`in the intrinsic record 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
`
`the foregoing listed prior art documents, the underlying work, and/or the underlying apparatus or
`
`- 27 -
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`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 13 of 16 PageID #: 4463
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`method qualifies as prior art under one or more sections of (pre-AIA or AIA) 35 U.S.C. § 102
`
`and/or 35 U.S.C. § 103.
`
`Although Defendants have identified at least one citation per limitation for each
`
`reference, each and every disclosure of the same limitation in the same reference is not
`
`necessarily identified. Rather, in an effort to focus the issues, Defendants have cited
`
`representative portions of identified references in their claim charts, even where a reference may
`
`contain additional support for a particular claim element. In addition, persons of ordinary skill in
`
`the art generally read a prior art reference as a whole and in the context of other publications and
`
`literature. Thus, to understand and interpret any specific statement or disclosure within a prior
`
`art reference, such persons would rely on other information within the reference, even if not cited
`
`in a given Exhibit, along with other publications and their general scientific knowledge. As
`
`such, Defendants may rely upon uncited portions of the prior art references and on other
`
`publications and expert testimony to provide context, and as aids to understanding and
`
`interpreting the portions that are cited. Defendants may also rely on uncited portions of the prior
`
`art references, other disclosed publications, and the testimony of experts to establish that a
`
`person of ordinary skill in the art would have been motivated to modify or combine certain of the
`
`cited references so as to render the claims obvious.
`
`The asserted claims are invalid as anticipated under 35 U.S.C. § 102 in view of the prior
`
`art references identified above and in the claim charts included in the attached Exhibits, which
`
`identify specific examples of where each limitation of the asserted claim is found in the prior art
`
`references. As explained above, the cited portions of prior art references identified in the
`
`attached claim charts are exemplary only and representative of the content and teaching of the
`
`prior art references, and should be understood in the context of the reference as a whole and as
`
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`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 14 of 16 PageID #: 4464
`
`they would be understood by a person of ordinary skill in the art. Moreover, to the extent it
`
`becomes an issue, any exemplary citations should not be interpreted as contradictory to any other
`
`representative exemplary citations.
`
`Additionally, to the extent any limitation is deemed not to be exactly met by an item of
`
`prior art listed above, then any purported differences are such that the claimed subject matter as a
`
`whole would have been obvious to one skilled in the art at the time of the alleged invention, in
`
`view of the state of the art and knowledge of those skilled in the art. The item of prior art would,
`
`therefore, render the relevant claims invalid for obviousness under 35 U.S.C. § 103(a).
`
`Furthermore, the references identified above render the asserted claims obvious when the
`
`references are read in combination with each other, and/or when read in view of the state of the
`
`art and knowledge of those skilled in the art. Each and every reference identified is also relevant
`
`to the state of the art at the time of the alleged invention. Any of the references disclosed above
`
`may be combined to render obvious (and therefore invalid) the asserted claim. Defendants may
`
`rely upon a subset of the above identified references or all of the references identified above,
`
`including all references in the attached Exhibits, for purposes of obviousness depending on the
`
`Court’s claim construction and further investigation and discovery. Moreover, Exhibits B, D, F,
`
`and H, set forth exemplary, relevant citations from prior art references supporting the
`
`obviousness of the asserted claims, any combination of references upon which one of ordinary
`
`skill in the art would rely.
`
`Motivations to combine the above items of prior art are present in the references
`
`themselves, the common knowledge of one of ordinary skill in the art, the prior art as a whole, or
`
`the nature of the problems allegedly addressed by the Asserted Patent and/or their related
`
`patents. Where appropriate, the Exhibits attached herewith additionally disclose combinations of
`
`- 29 -
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`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 15 of 16 PageID #: 4465
`
`prior references and exemplary teachings that would motivate a person of ordinary skill in the art
`
`to combine the references in the manner prescribed. Each reference or combination of references
`
`suggested by an exemplary chart indicates whether the prior art renders the claim anticipated or
`
`obvious pursuant to P.R. 3-3(b) and (c). The suggested obviousness combinations are in addition
`
`to Defendants’ anticipation contentions and are not to be construed to suggest that any reference
`
`included in any combination does not anticipate the claimed subject matter on its own. To the
`
`extent that any reference, under the Court’s forthcoming or issued claim construction, does not
`
`anticipate some or all of the asserted claim, it would have been obvious to combine that
`
`reference with any of the other charted prior art references or any of the other prior art references
`
`disclosed herein. While each of the references identified in the Exhibits may be the primary
`
`reference in a combination with any of the references identified in the Exhibits or in these
`
`invalidity contentions, Defendants have specifically identified combinations, where appropriate,
`
`in the attached Exhibits, for example, in Exhibits B, D, F, and H. Combining the references
`
`disclosed in the attached Exhibits would have been obvious, as the references identify and
`
`address the same technical issues, such as, with location and position tracking, mapping, and
`
`communication between users of devices, including mobile devices. For example, the APRS,
`
`BuddySpace, ActiveCampus, FBCB2, AT&T Find Friends, AGIS LifeRing, and Navizon
`
`systems, as well as at least the Altman, Weber, Karam, Poulin, Sheha, Sandu, Emigh, Haney,
`
`Brewer, and Hutton references, are all concerned with the exchange of location-based data and
`
`information between users of wireless devices. Each of those systems or references generally
`
`seeks to solve problems associated with coordinating the positions or activities of members of a
`
`group, such as military units, emergency personnel, or groups of friends. Therefore, someone of
`
`skill in the art at the time of the alleged inventions would have been motivated to combine the
`
`- 30 -
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`

`

`Case 2:17-cv-00514-JRG Document 108-3 Filed 01/25/19 Page 16 of 16 PageID #: 4466
`
`teachings of those and similar references that deal with improving systems and methods for
`
`location tracking, mapping, and communicating between users of devices (including mobile
`
`devices) to meet the limitations of the various claim elements. Similarly, as additional examples,
`
`the Ordille, Tanumihardja, Sweeney, Roujinsky, Eaton, Seppanen, and Zimmers references are
`
`generally related to the sending, receiving, and tracking of messages between wireless devices.
`
`Each of those references further seeks to solve problems associated with sending and receiving
`
`messages among groups of people who are located in different places. Accordingly, someone of
`
`skill in the art at the time of the alleged inventions would have been motivated to combine the
`
`teachings of those and similar references that deal with improving systems and methods for the
`
`transmission of messages among devices located in different places.
`
`Defendants reserve the right to amend or supplement these preliminary invalidity
`
`contentions to identify additional reasons that combining the references would be obvious to one
`
`of ordinary skill in the art.
`
`Furthermore, the Court has not yet issued an order construing any terms of any of the
`
`asserted claims in this case. Defendants have endeavored to interpret the claim terms for
`
`purposes of these Invalidity Contentions based on Plaintiff’s infringement contentions and with
`
`consideration given to the Court’s prior rulings involving the asserted claims. Thus, in certain
`
`respects, these Invalidity Contentions apply the Plaintiffs’ apparent interpretation of the scope of
`
`the asserted claims as set forth in its infringement contentions. In the event Plaintiff changes its
`
`infringement theories, Defendants may seek to amend these Invalidity Contentions to account for
`
`any new interpretations or applications of the asserted claims. Defendants also reserves the right
`
`to amend or supplement these contentions regarding anticipation or obviousness of the Asserted
`
`Claims, in view of further information from AGIS, information discovered during discovery, or
`
`- 31 -
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`
`