Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 1 of 18 PageID #: 8549
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`vs.
`
`HTC CORPORATION,
`
`Defendant.
`
`CASE NO. 2:17-CV-514-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`DEFENDANT HTC CORPORATION’S MOTION FOR SUMMARY JUDGMENT OF
`NO DIRECT INFRINGEMENT
`
`
`
`
`
`

`

`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 2 of 18 PageID #: 8550
`
`TABLE OF CONTENTS
`
`
`Page
`
`INTRODUCTION ............................................................................................................. 1
`STATEMENT OF ISSUES TO BE DECIDED BY THE COURT .................................. 2
`STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................ 3
`A.
`The Asserted Claims .............................................................................................. 3
`B.
`AGIS’s Direct Infringement Allegations ............................................................... 3
`C.
`HTC Corp.’s Conduct with Respect to the United States ...................................... 5
`LEGAL STANDARD ........................................................................................................ 7
`ARGUMENT ..................................................................................................................... 8
`A.
`Summary Judgment of No Direct Infringement of the Method Claims of
`the Asserted Patents Is Warranted Because There Is No Genuine Dispute
`that HTC Corp. Does Not Make, Use, Sell, Offer to Sell, or Import the
`Accused Devices in the United States ................................................................... 8
`Summary Judgment of No Direct Infringement of the System and Device
`Claims of the Asserted Patents Is Warranted Because There Is No Genuine
`Dispute that HTC Corp. Does Not Make, Use, Sell, Offer to Sell, or
`Import the Accused Devices in the United States ................................................ 10
`CONCLUSION ................................................................................................................ 13
`
`B.
`
`
`I.
`II.
`III.
`
`IV.
`V.
`
`VI.
`
`-i-
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`

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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 3 of 18 PageID #: 8551
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................7
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................7
`
`Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, Inc.,
`631 F.3d 1279 (Fed. Cir. 2011)................................................................................................10
`
`Convolve, Inc. v. Dell Inc.,
`No. 2:08-CV-244-RSP, 2017 WL 2463398 (E.D. Tex. June 7, 2017) ......................................9
`
`Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010)..................................................................................................9
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`831 F.3d 1369 (Fed. Cir. 2016)..........................................................................................11, 12
`
`Int’l Rectifier Corp. v. Samsung Elecs. Co., Ltd.,
`361 F.3d 1355 (Fed. Cir. 2004)..................................................................................................7
`
`Joy Techs., Inc. v. Flakt, Inc.,
`6 F.3d 770 (Fed. Cir. 1993) .......................................................................................................8
`
`Little v. Liquid Air Corp.,
`37 F.3d 1069 (5th Cir. 1994) .....................................................................................................7
`
`NTP, Inc. v. Research in Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005)..................................................................................................7
`
`Summit 6 LLC v. Research in Motion Corp.,
`No. 3:11-cv-367-O, 2013 WL 12124321 (N.D. Tex. June 26, 2013) ........................................9
`
`TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
`137 S. Ct. 1514 (2017) ...............................................................................................................1
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296 (Fed. Cir 2010).................................................................................................12
`
`STATUTES
`
`35 U.S.C. § 271(a) ................................................................................................................. passim
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 56(a) ........................................................................................................................7
`
`-ii-
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`

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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 4 of 18 PageID #: 8552
`
`
`I.
`
`INTRODUCTION
`
`
`
`AGIS alleges that HTC Corp. directly infringes U.S. Pat. Nos. 8,213,970; 9,408,055;
`
`9,445,251; and 9,467,838 (the “asserted patents”), based on software that allegedly runs on
`
`smartphones that HTC Corp. manufactures. But AGIS’s allegations of direct infringement are
`
`fatally flawed for a simple reason: AGIS sued the wrong entity. HTC Corp. is a Taiwanese
`
`entity that does not make, use, sell, offer to sell, or import its smartphones in the United States.
`
`Rather, a third-party, HTC America, Inc., performs the sales and importation in the United States
`
`of HTC Corp.-manufactured smartphones. This distinction between HTC Corp. and HTC
`
`America results in a situation where the defendant in this case, HTC Corp., does not actually
`
`perform any acts within the United States upon which direct infringement could be premised.
`
`Thus, regardless of any elements of the asserted claims or features of the products, HTC Corp.
`
`does not directly infringe as a matter of law, simply because of where HTC Corp. conducts its
`
`business activities.
`
`While this may appear to be a sweeping outcome, the Court should not view this as an
`
`outcome that is unfair to AGIS. This outcome is nothing more than the direct result of a strategic
`
`decision that AGIS made when it filed this lawsuit. Based on AGIS’s conduct in this and the
`
`related lawsuits, it is obvious that AGIS sued HTC Corp., a foreign entity, and not HTC
`
`America, a Washington entity, because this District would not have been a proper venue for
`
`HTC America after TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514
`
`
`
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`
`
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`-1-
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`

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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 5 of 18 PageID #: 8553
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`
`(2017).1 Thus far, AGIS’s gambit has succeeded on the venue part of the plan. (See
`
`Memorandum Opinion and Order Denying Motion to Transfer Venue (Dkt. No. 77).) But now
`
`having secured its desired forum, AGIS must pay the price of its decision to sue the wrong entity
`
`as a defendant for any viable claim of direct infringement.
`
`As explained further herein, HTC Corp. does not conduct any of the direct infringement-
`
`implicating activities recited in 35 U.S.C. § 271(a) within the United States. As such, HTC
`
`Corp. respectfully moves the Court to grant summary judgment of no direct infringement of any
`
`of the asserted claims.
`
`II.
`
`STATEMENT OF ISSUES TO BE DECIDED BY THE COURT
`
` Whether HTC Corp. directly infringes the method claims of the asserted patents,
`
`when HTC Corp. does not make, use, sell, or offer to sell the accused devices
`
`within the United States and does not import the accused devices into the United
`
`States.
`
` Whether HTC Corp. directly infringes the system and device claims of the
`
`asserted patents, when HTC Corp. does not make, use, sell, or offer to sell the
`
`accused devices within the United States and does not import the accused devices
`
`into the United States.
`
`
`1 HTC Corp. calls attention to the fact that AGIS sued four Android device manufacturers in this
`District on June 21, 2017: HTC Corp. (2:17-CV-00514); LG (2:17-CV-00515); Huawei (2:17-
`CV-00513); and ZTE (2:17-CV-00517). For those manufacturers that had a Texas-based United
`States entity—Huawei and ZTE—AGIS named the foreign entity and the United States entity as
`defendants. For those manufacturers that did not have Texas-based United States entities—HTC
`Corp. and LG—AGIS did not name the United States entities as defendants. HTC Corp. further
`calls attention to the evidence demonstrating a venue-motivated purpose for the establishment of
`AGIS as an entity. (See Motion to Transfer Venue (Dkt. No. 29), pp. 2–4; Motion to Reconsider
`Denial of Motion to Transfer Venue (Dkt. No. 97), pp. 4–5.)
`
`-2-
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`

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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 6 of 18 PageID #: 8554
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`
`III.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`A.
`
`The Asserted Claims
`
`AGIS elected the following claims for assertion against HTC Corp:
`
`Patent
`
`Method Claims
`
`System / Device Claims
`
`U.S. 8,213,970
`
`8
`
`1, 3, 5
`
`U.S. 9,467,838
`
`1, 5, 7, 10, 15, 18–20, 27, 38, 40
`
`54
`
`U.S. 9,445,251
`
`1, 5, 6, 12, 15, 19
`
`U.S. 9,408,055
`
`1, 2, 7, 22, 24, 54
`
`24, 27, 29, 31, 35
`
`28, 32, 36, 42, 49
`
`(Ex. 1, AGIS’s Final Election of Asserted Claims, pp. 1–2.)
`
`B.
`
`AGIS’s Direct Infringement Allegations
`
`AGIS alleges that HTC Corp. directly infringes the asserted patents. (Complaint
`
`(Dkt. No. 1), ¶¶ 18, 27, 40, 53; id. at Prayer for Relief, § a.) AGIS bases its infringement
`
`allegations on the fact that HTC Corp.’s smartphones (“accused devices”) are capable of running
`
`software in an allegedly infringing manner. (Id.)
`
`HTC served the following Interrogatory No. 20 on AGIS:
`
`HTC Corporation does not make, use, offer to sell, or sell
`smartphones in the United States or import smartphones into the
`United States. For each of the asserted claims of the ’055, ’251,
`’838, and ’970 patents, separately identify the party or parties that
`AGIS contends directly infringe each patent, and which activity or
`activities from 35 U.S.C. § 271(a) (i.e., “makes . . . within the
`United States”, “uses . . . within the United States,” “offers to
`sell . . . within the United States,” “sells . . . within the United
`States,” or “imports into the United States”) constitute the
`infringing acts. Identify the documents that demonstrate these
`activities.
`
`(Ex. 2, HTC Corp.’s Second Set of Interrogatories, p. 12.) AGIS’s response, in relevant part,
`
`was the following:
`
`
`-3-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 7 of 18 PageID #: 8555
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`
`AGIS objects to this Interrogatory because it is cumulative and
`duplicative as it seeks the discovery of information that HTC has
`already obtained through AGIS’s Disclosure of Asserted Claims
`and Infringement Contentions pursuant to P.R. 3-1.
`
`AGIS identifies the following documents from which information
`responsive to this Interrogatory may be obtained: AGIS Software
`Development, LLC v. HTC Corporation, 2:17-cv-00514-JRG, Dkt.
`1 (E.D. Tex. June 21, 2017) (the “Complaint”); see 2018-11-28
`Letter Rubino to Bernstein re 970 Patent.
`
`AGIS further states that information responsive to this
`Interrogatory will be produced in AGIS’s expert reports in
`accordance with this Court’s scheduling order. Discovery in this
`case is still ongoing and AGIS continues to investigate this matter.
`
`(Ex. 3, AGIS’s Responses to HTC Corp.’s Second Set of Interrogatories, pp. 9–10.)
`
`In response to a letter from counsel for HTC Corp. asking AGIS to identify how HTC
`
`Corp. allegedly directly infringes the ’970 patent, (Ex. 4, November 13, 2018 Letter from Matt
`
`Bernstein to Vincent Rubino, p. 1.), counsel for AGIS identified the following activity:
`
`HTC has directly infringed the ’970 Patent at least as a result of
`selling its Android Smartphones, which include the GMS suite, in
`the United States prior to the filing of the complaint. Additionally,
`HTC has directly infringed the ’970 Patent at least by testing the
`accused applications. See, e.g., Teng Dep. Tr. at 84:18-23.
`
`(Ex. 5, November 28, 2018 Letter from Vincent Rubino to Matt Bernstein, p. 1.)
`
`In its infringement contentions and its expert’s infringement report, AGIS contends that
`
`the asserted method claims are directly infringed by use of the Find My Device and Google
`
`Maps software applications on the accused devices, either by end users or by HTC Corp.’s
`
`testing of the accused devices. (See Ex. 6, AGIS’s Jan. 19, 2018 Infringement Contentions
`
`Cover Pleading, pp. 18–19; Ex. 7, AGIS’s Dec. 19, 2018 Infringement Contentions Cover
`
`Pleading, pp. 17–18; see, e.g., Ex. 8, McAlexander Infringement Report, pp. A-a85, A-a112.)
`
`In its infringement contentions and its expert’s infringement report, AGIS contends that
`
`HTC Corp. directly infringes the asserted system and device claims based on HTC Corp.
`
`
`-4-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 8 of 18 PageID #: 8556
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`making, using, selling, offering to sell, or importing the accused devices that are capable of
`
`operating the Find My Device and Google Maps software applications. (See Ex. 6 at pp. 18–19;
`
`Ex. 7 at pp. 17–18; see, e.g., Ex. 8 at pp. A-a1, A-a13.)
`
`C.
`
`HTC Corp.’s Conduct with Respect to the United States
`
`HTC Corp.’s witnesses testified during depositions as to the conduct that HTC Corp. and
`
`HTC America undertake with respect to the United States.
`
` (Ex. 9, David Wiggins Dep. Tr., 29:2–19.)
`
`
`
` (Ex. 9 at
`
`18:13–16, 19:11–19, 56:23–25; Ex. 10, Tiger Hsu Dep. Tr., 12:25–14:3, 49:2–6.).
`
`
`
`18:7). HTC Corp. tests its smartphones in Taiwan. (Dkt. No. 29-1, ¶ 3.)
`
`(Ex. 9 at 20:4–16; Ex. 10 at 18:25–19:17, 27:14–21.)
`
`(Ex. 9 at 20:4–16; Ex. 10 at 31:10–24.)
`
`(Ex. 10 at 17:2–
`
`
`
`
`
`
`
`
`
`31:10–32:5.)
`
`(Ex. 10 at 27:14–28:22,
`
`
`
` (Ex. 9 at 18:13–16, 20:4–19.)
`
`Ex. 9 at 21:2–20, 27:21–28:18, 55:11–21; cf. Ex. 11, Nigel
`
`Newby-House Dep. Tr., 64:20–66:20, 70:3–75:9 (
`
`); id. at 96:12–98:20
`
`).)
`
`
`-5-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 9 of 18 PageID #: 8557
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`
`9:6–13, 22:16–25, 36:10–14; Ex. 10 at 46:17–48:25, 83:12–84:6; cf. Ex. 11 at 26:20–29:13
`
` (Ex. 11 at
`
` (Ex. 11 at 61:18–62:5; Ex. 10 at 39:9–41:6; see also id. at
`
`
`
`
`
`(
`
`55:4–24.)
`
`(Ex. 11 at 66:21–67:1.)
`
`
`
`
`
`(Ex. 9 at 15:23–
`
`
`
`18:12, 22:3–23:13, 58:1–20; Ex. 11 at 37:22–39:1.)
`
`Ex. 11 at 39:17–42:5, 45:9–22.)
`
`
`
` (Ex. 9 at 15:23–18:12; see also Ex. 11 at 32:11–23,
`
`(Ex. 9 at 15:23–18:12, 22:3–23:13;
`
`33:15–34:5, 55:25–56:7.)
`
`30:2–12.)
`
`35:20–25.)
`
` (Ex. 11 at
`
` (Ex. 11 at
`
` (Ex. 11 at 30:13–32:2, 38:24–40:5, 93:19–94:5.)
`
`
`
`
`
` (Ex. 12, Steven Teng Dep. Tr., 17:11–18:21,
`
`22:12–23:16, 29:22–32:6, 83:16–84:23; Ex. 13, Mei Wang Dep. Tr., 45:18–22, 46:12–16, 47:14–
`
`17, 49:1–50:10, 54:14–18, 57:2–58:10; Ex. 10 at 49:2–50:13. But all testing is done in Taiwan.
`
`(Dkt. No. 29-1, ¶ 3.)
`
`
`
` (See
`
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`-6-
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`

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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 10 of 18 PageID #: 8558
`
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`generally Ex. 12; Ex. 13; Ex. 10.) Despite the fact that HTC Corp.’s VP of marketing (Richard
`
`Lin) declared that HTC Corp. tests all of its Android smartphones in Taiwan (Dkt. 29-1, ¶ 3), and
`
`AGIS took the deposition of HTC Corp.’s 30(b)(6) sworn witness (Tiger Hsu) regarding testing
`
`and the facts in Richard Lin’s declaration,
`
`(Ex. 10 at 73:6–14, 49:2–50:13).
`
`
`
`
`
`Ex. 12 at 22:12–23:16, 29:22–30:7.)
`
`45:18–22, 46:12–16, 47:14–17; see also Ex. 12 at 22:12–14.)
`
` (Ex. 13 at
`
`
`
`
`
` (Ex. 12 at 22:15–23:16.)
`
`Again, the testing was performed in Taiwan (Dkt. 29-1, ¶ 3).
`
`IV.
`
`LEGAL STANDARD
`
`A movant is entitled to summary judgment if “there is no genuine dispute as to any
`
`material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A dispute of fact is “genuine” only if
`
`evidence presented “is such that a reasonable jury could return a verdict for the nonmoving
`
`party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “[T]he party moving for
`
`summary judgment must ‘demonstrate the absence of a genuine issue of material fact,’ but need
`
`not negate the elements of the nonmovant’s case.” Little v. Liquid Air Corp., 37 F.3d 1069, 1075
`
`(5th Cir. 1994) (quoting Celotex, 477 U.S. at 323).
`
`Direct infringement occurs when a party “makes, uses, offers to sell, or sells any patented
`
`invention, within the United States or imports into the United States any patented invention[.]”
`
`35 U.S.C. § 271(a). The express language of § 271(a) demonstrates that direct infringement
`
`
`-7-
`
`

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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 11 of 18 PageID #: 8559
`
`
`cannot be based on “conduct outside of the United States.” Int’l Rectifier Corp. v. Samsung
`
`Elecs. Co., Ltd., 361 F.3d 1355, 1360 (Fed. Cir. 2004); see also NTP, Inc. v. Research in Motion,
`
`Ltd., 418 F.3d 1282, 1313 (Fed. Cir. 2005) (“The territorial reach of section 271 is limited.
`
`Section 271(a) is only actionable against patent infringement that occurs within the United
`
`States.”).
`
`V.
`
`ARGUMENT
`A.
`
`Summary Judgment of No Direct Infringement of the Method Claims of the
`Asserted Patents Is Warranted Because There Is No Genuine Dispute that
`HTC Corp. Does Not Make, Use, Sell, Offer to Sell, or Import the Accused
`Devices in the United States.
`
`HTC Corp. does not directly infringe the method claims because HTC Corp. does not
`
`make, use, sell, or offer to sell the accused devices within the United States, or import the
`
`accused devices into the United States.
`
`AGIS has alleged direct infringement of the method claims based on two types of “use”
`
`of the asserted method claims: use of the software applications on the accused devices by end
`
`users, and testing by HTC Corp. See § III.B, supra. AGIS cannot legitimately accuse HTC
`
`Corp. of direct infringement of the method claims based on end users performing those methods
`
`using the accused devices. See Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993).
`
`So AGIS only asserts that HTC Corp. performs the testing-based direct infringement of the
`
`method claims. (See Ex. 5 at p. 1 (“Additionally, HTC has directly infringed the ’970 Patent at
`
`least by testing the accused applications.” (citing Steven Teng Dep. Tr. (Ex. 12) at 84:18–23));
`
`Ex. 6 at p. 18 (“AGIS contends that HTC directly infringes the asserted claims by testing the
`
`HTC Accused Products in the United States.”); Ex. 7 at p. 18 (“AGIS contends that HTC directly
`
`infringes the asserted claims by testing the HTC Accused Products in the United States.”).)
`
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`-8-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 12 of 18 PageID #: 8560
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`
`But AGIS’s testing-based theory of direct infringement is unsupported by any evidence
`
`that a reasonable jury could rely on to find that HTC Corp. performs testing within the United
`
`States. While counsel for AGIS questioned HTC Corp.’s witnesses at length about testing of
`
`smartphones,
`
`
`
`See, e.g., Ex. 12 at 17:11–18:21, 22:12–23:16, 29:22–32:6, 83:16–84:23; Ex. 13 at
`
`45:18–22, 46:12–16, 47:14–17, 49:1–50:10, 54:14–18, 57:2–58:10; Ex. 10 at 49:2–50:13.)
`
`Tellingly, all of these depositions occurred after HTC Corp.’s witness declared that all testing
`
`was conducted in Taiwan. (Dkt. No. 29-1, ¶ 3.) AGIS did not identify any evidence
`
`demonstrating that HTC Corp. performs testing within the United States. See § III.B, supra.
`
`Without evidence supporting the material fact of whether the product testing is performed
`
`in the United States, AGIS cannot prove direct infringement by HTC’s “use” of the asserted
`
`claims, as a matter of law. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206
`
`(Fed. Cir. 2010) (reversing denial of judgement as a matter of law of no direct infringement,
`
`where evidence of infringement of method claims included defendant’s Germany-based
`
`employee describing product testing, but no evidence that this testing was performed within the
`
`United States); Convolve, Inc. v. Dell Inc., No. 2:08-CV-244-RSP, 2017 WL 2463398, at *7–8
`
`(E.D. Tex. June 7, 2017) (vacating jury verdict of direct infringement where verdict was based
`
`on defendant’s alleged product testing, and plaintiff failed to submit evidence that the testing was
`
`performed within the United States); Summit 6 LLC v. Research in Motion Corp., No. 3:11-cv-
`
`367-O, 2013 WL 12124321, at *4 (N.D. Tex. June 26, 2013) (granting judgment as a matter of
`
`law of no direct infringement where plaintiff’s evidence was limited to (1) a “scintilla of
`
`evidence” that defendant’s employee may have tested the accused device once within the United
`
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`-9-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 13 of 18 PageID #: 8561
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`States, and (2) evidence that “billions” of end users used the accused device within the United
`
`States).
`
`Therefore, there is no genuine dispute that HTC Corp. does not use the asserted method
`
`claims within the United States. As addressed in greater detail below, there is also no genuine
`
`dispute that HTC Corp. does not make, use, sell, offer to sell, or import the accused devices in
`
`the United States. As such, there is no genuine dispute that HTC Corp. does not directly infringe
`
`the asserted method claims. For this reason, summary judgment of no direct infringement of
`
`claim 8 of the ’970 patent, claims 1, 7, 10, 15, 18–20, 27, 38, and 40 of the ’838 patent, claims 1,
`
`5, 6, 12, 15, 19 of the ’251 patent, and claims 1, 2, 7, 22, 24, 54 of the ’055 patent is warranted.
`
`B.
`
`Summary Judgment of No Direct Infringement of the System and Device
`Claims of the Asserted Patents Is Warranted Because There Is No Genuine
`Dispute that HTC Corp. Does Not Make, Use, Sell, Offer to Sell, or Import
`the Accused Devices in the United States.
`
`HTC Corp. also does not directly infringe the system and device claims because HTC
`
`Corp. does not make, use, sell, or offer to sell the accused devices within the United States, or
`
`import the accused devices into the United States.
`
`HTC Corp. does not make the accused devices within the United States. In order to
`
`“make” a claimed system for purposes of § 271(a), a party must combine all of the claim
`
`elements together. Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, Inc., 631 F.3d 1279,
`
`1288 (Fed. Cir. 2011).
`
`
`
`(Ex. 9 at 18:13–16, 19:11–19, 56:23–25; Ex. 10, Tiger Hsu Dep. Tr., 12:25–
`
`14:3, 49:2–6; Dkt. No. 29-1, ¶ 4.) Thus, HTC Corp. cannot directly infringe the system or
`
`device claims based on “making” the accused devices within the United States.
`
`HTC Corp. does not use the accused devices within the United States. In order to “use” a
`
`claimed system for purposes of § 271(a), a party must “put the claimed invention into service,
`
`
`-10-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 14 of 18 PageID #: 8562
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`i.e., control the system and obtain benefit from it.” Centillion, 631 F.3d at 1286. To the extent
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`that HTC Corp. performs any conduct that puts the accused devices into service, HTC Corp.
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`performs that conduct outside of the United States.
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`20:4–16; Ex. 10 at 18:25–19:17, 27:14–21.)
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` (Ex. 9 at
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` (Ex. 9 at 20:4–16; Ex. 10 at 31:10–
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`24.) AGIS has identified no evidence that would show that HTC Corp. uses the accused devices
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`after they enter into the United States. See § V.A, supra (explaining that AGIS has identified no
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`evidence that HTC Corp. performs testing on the accused devices inside the United States).
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`Thus, HTC Corp. cannot directly infringe the system or device claims based on “using” the
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`accused devices within the United States.
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`HTC Corp. does not sell the accused devices within the United States. The courts “have
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`not deemed a sale to have occurred within the United States for purposes of liability under
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`§ 271(a) based solely on negotiation and contracting activities in the United States when the vast
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`majority of activities underlying the sales transaction occurred wholly outside the United States.”
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`Halo Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369, 1377 (Fed. Cir. 2016). While the transfer
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`of title is not the only factor to consider for where a “sale” occurs, it is a significant factor. See
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`id. at 1377–78. Where “delivery and performance under [the] sales contract” occurs is also a
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`factor to be considered. Id. at 1378. Where purchase orders are received is also a factor to be
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`considered. Id.
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`18:25–19:17, 27:14–21.)
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` (Ex. 10 at 17:2–18:7).
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`(Ex. 9 at 20:4–16; Ex. 10 at
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 15 of 18 PageID #: 8563
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` (Ex. 9 at 20:4–16; Ex. 10 at 31:10–24.) Hence, the relevant factors
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`for determining where the “sale” of the accused devices occurs establish that it occurs outside the
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`United States.
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`(Ex. 10 at 27:14–28:22, 31:10–32:5.)
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`Thus, HTC Corp. cannot directly infringe the system or device claims based on “selling” the
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`accused devices within the United States.
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`HTC Corp. does not offer to sell the accused devices within the United States. For
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`purposes of § 271(a), “‘the location of the contemplated sale controls whether there is an offer to
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`sell within the United States.’” Halo, 831 F.3d at 1380 (quoting Transocean Offshore
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`Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed. Cir.
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`2010)) (emphasis in Halo). “‘In order for an offer to sell to constitute infringement, the offer
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`must be to sell a patented invention within the United States.’” Id. (quoting Transocean, 617
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`F.3d at 1309). As just explained, HTC Corp. sells the accused devices to HTC America outside
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`the United States. As such, any offers related to sales of the accused devices cannot constitute
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`direct infringement.
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`
`
` (Ex. 10 at 27:14–28:22, 31:10–
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`32:5.) Thus, HTC Corp. cannot directly infringe the system or device claims based on “offering
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`to sell” the accused devices within the United States.
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`HTC Corp. does not import the accused devices into the United States.
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`(Ex. 9 at 20:4–16; Ex. 10 at 18:25–19:17, 27:14–21.)
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` (Ex. 9 at 20:4–16; Ex. 10 at 31:10–24.) Thus, HTC Corp. cannot directly
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`-12-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 16 of 18 PageID #: 8564
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`infringe the system or device claims based on “importing” the accused devices into the United
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`States.
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`Based on the foregoing, HTC Corp. does not perform any of the five categories of
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`conduct of § 271(a) within or into the United States. Therefore, there is no genuine dispute that
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`HTC Corp. does not make, use, sell, or offer to sell the accused devices within the United States
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`or import the accused devices into the United States. As such, there is no genuine dispute that
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`HTC Corp. does not directly infringe the asserted system/device claims. For this reason,
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`summary judgment of no direct infringement of claims 1, 3, 5 of the ’970 patent, claim 54 of the
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`’838 patent, claims 24, 27, 29, 31, 35 of the ’251 patent, and claims 28, 32, 36, 42, 49 of the ’055
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`patent is warranted.
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`VI. CONCLUSION
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`For the foregoing reasons, HTC Corp. respectfully requests that the Court grant summary
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`judgment of no direct infringement of the asserted method claims and summary judgment of no
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`direct infringement of the asserted system/device claims.
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`-13-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 17 of 18 PageID #: 8565
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`Dated: January 25, 2019
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`Respectfully submitted,
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`/s/ Kyle R. Canavera
`Matthew C. Bernstein, (Lead Attorney)
`CA State Bar No. 199240
`mbernstein@perkinscoie.com
`Miguel J. Bombach
`CA State Bar No. 274287
`mbombach@perkinscoie.com
`Kyle R. Canavera
`CA State Bar No. 314664
`kcanavera@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2080
`Tel: (858) 720-5700
`Fax: (858) 720-5799
`
`Eric Findlay
`State Bar No. 00789886
`efindlay@findlaycraft.com
`Brian Craft
`State Bar No. 04972020
`bcraft@findlaycraft.com
`FINDLAY CRAFT, P.C.
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`
`ATTORNEYS FOR DEFENDANT
`HTC CORPORATION
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`-14-
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`Case 2:17-cv-00514-JRG Document 123 Filed 01/28/19 Page 18 of 18 PageID #: 8566
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on January 25, 2019 to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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` /s/ Kyle R. Canavera
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`Kyle R. Canavera
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`This certifies, pursuant to Local Rule CV-5(a)(7), this document is authorized to be filed
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`Under Seal pursuant to a Protective Order [#119] entered April 10, 2018.
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`/s/ Kyle R. Canavera
`Kyle R. Canavera
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`-1-
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