Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 1 of 16 PageID #: 9495
`
`IN THE UNITED STATES DISTRICT COURT for
`THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:17-cv-0514-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`CASE NO. 2:17-CV-0515-JRG
`(Consolidated Case)
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§
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`§§§§§§§§§
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`AGIS SOFTWARE DEVELOPMENT, LLC
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`Plaintiff,
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`v.
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`HTC CORPORATION, et al.
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`Defendant.
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`LG ELECTRONICS INC.
`
`Defendant.
`
`DEFENDANT LG ELECTRONICS INC.’S MOTION FOR PARTIAL SUMMARY
`JUDGMENT OF LIMITATION OF DAMAGES
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`

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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 2 of 16 PageID #: 9496
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`III.
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`IV.
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`INTRODUCTION .................................................................................................................1
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`STATEMENT OF ISSUES TO BE DECIDED BY THE COURT ......................................1
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`STATEMENT OF UNDISPUTED MATERIAL FACTS ....................................................1
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`LEGAL STANDARDS .........................................................................................................4
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`A.
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`B.
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`Summary Judgment ...................................................................................................4
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`AGIS’s Marking Obligations .....................................................................................5
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`V.
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`ARGUMENT .........................................................................................................................6
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`A.
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`B.
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`AGIS, Inc. Sold LifeRing Products That Practice The Location Sharing Patents
`But Were Unmarked Before This Lawsuit Was Filed. ..............................................6
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`AGIS Cannot Show Actual Pre-Suit Notice Of Infringement Of The Location
`Sharing Patents...........................................................................................................9
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`VI.
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`CONCLUSION ......................................................................................................................10
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`i
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 3 of 16 PageID #: 9497
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`TABLE OF AUTHORITIES
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`Cases
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`
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`Page(s)
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`Am. Med. Sys., Inc. v. Med. Eng’g Corp.,
`6 F.3d 1523 (Fed. Cir. 1993)..................................................................................................5, 9
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`Amsted Indus. Inc. v. Buckeye Steel Castings Co.,
`24 F.3d 178 (Fed. Cir. 1994)................................................................................................9, 10
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................4
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`Arctic Cat Inc. v. Bombardier Recreational Prods., Inc.,
`876 F.3d 1350 (Fed. Cir. 2017)..................................................................................................6
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................5
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`Crawford v. Formosa Plastics Corp., La.,
`234 F.3d 899 (5th Cir. 2000) .....................................................................................................4
`
`Dunlap v. Schofield,
`152 U.S. 244 (1894) .............................................................................................................5, 10
`
`Gart v. Logitech, Inc.,
`254 F.3d 1334 (Fed. Cir. 2001)..................................................................................................5
`
`Laitram Corp. v. Hewlett-Packard Co.,
`806 F. Supp. 1294 (E.D. La. 1992) ............................................................................................5
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996)....................................................................................................5
`
`Salazar v. HTC Corp.,
`No. 2:16-CV-01096-JRG-RSP, 2018 WL 2041732 (E.D. Tex. May 1, 2018) ..........................6
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`Statutes and Rules
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`35 U.S.C. § 287(a) ...............................................................................................................1, 5, 6, 9
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`Fed. R. Civ. P.
`56(c) ...........................................................................................................................................4
`
`ii
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 4 of 16 PageID #: 9498
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`I.
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`INTRODUCTION
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`Defendant LG Electronics Inc. (“LGEKR”) moves for partial summary judgment that
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`AGIS Software Development LLC (“AGIS”) is not entitled to pre-suit damages for U.S. Patent
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`Nos. 9,408,055 (the “’055 Patent”), 9,445,251 (the “’251 Patent”), and 9,467,838 (the “’838
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`Patent”) (collectively, the “location sharing patents”) because AGIS failed to mark products
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`covered by these patents or otherwise notify LGEKR of the alleged infringement, as required by
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`35 U.S.C. § 287(a). LGEKR therefore respectfully requests that the Court grant summary
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`judgment of no damages for such patents prior to June 21, 2017, the date that AGIS filed this
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`lawsuit.
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`II.
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`STATEMENT OF ISSUES TO BE DECIDED BY THE COURT
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`Whether AGIS may recover damages for pre-suit infringement of the location sharing
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`patents where: (i) AGIS, Inc. did not mark the LifeRing product and its other publications with
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`these patent numbers, and (ii) AGIS failed to give LGEKR notice of the alleged infringement of
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`these patents prior to filing its Complaint in this action.
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`III.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`The ’838 Patent was filed on October 31, 2014 and issued on October 11, 2016.
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`D.I. 1-4 at 2. The ’251 Patent was filed on February 27, 2015 and issued on September 13, 2016.
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`D.I. 1-3 at 2. The ’055 Patent was filed on April 24, 2015 and issued on August 2, 2016. D.I. 1-
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`2 at 2.
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`2.
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`AGIS owns the location sharing patents and contends that LGEKR infringes these
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`patents. D.I. 1, ¶¶ 12, 14-63. AGIS Software Development LLC licenses its patent portfolio,
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`including the location sharing patents, to AGIS, Inc. D.I. 1, ¶ 12.
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`-1-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 5 of 16 PageID #: 9499
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`3.
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`Prior to June 15, 2017, AGIS, Inc. owned the location sharing patents. See Ex. A,
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`AGISTX_00006025.1 AGIS, Inc. assigned its patent portfolio, including the location sharing
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`patents, to AGIS Holdings, Inc. See id.
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` AGIS Holdings, Inc. assigned the
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`patent portfolio to AGIS Software Development LLC. See Ex. C, AGISTX_00006032.
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`4.
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`AGIS admits that AGIS, Inc.’s LifeRing product practices the location sharing
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`patents.
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` see also Ex. F, AGIS’s December 7, 2018 Supplemental Response
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`to LG’s Interrogatory No. 14 at 4–6. LGEKR first became aware of AGIS’s claims of
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`infringement of the location sharing patents when AGIS filed the Complaint in this Action, on
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`June 21, 2017. Ex. H, LGEKR’s Supplemental Objections and Responses to AGIS’s
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`Interrogatory No. 9 at 44.
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`5.
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`AGIS, Inc. put its LifeRing product on sale before this action was filed. In
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`LGEKR’s Interrogatory No. 3, LGEKR asked that AGIS identify all products or services sold,
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`offered for sale, demonstrated or used by AGIS that practice any asserted claim of the Patents-in-
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`1 Unless otherwise stated, exhibits are attached to the Declaration of Justin Chi, filed herewith.
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`-2-
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`

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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 6 of 16 PageID #: 9500
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`Suit. Ex. I, LGEKR’s Interrogatory No. 3 to AGIS at 8.
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`6.
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`In LGEKR’s Interrogatory No. 4, LGEKR asked that AGIS identify each product
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`“that has ever been marked with the patent numbers of the Patents-in-Suit, including the date
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`when such marking was first made . . . .” Ex. I, LGEKR’s Interrogatory No. 4 to AGIS at 9.
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`LGEKR also asked AGIS to identify documents and evidence of such marking. Id. AGIS
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`responded:
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` AGIS
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`identified no other documents or evidence of marking. AGIS also listed Eric Armstrong as
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`having “knowledge related to marking of AGIS, Inc. products with the Asserted Patents.” Ex. N,
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`AGIS’s Initial Disclosures at 18. The Court acknowledged AGIS’s representations regarding
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`Mr. Armstrong’s alleged possession of relevant evidence and importance as a “key witness” in
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`denying LGEKR’s motion to dismiss and/or to transfer. See Case No. 17-cv-513, D.I. 202,
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`Memorandum and Order, 16, 18.
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`-3-
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`

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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 7 of 16 PageID #: 9501
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`7.
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`8.
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`9.
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`Although AGIS, Inc. included patent numbers on its website, AGIS, Inc. first
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`marked its website with a notice that the LifeRing product may be covered by the patent numbers
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`of the location sharing patents after this lawsuit was commenced. See Ex. P, Affidavit of
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`Christopher Butler of the Internet Archive.
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`IV.
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`LEGAL STANDARDS
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`A.
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`Summary Judgment
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`Summary judgment is proper when there is no genuine issue as to any material fact and
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`the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). “A genuine issue of
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`material fact exists ‘if the evidence is such that a reasonable jury could return a verdict for the
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`non-moving party.’” Crawford v. Formosa Plastics Corp., La., 234 F.3d 899, 902 (5th Cir.
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`2000) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). A party moving for
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`2 LGEKR performed a source code review of AGIS, Inc.’s LifeRing application.
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`-4-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 8 of 16 PageID #: 9502
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`summary judgment can satisfy its initial burden of establishing its right to judgment by showing
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`that “there is an absence of evidence to support the nonmoving party’s case.” Celotex Corp. v.
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`Catrett, 477 U.S. 317, 323-25 (1986).
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`B.
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`AGIS’s Marking Obligations
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`Anyone who makes, uses, offers to sell, or sells patented products must “give notice to
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`the public” that the products are patented by marking them with the patent numbers. 35 U.S.C.
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`§ 287(a). The Federal Circuit has held that the purpose of the notice provision is “to give
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`patentees the proper incentive to mark their products and thus place the world on notice of the
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`existence of the patent.” Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir.
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`1993) (quoting Laitram Corp. v. Hewlett-Packard Co., 806 F. Supp. 1294, 1296 (E.D. La.
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`1992)). The Federal Circuit has also held that if a patented product is not marked, a plaintiff can
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`recover damages only for such periods after he gives the infringer notice of the alleged
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`infringement. Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001) (citing § 287(a))
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`(“When a patented article has been produced by a patentee or its licensee, the amount of
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`damages the patentee can recover in an infringement suit is statutorily limited to those acts of
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`infringement that occurred after the patentee gave the alleged infringer ‘notice of
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`infringement.’”).
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`Consistent with the foregoing, a patentee who sells a product practicing the asserted
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`patent pre-suit, but does not mark it, is barred from recovery for pre-suit infringement, unless he
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`shows that he gave the defendant actual notice of infringement. Am. Med. Sys., 6 F.3d at 1537.
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`“[O]nce marking has begun, it must be substantially consistent and continuous in order for the
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`party to avail itself of the constructive notice provisions of the statute.” Id. “The duty of
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`alleging, and the burden of proving, either actual notice or constructive notice is upon the
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`patentee.” Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996) (quoting Dunlap v.
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`-5-
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`

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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 9 of 16 PageID #: 9503
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`Schofield, 152 U.S. 244, 248 (1894)) (brackets omitted). Filing a complaint for patent
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`infringement constitutes notice. 35 U.S.C. § 287(a).
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`V.
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`ARGUMENT
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`AGIS is not entitled to pre-suit damages for the location sharing patents. AGIS is relying
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`upon the fact that AGIS, Inc. sells products that embody the location sharing patents. But
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`AGIS, Inc. did not begin complying with the marking requirements of 35 U.S.C. § 287(a) for
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`these patents until after this suit was filed. Furthermore, AGIS never provided LGEKR with pre-
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`suit notice of the alleged infringement. These facts are undisputed and AGIS cannot carry its
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`burden to show compliance with Section 287. See Arctic Cat Inc. v. Bombardier Recreational
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`Prods., Inc., 876 F.3d 1350, 1367 (Fed. Cir. 2017) (holding that the burden of showing
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`compliance remains at all times with patent holder). AGIS is thus limited to seeking damages
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`accruing after June 21, 2017, the date it filed this lawsuit and thereby first gave LGEKR notice
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`of the alleged infringement of the location sharing patents.
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`A.
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`AGIS, Inc. Sold LifeRing Products That Practice The Location Sharing
`Patents But Were Unmarked Before This Lawsuit Was Filed.
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`In this case, AGIS asserts that AGIS, Inc.’s LifeRing product practices the location
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`sharing patents. See Statement of Undisputed Material Facts (“SUMF”) ¶ 4, supra. AGIS, Inc.,
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`however, never marked the LifeRing product with the patent numbers of the location sharing
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`patents until after this lawsuit was filed. See SUMF ¶¶ 7-9, supra. In raising this deficiency,
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`LGEKR satisfies its initial burden of production. See Arctic Cat, 876 F.3d at 1368 (requiring an
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`alleged infringer who challenges the patentee’s compliance with § 287 to articulate the products
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`it believes are unmarked patented articles). To counter this showing, AGIS would “bear[] the
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`burden to prove the products identified do not practice the patented invention.” Id. But AGIS
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`cannot do so because it has affirmatively asserted that the LifeRing product practices the location
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`-6-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 10 of 16 PageID #: 9504
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`sharing patents. D.I. 1, ¶ 12;
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`; Ex. F at 4–6. Therefore, AGIS must show
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`compliance with Section 287. See Salazar v. HTC Corp., No. 2:16-CV-01096-JRG-RSP, 2018
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`WL 2041732, at *3 (E.D. Tex. May 1, 2018) (holding that where a patentee asserted in an
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`interrogatory response that products practiced the asserted claims, patentee bore the burden of
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`proving compliance with Section 287).
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`AGIS, however, cannot show compliance with Section 287.
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`. That webpage
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`presently states that “LifeRing applications, solutions, and software products” are covered by
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`patents licensed from AGIS and lists the location sharing patents. Ex. M. Relevant screenshots
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`of the AGIS, Inc. website first show such a notice appearing after this lawsuit was filed. Ex. P,
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`Butler Affidavit. Similarly,
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`Furthermore,
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`As discussed above, AGIS sold versions of the LifeRing
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`product after the respective issuances of the location sharing patents and before the filing of this
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`lawsuit. See SUMF ¶ 5, supra. However,
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`-7-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 11 of 16 PageID #: 9505
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` AGIS has therefore failed to provide any evidence of marking versions of the LifeRing
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`product that AGIS admits practice the location sharing patents and were sold after the issuances
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`of the location sharing patents. Therefore, AGIS cannot meet its burden of showing that the
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`software for the LifeRing product complied with the marking requirements of Section 287.
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`AGIS was fully aware that marking was an issue in this case. As discussed above,
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`LGEKR’s Interrogatory No. 4 served June 13, 2018 specifically requested information related to
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`the marking of products with the Patents-in-Suit. SUMF ¶ 6, supra. AGIS also listed Eric
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`Armstrong as having “knowledge related to marking of AGIS, Inc. products with the Asserted
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`Patents.” Ex. N, AGIS’s Initial Disclosures, 18. The Court acknowledged AGIS’s
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`representations regarding Mr. Armstrong’s alleged possession of relevant evidence and
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`importance as a “key witness” in denying LGEKR’s motion to dismiss and/or to transfer.3 See
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`Case No. 17-cv-513, D.I. 202, Memorandum and Order, 16, 18. Given AGIS’s awareness of the
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`marking issue and representations regarding marking, AGIS should be bound by the disclosures
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`or lack thereof in the versions of source code for the LifeRing product AGIS made available for
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`review.
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`AGIS cannot show even attempted compliance with Section 287 with respect to the
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`location sharing patents. Neither AGIS nor the previous owner of the location sharing patents,
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`AGIS Holdings, Inc., attempted to enforce the protection of their patent rights by including a
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`marking provision
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`See SUMF ¶ 3, supra. AGIS’s
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`failure to require its licensees to mark any products practicing the location sharing patents is
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`further indicative of AGIS’s failure to comply with the marking requirements of Section 287.
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`3
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`.
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`-8-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 12 of 16 PageID #: 9506
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`In sum, AGIS, Inc. has offered the LifeRing product for sale, and AGIS asserts that this
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`product practices the location sharing patents. It is undisputed that AGIS, Inc. has not included
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`any notice of the location sharing patents in its documentation for the LifeRing product prior to
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`filing suit against LGEKR. There can, therefore, be no issue of fact that AGIS’s licensee did not
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`comply with the marking requirements of Section 287.
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`B.
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`AGIS Cannot Show Actual Pre-Suit Notice of Infringement of the Location
`Sharing Patents.
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`The pre-suit notice exception to the marking requirements of Section 287 requires that
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`the plaintiff give actual notice to the alleged infringer. Am. Med. Sys., 6 F.3d at 1537. This
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`requires “the affirmative communication of a specific charge of infringement by a specific
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`accused product or device.” Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187
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`(Fed. Cir. 1994). It is undisputed that LGEKR first became aware of AGIS’s infringement
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`allegations related to the location sharing patents when AGIS filed the Complaint in this action
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`on June 21, 2017. SUMF, ¶ 4 supra. It is also undisputed that, pre-suit, AGIS never informed
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`LGEKR that any of LGEKR’s devices infringed any of AGIS’s patents:
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`Given that AGIS did not give LGEKR actual notice of any claims of infringement prior to the
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`filing of this lawsuit, AGIS cannot establish the pre-suit notice exception to Section 287.
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`To the extent that AGIS suggests that
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`of section 287(a), notice must be of ‘the infringement,’ not merely notice of the patent’s
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`is of no effect. “For purposes
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`-9-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 13 of 16 PageID #: 9507
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`existence or ownership.” Amsted Indus., 24 F.3d at 187 (emphasis added). Further, it is
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`irrelevant “whether the defendant knew of the patent or knew of his own infringement” because
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`the “correct approach to determining notice under section 287 must focus on the action of the
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`patentee, not the knowledge or understanding of the infringer.” Id. (emphasis added). In
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`Amsted, the Federal Circuit concluded that an informational letter that notified the industry of the
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`plaintiff’s ownership of the asserted patent and advised companies not to infringe was not
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`sufficient notice under § 287; rather, the plaintiff first gave the defendant the required actual
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`notice with a later letter that specifically charged defendant with infringement and named an
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`infringing device. Id. AGIS has done even less here: it never sent any letter or notice to LGEKR
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`prior to the filing of this lawsuit. Accordingly, nothing
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` could satisfy AGIS’s burden to affirmatively give notice of LGEKR’s
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`alleged infringement of the location sharing patents. See Dunlap, 152 U.S. at 248 (“One of these
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`two things—marking the articles, or notice to the infringers—is made by the statute a
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`prerequisite to the patentee’s right to recover damages against them. Each is an affirmative fact,
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`and is something to be done by him.”).
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`In sum, there is no dispute of fact that, prior to this lawsuit being filed, AGIS (and AGIS,
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`Inc.) failed to mark the LifeRing product with the location sharing patents. Furthermore, AGIS
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`never gave LGEKR actual notice of the alleged infringement. Accordingly, AGIS is precluded
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`as a matter of law from recovering damages for any alleged pre-suit infringement of the location
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`sharing patents.
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`VI.
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`CONCLUSION
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`Based on the foregoing, LGEKR respectfully requests that the Court grant summary
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`judgment that AGIS may not recover damages for pre-suit infringement of the location sharing
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`patents.
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`-10-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 14 of 16 PageID #: 9508
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`Dated: January 25, 2019
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`Respectfully submitted,
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`By:
`
`/s/ Michael Berta
`J. Mark Mann (SBN: 12926150)
`G. Blake Thompson (SBN: 24042033)
`MANN TINDEL THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`Tel: (903) 657-8540
`mark@themannfirm.com
`blake@themannfirm.com
`
`Michael A. Berta
`ARNOLD & PORTER KAYE SCHOLER LLP
`Three Embarcadero Center, 10th Floor
`San Francisco, CA 94111-4024
`Tel: (415) 471-3277
`Michael.Berta@arnoldporter.com
`
`James S. Blackburn
`Nicholas H. Lee
`Justin J. Chi
`ARNOLD & PORTER KAYE SCHOLER LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4156
`James.Blackburn@arnoldporter.com
`Nicholas.Lee@arnoldporter.com
`Justin.Chi@arnoldporter.com
`
`Bonnie Phan
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306-3807
`Tel: (650) 319-4500
`Bonnie.Phan@arnoldporter.com
`
`Attorneys for Defendant LG Electronics Inc.
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`-11-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 15 of 16 PageID #: 9509
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
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`pursuant to paragraphs 26 and 27 of the Protective Order entered in this case.
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`/s/ Michael Berta
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`-12-
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`Case 2:17-cv-00514-JRG Document 133 Filed 01/29/19 Page 16 of 16 PageID #: 9510
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have
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`consented to electronic services are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on January 25, 2019.
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`/s/ Michael Berta
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`-13-
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