`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 1 of 8 PageID #: 9790
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`EXHIBIT K
`EXHIBIT K
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 2 of 8 PageID #: 9791
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT, LLC
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`
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`Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC., HUAWEI
`DEVICE CO., LTD. AND HUAWEI DEVICE
`(DONGGUAN) CO., LTD.
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`Defendants.
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`LEAD CASE NO. 2:17-cv-513-JRG
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT, LLC
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`Plaintiff,
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`v.
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`LG ELECTRONICS, INC.
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`Defendant.
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`MEMBER CASE NO. 2:17-cv-515-JRG
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`JURY TRIAL DEMANDED
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`DEFENDANT LG ELECTRONIC INC.’S SUPPLEMENTAL INITIAL DISCLOSURES
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`Pursuant to Rule 26(a)(1) of the Federal Rules of Civil Procedure Defendant LG
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`Electronics, Inc., by and through their undersigned counsel, hereby make the following
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`supplemental initial disclosures to Plaintiff AGIS Software Development, LLC (“AGIS”):
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`A.
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`The Correct Names Of The Parties To The Lawsuit
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`Based upon the information reasonably available to LG at the present time, the following
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`list contains the correct names of the current parties to this lawsuit:
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`AGIS Software Development, LLC
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`LG Electronics, Inc.
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 3 of 8 PageID #: 9792
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`B.
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`The Name, Address, And Telephone Number Of Any Potential Parties
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`Based upon the information reasonably available to LG at the present time, LG is unaware
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`of any other persons or entities that should be named as potential parties to this lawsuit. LG
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`reserves the right to supplement this disclosure as the case and discovery proceed.
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`C.
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`The Legal Theories And, In General, The Factual Bases Of LG’s Claims Or Defenses
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`Below are preliminary summaries of the legal theories and factual bases for LG’s defenses.
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`These preliminary summaries should not be construed as final disclosures, as LG will address its
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`non-infringement and invalidity defenses, and other affirmative defenses, in the time provided by
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`a Docket Control Order, once entered by the Court, and as permitted under the Federal Rules of
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`Civil Procedure, the Local Rules, and the Patent Local Rules. In addition, because discovery is
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`ongoing, many of the required disclosures in the case have yet to occur, claim construction has yet
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`to occur, and the subject matter of these preliminary summaries is properly the subject of expert
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`opinion, it would be premature to set forth in detail the legal theories and factual bases for LG’s
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`defenses and counterclaims. LG reserves the right to update these legal theories and factual bases
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`as new information becomes available.
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`Based on the present state of the record and the discovery to date, LG asserts at least the
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`following defenses:
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`1.
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`LG is not subject to personal jurisdiction in the Eastern District of Texas and, in the
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`alternative, this action should be transferred to the Northern District of California
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`pursuant to 28 U.S.C. § 1404(a).
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`2.
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`LG has not infringed and does not infringe any valid and enforceable claim of U.S.
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`Patent Nos. 8,213,970 (the “’970 Patent”), 9,408,055 (the “’055 Patent”), 9,445,251
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`(the “’251 Patent”), and 9,467,838 (the “’838 Patent”) (collectively, “Asserted
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`Patents”) under any theory of infringement.
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`2
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 4 of 8 PageID #: 9793
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`3.
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`Each asserted claim of the Asserted Patents is invalid because the alleged
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`invention(s) therein fail to satisfy the conditions for patentability specified in one
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`or more of 35 U.S.C. §§ 101, 102, 103, 112, and/or 113.
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`4.
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`By reason of the prior art and/or statements and representations made to the U.S.
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`Patent and Trademark Office during prosecution of the application(s) that led to the
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`issuance of the Asserted Patent, the claims are so limited that they cannot properly
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`be construed as covering any activity or product of LG.
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`5.
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`AGIS’s claims for relief are barred or limited in whole or in part by equitable
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`defenses, including laches, waiver, estoppel, and/or unclean hands.
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`6.
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`AGIS’s claim for injunctive relief is barred because there exists an adequate remedy
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`at law for AGIS’s allegations, and AGIS’s claims otherwise fail to meet the
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`requirements for such relief.
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`7.
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`AGIS is not entitled to a finding that this case is exceptional or to attorneys’ fees
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`under 35 U.S.C. § 285, or pursuant to the Court’s inherent power.
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`LG reserves the right to supplement this disclosure and add more claims and defenses as
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`the case and discovery proceed.
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`D.
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`The Name, Address, And Telephone Number Of Persons Having Knowledge Of
`Relevant Facts, A Brief Statement Of Each Identified Person’s Connection With The
`Case, And A Brief, Fair Summary Of The Substance Of The Information Known By
`Any Such Person
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`The persons identified by LG as persons likely to have knowledge of relevant facts based
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`on the present state of the record and the discovery to date:
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`Name, Location, and
`Contact Information
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`Title
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`Summary of Relevant Facts
`Likely to be Known
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`3
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 5 of 8 PageID #: 9794
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`LG Electronics
`MobileComm U.S.A., Inc.
`(“LGEMU”)
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`
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`Cecilia Son
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`Director, Partner
`Engineering, LG
`Electronics Mobile
`Research U.S.A., Inc.
`(“LGEMR”)
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`Jaehong Pak
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`Chief Research Engineer,
`LG Electronics, Inc.
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`Malcolm K. Beyer Jr.
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`Unknown
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`Christopher R. Rice
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`Unknown
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`Google LLC
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`N/A
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`Witnesses identified in
`AGIS’s initial disclosures
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`N/A
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`Witnesses from LGEMU have
`knowledge regarding the
`importation, testing, quality
`management, marketing, and sales
`of the accused LG devices in the
`United States.
`Ms. Son and her team have
`knowledge regarding Android OS
`certification for the accused LG
`devices, and communications
`with Google LLC regarding that
`certification.
`Has knowledge regarding the
`installation of the accused Google
`applications on the accused LG
`devices.
`May have knowledge related at
`least to the claimed invention,
`inventorship, and assignment of
`the Asserted Patents and to AGIS
`and its predecessor entities.
`May have knowledge related at
`least to the claimed invention,
`inventorship, and assignment of
`the Asserted Patents.
`Witnesses from Google LLC who
`may have knowledge related to
`the functionality implicated in the
`accused applications
`Witnesses identified in AGIS’s
`initial disclosures as related to
`subjects on which they have been
`identified
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`LG expressly reserves the right to supplement, limit, or otherwise amend the above list,
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`particularly as the case is in its infancy and discovery has yet to commence.
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`E.
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`Any Indemnity And Insuring Agreements Under Which Any Person Or Entity
`Carrying On An Insurance Business May Be Liable To Satisfy Part Or All Of A
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`4
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 6 of 8 PageID #: 9795
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`Judgment Entered In This Action Or To Indemnify Or Reimburse For Payments
`Made To Satisfy The Judgment
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`LG is currently still investigating whether there exists any indemnity or insurance
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`agreement under which any person or entity carrying on an insurance business may be liable to
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`satisfy part or all of any judgment which may be entered in this action against LG or to indemnify
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`or reimburse LG for payments made to satisfy any judgment, and will supplement these disclosures
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`once the full scope of its investigation is complete.
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`F.
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`Any Settlement Agreements Relevant To The Subject Matter Of This Action
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`Based upon the information reasonably available to LG at the present time, LG is not
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`currently aware of any settlement agreements relevant to the subject matter of this action.
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`G.
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`Any Statement Of Any Party To The Litigation
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`Based upon the information reasonably available to LG at the present time, the current
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`record, and discovery to date, LG is not aware of any specific statements of any party to this
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`litigation.
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`LG reserves the right to supplement these disclosures in accordance with applicable federal
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`and local rules of procedures or court order, during the course of discovery, and upon further
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`investigation, as additional information becomes known or available.
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`Dated: January 17, 2018
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`Respectfully submitted by:
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`
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`
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`/s/ J. Mark Mann
`J. Mark Mann
`SBN: 12926150
`mark@themannfirm.com
`G. Blake Thompson
`SBN: 24042033
`blake@themannfirm.com
`MANN TINDEL THOMPSON
`300 West Main Street
`Henderson, Texas 75652
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`5
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 7 of 8 PageID #: 9796
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`Tel: 903-657-8540
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`Michael A. Berta
`Michael.berta@apks.com
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`Three Embarcadero Center
`10th Floor
`San Francisco, CA 94111-4024
`Tel: 415-471-3000
`
`James S. Blackburn
`James.blackburn@apks.com
`Nicholas H. Lee
`Nicholas.lee@apks.com
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`777 South Figueroa Street
`44th Floor
`Los Angeles, CA 90017-5844
`Tel: 213-243-4000
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`ATTORNEYS FOR DEFENDANT LG
`ELECTRONICS, INC.
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`6
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`Case 2:17-cv-00514-JRG Document 137-12 Filed 01/29/19 Page 8 of 8 PageID #: 9797
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via electronic mail
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`on January 17, 2018.
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`/s/ J. Mark Mann
`J. Mark Mann
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`7
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