Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 1 of 10 PageID #: 14490
`Case 2:17-cv-00514—JRG Document 162-14 Filed 02/13/19 Page 1 of 10 PageID #: 14490
`
`
` EXHIBIT 13
`EXHIBIT 13
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 2 of 10 PageID #: 14491
`
`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.
`
`LEAD CASE NO. 2:17-cv-513-JRG
`
`JURY TRIAL DEMANDED
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`MEMBER CASE NO. 2:17-cv-515-JRG
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC.
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS HUAWEI DEVICE USA INC., HUAWEI DEVICE CO., LTD., HUAWEI
`DEVICE (DONGGUAN) CO., LTD., AND LG ELECTRONICS, INC.’S INVALIDITY
`CONTENTIONS PURSUANT TO PATENT LOCAL RULE 3-3
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 3 of 10 PageID #: 14492
`
`date to which each asserted claim allegedly is entitled” – not a start date, end date, or date range.
`
`Accordingly, AGIS can only assert – and is understood to only have asserted – a priority of date
`
`of September 21, 2004 for the patents-in-suit. That being said, none of the asserted claims are
`
`entitled to a priority date of September 21, 2004.
`
`First, according to the AGIS’s own representations to the U.S. Patent and Trademark
`
`Office during prosecution, three of the four patents-in-suit, i.e., the ’055, ’251, and ’838 patents,
`
`contain or claim priority to at least one patent application – U.S. Application No. 14/579,978
`
`(the “’978 application”), the application for the ’838 patent – that includes or at one time
`
`included at least one claim having an effective filing date after March 16, 2013. (See ’978
`
`application Reply to Office Action dated April 25, 2016 at 15-16 (“Applicant respectfully notes
`
`that the Corrected Application Data Sheet filed on October 30, 2015, indicates that the
`
`‘application . . . contains, or contained at any time, a claim to a claimed invention that has an
`
`effective filing date on or after March 16, 2013.’”).) Thus, under AGIS’s representations, each
`
`of the ’055, ’251, and ’838 patents is governed by post-AIA 35 U.S.C. §§ 102 and 103, and
`
`therefore AGIS cannot establish a priority date earlier than the effective filing date based on
`
`alleged earlier conception or reduction to practice for any of those patents. See Leahy-Smith
`
`America Invents Act of 2011, Pub. L. No. 11229, § 3(n)(1), 125 Stat. 284, 293 (Sept. 16, 2011).
`
`Second, the ’055, ’251, and ’838 patents are not entitled to a priority date any earlier than
`Second, the ’055, ’251, and ’838 patents are not entitled to a priority date any earlier than
`
`October 31, 2014, the effective filing date of the ’978 application that led to the ’838 patent.
`October 31, 2014, the effective filing date of the ’978 application that led to the ’838 patent.
`
`AGIS cannot claim priority to any earlier applications in the patent family because the teachings
`AGIS cannot claim priority to any earlier applications in the patent family because the teachings
`
`of most of the earlier applications in the patent family—including at least U.S. Application Nos.
`of most of the earlier applications in the patent family—including at least U.S. Application Nos.
`
`13/751,453 (now U.S. Patent No. 8,538,393), 12/761,533 (now U.S. Patent No. 8,364,129),
`13/751,453 (now U.S. Patent No. 8,538,393), 12/761,533 (now U.S. Patent No. 8,364,129),
`
`11/615,472 (now U.S. Patent No. 8,126,441), and 11/308,648 (now U.S. Patent No. 7,630,724)
`11/615,472 (now U.S. Patent No. 8,126,441), and 11/308,648 (now U.S. Patent No. 7,630,724)
`
`7
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 4 of 10 PageID #: 14493
`
`— were not incorporated by reference into U.S. Application No. 14,027,410, now U.S. Patent
`— were not incorporated by reference into U.S. Application No. 14,027,410, now U.S. Patent
`
`No. 8,880,042 (the immediate parent of the '978 application (leading to the ’838 patent)). The
`No. 8,880,042 (the immediate parent of the '978 application (leading to the ’838 patent)). The
`
`chain of applications (including continuation applications and continuations-in-part) upon which
`chain of applications (including continuation applications and continuations-in-part) upon which
`
`AGIS purportedly relies to establish an earlier priority date therefore lacks continuity of
`AGIS purportedly relies to establish an earlier priority date therefore lacks continuity of
`
`disclosure, a defect that cannot be cured. 35 U.S.C. § 120; Zenon Environmental, Inc. v. U.S.
`disclosure, a defect that cannot be cured. 35 U.S.C. § 120; Zenon Environmental, Inc. v. U.S.
`
`Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007). Defendants reserve the right to assert additional
`Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007). Defendants reserve the right to assert additional
`
`theories of invalidity based on the determination of the proper priority date, including a
`theories of invalidity based on the determination of the proper priority date, including a
`
`contention that earlier applications in the patent family constitute invalidating prior art to the
`contention that earlier applications in the patent family constitute invalidating prior art to the
`
`asserted claims of the patents-in-suit.
`asserted claims of the patents-in-suit.
`
`Third, as set forth below, the application on which AGIS appears to rely to establish a
`
`priority date of September 21, 2004 (U.S. Application No. 10/711,490, filed on Sep. 21, 2004,
`
`now U.S. Patent No. 7,031,728) does not contain sufficient disclosure of at least one limitation of
`
`every asserted claim in each patent-in-suit and, accordingly, none of the asserted claims is
`
`entitled to the benefit of the September 21, 2004, filing date for that additional reason.
`
`1.
`
`’970 patent
`
`None of the asserted claims of the ’970 patent are entitled to a priority date of (or earlier
`
`than) September 21, 2004, as AGIS alleges, because at least the claim limitations listed below
`
`are not sufficiently disclosed in U.S. Application No. 10/711,490 (now U.S. Patent No.
`
`7,031,728). Nor do any of the intervening parent applications (e.g., U.S. Application No.
`
`11/612,830 and U.S. Application No. 11/308,648, now U.S. Patent No. 7,630,724) through
`
`which the ’970 claims priority as a continuation-in-part sufficiently disclose at least one such
`
`limitation in each of the claims listed below. To the extent that AGIS is permitted to modify, and
`
`in fact modifies in any manner, the alleged date to which the ’970 patent is entitled to priority,
`
`8
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 5 of 10 PageID #: 14494
`
`(cid:120)
`
`“wherein the message including the identifier corresponding to the group is a first message,
`and wherein the method further comprises performing by the first device: sending, to a
`particular second device via the first server, a second message related to remotely controlling
`the particular second device to perform an action, wherein the particular second device is
`configured to perform the action based on receiving the second message.”
`
`Claim 47:
`
`(cid:120)
`
`“wherein the information associated with the facility comprises a uniform resource locator
`(URL) of a web site associated with the facility.”
`
`Claim 48:
`
`(cid:120)
`
`“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:
`
`(cid:120)
`
`“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.
`
`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
`
`June 10, 2008
`
`June 27, 2001
`
`Tanumihardja et
`al.
`
`18
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 6 of 10 PageID #: 14495
`
`A-5
`
`A-9
`
`A-8
`
`7,386,589
`
`U.S. Patent No.
`6,816,878
`
`U.S. Patent No.
`7,912,913
`
`U.S. Patent No.
`7,619,584
`
`Zimmers et al.
`
`Nov. 9, 2004
`
`Feb. 11, 2000
`
`Accapadi et al.
`
`Mar. 22, 2011
`
`Sept. 15, 2005
`
`Wolf
`
`Nov. 17, 2009
`
`Sept. 8, 2006
`
`A-10
`
`WO 2008/1188878
`
`Swanburg et al.
`
`Oct. 2, 2008
`
`Mar. 24, 2008
`
`C-1
`E-1
`G-1
`
`C-5
`E-5
`G-5
`C-5
`E-5
`G-5
`C-6
`E-6
`G-6
`C-4
`E-4
`G-4
`
`C-3
`E-3
`G-3
`C-2
`E-2
`G-2
`A-6
`A-7
`A-7
`
`A-7
`
`C-15
`E-15
`C-14
`C-15
`E-14
`
`U.S. Patent Application
`Publication No. US
`2007/0281690
`
`U.S. Patent No.
`6,867,733
`
`U.S. Patent No.
`7,271,742
`
`U.S. Patent No.
`7,450,003
`
`U.S. Patent Application
`Publication No. US
`2002/0115453
`
`U.S. Patent No.
`7,917,866
`
`U.S. Patent No.
`7,330,112
`
`U.S. Patent No.
`6,854,007
`U.S. Patent No.
`5,325,310
`U.S. Patent No.
`5,742,905
`U.S. Patent No.
`6,204,844
`U.S. Patent No.
`6,366,782
`
`Altman et al.
`
`Dec. 6, 2007
`
`June 1, 2006
`
`Sandhu et al.
`
`Mar. 15, 2005
`
`Apr. 9, 2001
`
`Sheha et al.
`
`Sept. 18, 2007
`
`Mar. 3, 2003
`
`Weber et al.
`
`Nov. 11, 2008
`
`Feb. 24, 2006
`
`Poulin et al.
`
`Aug. 22, 2002
`
`Feb. 15, 2002
`
`Karam
`
`Mar. 29, 2011
`
`Dec. 30, 2005
`
`Emigh et al.
`
`Feb. 12, 2008
`
`Sept. 9, 2004
`
`Hammond
`
`Feb. 8, 2005
`
`Sept. 17, 1998
`
`Johnson et al.
`
`June 28, 1994
`
`June 26, 1992
`
`Pepe et al.
`
`Fumarolo
`
`Apr. 21, 1998
`
`Sept. 19, 1994
`
`Mar. 20, 2001
`
`Oct. 8, 1999
`
`Fumarolo et al.
`
`Apr. 2, 2002
`
`Oct. 8, 1999
`
`19
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 7 of 10 PageID #: 14496
`
`E-15
`G-14
`G-15
`C-14
`E-14
`C-15
`E-15
`
`C-15
`E-15
`
`E-15
`G-15
`
`G-15
`
`G-15
`
`A-6
`
`C-7
`E-7
`G-7
`C-8
`E-8
`G-8
`
`C-9
`E-9
`G-9
`
`C-10
`E-10
`G-10
`C-11
`E-11
`G-11
`
`Haney
`
`Apr. 1, 2008
`
`Apr. 4, 2005
`
`Muramatsu
`
`Nov. 21, 2002
`
`May 14, 2002
`
`Liu et al.
`
`Mar. 7, 2002
`
`Sept. 4, 2001
`
`Sheha et al.
`
`Mar. 18, 2004
`
`Mar. 3, 2003
`
`Lazaridis et al.
`
`Aug. 12, 2004
`
`Oct. 31, 2003
`
`Van Bosch et al.
`
`Oct. 6, 2005
`
`Apr. 5, 2004
`
`Kubala et al.
`
`Sept. 28, 2006
`
`Mar. 24, 2005
`
`UCSD
`
`AGIS
`
`Bruninga
`
`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
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`U.S. Patent No.
`7,353,034
`U.S. Patent Application
`Publication No. US
`2002/0173906
`U.S. Patent Application
`Publication No. US
`2002/0027901
`U.S. Patent Application
`Publication No. US
`2004/0054428
`U.S. Patent Application
`Publication No. US
`2004/0157590
`U.S. Patent Application
`Publication No. US
`2005/0221876
`U.S. Patent Application
`Publication No. US
`2006/0218232
`The ActiveCampus
`system
`
`The AGIS’s LifeRing
`Product and its
`prototypes (the “AGIS
`system”)
`APRS Protocol
`Reference 1.0 (“APRS
`1.0”) and The
`Automatic
`Packet/Position
`Reporting System
`(“APRS System”)
`
`The APRS System
`made available to
`the public no later
`than September 21,
`2004
`made available to
`the public no later
`than June 24, 2002
`The BuddySpace system Open University made available to
`the public at least
`by June 2002 and
`
`The AT&T Find Friends
`system
`
`AT&T
`
`20
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 8 of 10 PageID #: 14497
`
`The Navizon system
`
`Navizon Inc.
`
`Force XXI Battle
`Command, Brigade And
`Below (“FBCB2”)
`
`U.S. Army
`
`Melen
`
`no later than
`September 21,
`2004
`made available to
`the public at least
`by October 2005,
`and no later than
`February 20, 2006
`made available to
`the public no later
`than March 21,
`2003
`March 15, 2005
`
`N/A
`
`N/A
`
`Jan. 15, 2003
`
`C-13
`E-13
`G-13
`
`C-12
`E-12
`G-12
`
`C-16
`E-16
`G-16
`C-17
`E-17
`G-17
`
`U.S. Patent No.
`6,868,333
`
`U.S. Patent No.
`6,292,747
`
`Amro et al.
`
`Sept. 18, 2001
`
`April 20, 2000
`
`In addition to the references identified above, the prior art references and systems
`
`identified below, and the “References Cited” on the face of the patents-in-suit, may render
`
`obvious alone or in combination with any other reference cited herein the asserted claims of the
`
`patents-in-suit, as set forth in exemplary fashion in Exhibits B, D, F, and H; provide background
`
`and context pertinent to the teachings, and interpretation of, the prior art referenced by the claim
`
`charts (Exhibits A-H); and may also be indicative of the relevant state of the art and/or the
`
`knowledge of one of ordinary skill in the art at the time of inventions of the patents-in-suit, such
`
`that it demonstrates, for example, the lack of invention between the asserted claims and the prior
`
`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
`
`21
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 9 of 10 PageID #: 14498
`
`US Patent Application
`Publication No. US
`2010/0125636
`EP1148754A2
`EP2348423A2
`U.S. Patent No.
`5,764,898
`U.S. Patent No.
`6,477,387
`U.S. Patent No.
`6,868,337
`U.S. Patent No.
`6,941,127
`U.S. Patent No.
`8,000,724
`US Patent Application
`Publication No. US
`2003/0100326
`US Patent Application
`Publication No. US
`2004/0266456
`US Patent Application
`Publication No. US
`2007/0200713
`US Patent Application
`Publication No. US
`2005/0265256
`US Patent Application
`Publication No. US
`2006/0030339
`WO 0217567
`WO 03071825
`US Patent Application
`Publication No. US
`2003/0149527
`U.S. Patent No.
`7,292,935
`US Patent Application
`Publication No. US
`2004/0192299
`U.S. Patent No.
`7,031,700
`
`Kuhlke et al.
`
`May 20, 2010
`
`Nov. 18, 2008
`
`Hoisko
`Hermele
`Tsuji et al.
`
`Jackson et al.
`
`Muramatsu
`
`Muramatsu
`
`Rayburn
`
`Grube et al.
`
`Oct. 24, 2001
`July 27, 2011
`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
`
`Aug. 16, 2011
`
`Oct. 7, 2002
`
`Mar. 29, 2003
`
`Nov. 27, 2001
`
`Bostrom et al.
`
`Dec. 30, 2004
`
`June 30, 2003
`
`Weber et al.
`
`Aug. 30, 2007
`
`Feb. 24, 2006
`
`Delaney
`
`Dec. 1, 2005
`
`Sept. 17, 2004
`
`Zhovnirovsky
`
`Feb. 9, 2006
`
`Aug. 3, 2005
`
`Spaargaren
`Spaargaren
`Sikila
`
`Feb. 28, 2002
`Aug. 28, 2003
`Aug. 7, 2003
`
`Aug. 28, 2001
`Feb. 25, 2002
`Feb. 8, 2001
`
`Yoon
`
`Nov. 6, 2007
`
`Feb. 11, 2004
`
`Wilson et al.
`
`Sept. 30, 2004
`
`Dec. 20, 2002
`
`Weaver et al.
`
`Apr. 18, 2006
`
`Nov. 9, 2003
`
`
`
`In addition, Defendants intend to rely on all prior art references disclosed, listed and/or 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 asserted as prior art to the patents-in-suit (or any patent related to the patents-in-suit) by any
`
`24
`
`

`

`Case 2:17-cv-00514-JRG Document 162-14 Filed 02/13/19 Page 10 of 10 PageID #: 14499
`
`entity during the course of any other litigation (past, present/ongoing, or future) and/or any re-
`entity during the course of any other litigation (past, present/ongoing, or future) and/or any re-
`
`examinations, inter partes review petitions, or other proceeding before the U.S. Patent &
`examinations, inter partes review petitions, or other proceeding before the U.S. Patent &
`
`Trademark Office (past, present/ongoing, or future).
`Trademark Office (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
`
` Defendants intend to rely on any additional
`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-
`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.
`suit, in this action or any other litigation. Defendants also intend to rely on references identified
`
`in the file histories of the patents-in-suit, any related applications thereto, or related patents.
`
`The asserted patents are invalid because the patents-in-suit fail to meet one or more of the
`
`requirements for patentability under 35 U.S.C. §§ 102 and/or 103. The individual bases for
`
`invalidity, including whether and how each item of prior art anticipates the asserted claim or
`
`renders it obvious, are provided herein and in the charts attached herewith as Exhibits. Each of
`
`the foregoing listed prior art documents, the underlying work, and/or the underlying apparatus or
`
`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
`
`25
`
`