Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 1 of 11 PageID #: 15098
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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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`Plaintiff,
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`v.
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`HTC CORPORATION,
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`Defendant.
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`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`§
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`§
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`Case No. 2:17-CV-0515-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`LG ELECTRONICS INC.,
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`Defendant.
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`§
`§
`§
`§
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE
`IN OPPOSITION TO LG ELECTRONICS INC.’S MOTION
`FOR SUMMARY JUDGMENT THAT U.S. PATENT NO. 7,630,724 MAY NOT
`BE RELIED UPON TO SHOW THAT U.S. APPLICATION NO. 14/027,410
`PROVIDES WRITTEN DESCRIPTION SUPPORT FOR
`U.S. PATENT NOS. 9,408,055; 9,445,251; AND 9,467,838 (DKT. 106)
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 2 of 11 PageID #: 15099
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`Plaintiff AGIS Software Development LLC (“AGIS”) hereby submits its Response in
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`Opposition to LG Electronics Inc.’s (“LG”) Motion for Summary Judgment that U.S. Patent No.
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`7,630,724 may not be relied upon to show that U.S. Application No. 14/027,410 provides written
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`description support for U.S. Patent Nos. 9,408,055; 9,445,251; and 9,467,838 (Dkt. 106).
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`I.
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`INTRODUCTION
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`U.S. Patent Application No. 14/027,410 (the “’410 application”) properly incorporates by
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`reference U.S. Patent No. 7,630,724 (the “’724 patent”). LG alleges that the ’410 application to
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`which U.S. Patent Nos. 9,408,055 (the “’055 patent”); 9,445,251 (the “’251 patent”); and
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`9,467,838 (the “’838 patent”) claim priority failed to incorporate the ’724 patent by reference.
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`II.
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`RESPONSE TO STATEMENT OF ISSUES
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`1.
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`Whether U.S. Patent No. 7,630,724 may be relied upon to show that U.S.
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`Application No. 14/027,410 provides written description support for the asserted claims of U.S.
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`Patent Nos. 9,408,055; 9,445,251; and 9,467,838 where U.S. Application No. 14/027,410 fails to
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`incorporate U.S. Patent No. 7,630,724 by reference.
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`Response: LG has failed to show that the ’724 patent cannot be relied upon to show the
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`’410 application provides written description support for the ’055, ’251, and ’838 patents
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`because LG has not shown that the incorporation statement in the ’410 application does not
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`expressly and unambiguously incorporate the ’724 patent.
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`III. RESPONSE TO STATEMENT OF UNDISPUTED MATERIAL FACTS
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`LG has failed to present a Statement of Undisputed Material Facts as required by Local
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`Rule CV-56(a) because the statements contain disputed facts and are argumentative under Local
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`Rule CV-56(d). AGIS presents the following responses to the allegations in the Statement of
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`Undisputed Material Facts.
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 3 of 11 PageID #: 15100
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`1.
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`Response: Undisputed that AGIS asserts infringement of the ’055 patent, the ’251
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`patent, and the ’838 patent (collectively, the “location sharing patents”) against LG.
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`2.
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`Response: Undisputed that the location sharing patents claim priority to the ’410
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`application.
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`3.
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`Response: Undisputed that the location sharing patents claim priority to the ’724
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`patent and U.S. Patent No. 7,031,728 (the “’728 patent”).
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`4.
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`Response: Undisputed that the ’410 application includes an incorporation-by-
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`reference section that lists the ’724 patent. AGIS disputes that the ’724 patent is only mentioned
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`in a single instance in the ’410 application. The ’724 patent is first identified as pertaining to
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`related subject matter in the first paragraph of the specification of the ’410 application. Dkt. 106-
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`6 at [0001]. The ’724 patent is identified for a second time for the purpose of incorporation by
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`reference. Dkt. 106-6 at [0005].
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`5.
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`Response: AGIS disputes that the Patent Office has held the ’410 application did
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`not incorporate by reference the ’724 patent. AGIS states that the Patent Office denied
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`institution of inter partes review on other grounds and AGIS did not take any position regarding
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`the priority statement alleged in those proceedings. Any statements made by the PTAB in
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`institution decisions were preliminary, non-precedential, and not based on a full record.
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`IV. COUNTER-STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`The ’410 application contains two references to the ’724 patent: (1) in the
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`statement of Cross References to Related Applications; and (2) in the incorporation by reference
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`statement. Dkt. 106-6 at [0001]; [0005].
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`2
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 4 of 11 PageID #: 15101
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`V.
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`LEGAL STANDARD
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`A.
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`Summary Judgment
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`Summary judgment is proper if the pleadings, depositions, answers to interrogatories, and
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`admissions on file, together with the affidavits, if any, show that there is no genuine issue as to
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`any material fact and that the moving party is entitled to judgment as a matter of law. Baker v.
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`Putnal, 75 F.3d 190, 198 (5th Cir. 1996). In considering a summary judgment motion, the court
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`must “view the evidence in the light most favorable to the non-moving party.” United States v.
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`Renda Marine, Inc., 667 F.3d 651, 655 (5th Cir. 2012).
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`B.
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`Incorporation by Reference
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`Incorporation by reference requires (1) clear intend to incorporate by reference using the
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`root words “incorporat(e)” and “reference”; and (2) clear identification of the referenced patent,
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`application, or publication. 37 C.F.R. § 1.57(b) (2004). “[T]o gain the benefit of the filing date
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`of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the
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`earlier application must comply with the written description requirement of 35 U.S.C. § 112.”
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`Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (quoting Lockwood
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`v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)).
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`“Whether and to what extent a patent incorporates material by reference is a question of
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`law we review de novo.” Harari v. Hollmer, 602 F.3d 1348, 1351 (Fed. Cir. 2010). The
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`standard to be applied in determining whether a document describes the material to be
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`incorporated by reference with sufficient particularity is of one reasonably skilled in the art.
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`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000).
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`VI. ARGUMENT
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`The ’410 application properly incorporates by reference both the ’728 patent and the ’724
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`patent. LG alleges that the language used by the patentee was insufficient to incorporate by
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 5 of 11 PageID #: 15102
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`reference the ’724 patent. Incorporation by reference requires a (1) clear intent to incorporate by
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`reference, using, for example, “incorporated by reference,” and (2) a clear identification of the
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`referenced patent application or publication. 37 C.F.R. § 1.57(b). In the ’410 application, the
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`applicant explicitly uses the words “incorporated by reference.” Further, both the ’728 and ’724
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`patents are clearly identified in the ’410 application, in both the Cross Reference to Related
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`Applications and the incorporation by reference statement. LG fails to acknowledge the
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`identification of the ’728 and ’724 patents in the Related Applications statement. If the
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`incorporation by reference statement were merely another identification of the related
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`applications, the incorporation statement would be rendered superfluous. Thus, because LG’s
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`interpretation of the specification would render portions superfluous, it should not be credited.
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`In Callaway Golf Co. v. Acushnet Co., the court held that Nesbitt, the alleged prior art
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`reference, identifies “what specific material is being incorporated by reference . . . and where it
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`may be found.” 576 F.3d 1331, 1346 (Fed. Cir. 2009). The court also held that language “nearly
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`identical to that used in Nesbitt (‘[r]eference is made to’) can be sufficient to indicate to one of
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`skill in the art that the referenced material is fully incorporated into the host document.” Id. The
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`incorporation statement here is more explicit than that of Nesbitt and sufficiently identifies the
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`specific material incorporated by reference (the method and operation of communication
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`devices), and where it may be found (the ’728 and ’724 patents). Id.; see also Husky Injection
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`Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236, 1248 (Fed. Cir. 2016) (the sentence
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`“[a]ll cross-referenced patents and application[s] referred to in this specification are hereby
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`incorporated by reference” in concert with the sentence describing the portions of the patent that
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`are incorporated by reference was sufficient to demonstrate incorporation by reference to a
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`skilled artisan); Cf. Hollmer v. Harari, 681 F.3d 1351, 1358 (Fed. Cir. 2012) (where the court
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 6 of 11 PageID #: 15103
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`held that a co-pending patent application identified by the title and inventors did not sufficiently
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`identify the material being incorporated by reference because at least two other applications by
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`the same inventors and with the same title were co-pending).
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`Incorporation by reference arises from general principles of contract law, where “a
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`contract may incorporate another document by making clear reference to it and describing it in
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`such terms that its identity may be ascertained beyond doubt.” Northrop Grumman Info. Tech.
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`Inc. v. U.S., 78 Fed. Cl. 45, 48 (Fed. Cl. 2007). In contract law, “[a] contract is not necessarily
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`ambiguous merely because some sections arguably conflict.” Tier Reit Inc. v. Uvest Fin. Servs.
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`Grp. Inc., No. 3:15-cv-03831, 2016 WL 4039163, at *5 (N.D. Tex. July 28, 2016) (citing NuStar
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`Energy L.P. v. Diamond Offshore Co., 402 S.W. 3d 461, 466 (Tex. App.—Houston [14th Dist.]
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`2013, no pet.)). Further, if the contract contains an alleged ambiguity, “summary judgment is
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`improper ‘because the interpretation of the instrument becomes a fact issue.’” Cruson v. Jackson
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`Nat’l Life Ins. Co., No. 4:16-cv-00912, 2018 WL 3752853, at *6 (E.D. Tex. Aug. 8, 2018).
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`LG argues that the Patent Trial and Appeal Board (the “PTAB”) has agreed the ’410
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`application does not incorporate by reference the ’724 patent during inter partes review
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`proceedings. However, LG cites to non-precedential decisions of the PTAB denying institution
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`of inter partes review. This court has stated with regards to the admissibility of related inter
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`partes review proceedings, “the danger of undue prejudice is extremely high, and that danger of
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`undue prejudice cannot be mitigated simply by the use of a limiting instruction.” Personalized
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`Media Commc’ns, LLC v. Zynga, Inc., No. 2:12-cv-00068, Dkt. 232 at 2 (E.D. Tex. Nov. 8,
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`2013). Further, a preliminary response to an inter partes petition is limited to providing the
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`reasons why a review should not be instituted. 37 C.F.R. § 42.107(a) (“In response to an inter
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 7 of 11 PageID #: 15104
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`partes petition, “[a] patent owner may file a preliminary response to the petition . . . limited to
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`setting forth the reasons why no inter partes review should be instituted.”).
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`Further, a person of ordinary skill in the art would read the specification as a whole and
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`would understand that the ’724 patent is incorporated by reference.
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` see Apple, Inc. v. Samsung Elecs. Co. Ltd., No. 5:12-cv-
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`00630-LHK, 2014 WL 252045, at *23 (N.D. Cal. Jan. 21, 2014) (“[E]xpert testimony may in
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`some circumstances help a court determine whether a host document incorporates another
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`document by reference.”).
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` LG and Mr. Andrews, however, appear to have read the
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`incorporation statement in isolation and not in the context of the specification as a whole as
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`required by the case law. See Ex. B, Expert Report of Scott Andrews at ¶¶ 72-75. As a result,
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`any factual disputes should be resolved in the non-movant’s favor. LG has failed to establish
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`that there are no material facts in dispute with regard to whether the ’410 application
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`incorporates by reference the ’724 patent, and therefore cannot be permitted to preclude AGIS
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`from relying on the ’724 patent to provide written description support for the location sharing
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`patents in the context of the ’410 application. As a result, this issue is not proper for summary
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`judgment.
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 8 of 11 PageID #: 15105
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`VII. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court deny summary
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`judgment that the ’410 application does not incorporate the ’724 patent by reference.
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`Dated: February 15, 2019
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`BROWN RUDNICK LLP
`
`
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 9 of 11 PageID #: 15106
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`Samuel F. Baxter
`Texas State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
`
`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 10 of 11 PageID #: 15107
`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 10 of 11 PageID #: 15107
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`——
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`Case 2:17-cv-00514-JRG Document 176 Filed 02/19/19 Page 11 of 11 PageID #: 15108
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on February 15, 2019, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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