`Case 2:17-cv-00514-JRG Document 176-2 Filed 02/19/19 Page 1 of 4 PageID #: 15110
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`EXHIBIT B
`EXHIBIT B
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`Case 2:17-cv-00514-JRG Document 176-2 Filed 02/19/19 Page 2 of 4 PageID #: 15111
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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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`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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`Defendants.
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`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`Case No. 2:17-CV-0515-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`EXPERT REPORT OF SCOTT ANDREWS REGARDING INVALIDITY
`OF U.S. PATENT NOS. 8,213,970, 9,408,055, 9,445,251, AND 9,467,838
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`Case 2:17-cv-00514-JRG Document 176-2 Filed 02/19/19 Page 3 of 4 PageID #: 15112
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`which is hereby incorporated by reference and pending U.S. Patent Application Serial No.
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`11/308,648 [later issued as the ’724 patent]”). This same incomplete incorporation statement
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`appears in each link of the chain of applications until the ’838 patent. During prosecution,
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`AGIS pointed to the ’724 patent for written description support. This was permissible
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`because the ’724 patent was expressly incorporated into the ’838 patent’s application by
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`virtue of a new incorporation statement that AGIS added to the end of its recitation of the
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`priority chain. AGIS recognized this was new matter. See Prosecution History section
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`above. However, this is not enough to save the priority chain back to the original filing
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`date of the ’724 patent.
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`71. The only change to the statement was to replace the application number with the later issued
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`patent number of the ’724 patent.
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`The ’410 Application Does Not Incorporate The ’724 Patent
`b.
`72. I understand that material is incorporated by reference if the incorporating document
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`identifies with detailed particularity what specific material it incorporates and clearly
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`indicates where that material is found in the various documents identified to a person of
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`ordinary skill in the art.
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`73. In my opinion, the ’410 application (the immediate parent of the ’838 patent) did not
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`incorporate the ’724 patent in its entirety by reference.
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`74. Unlike the ’838 patent, which incorporates its entire priority chain (’838 patent 1:8-25),
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`the ’410 application contains just one incorporation statement. That statement purports to
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`incorporate material only from the ’728 patent, not the ’724 patent:
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`The method and operation of communication devices used herein are
`described in U.S. Pat. No. 7,031,728 which is hereby incorporated by
`reference and U.S. Pat. No. 7,630,724. 410 application ¶ 5.
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`45
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`Case 2:17-cv-00514-JRG Document 176-2 Filed 02/19/19 Page 4 of 4 PageID #: 15113
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`75. A POSITA would have understood that the above phrase, “which is hereby incorporated by
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`reference,” refers only to the immediately preceding the ’728 patent. A clause beginning with
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`“which” refers only to the item coming before it, and the verb “is” is singular, meaning that
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`the “which” clause refers only to the one preceding patent.
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`76. In my opinion, AGIS cannot rely on the ’724 patent for support in the ’410 application.
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`c.
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`The ’838 Patent Claims Lack Written Description Support
`in the ’410 Application
`77. The ’838 patent claims are not supported by its immediate parent the ’410 application.5 First,
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`the ’410 application lacks support for requesting and receiving second georeferenced map
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`data from a server and displaying it with a second set of symbols as required by all claims. In
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`fact, the ’410 application includes only one reference to a georeferenced map, which merely
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`states that it is displayed. ’410. The Examiner did not address these issues during
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`prosecution. The issued claims arose from an entirely new claim-set entered in an
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`amendment that was followed almost immediately by a Notice of Allowance. ’838 FH 7-15,
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`50-79. The Examiner rejected pending claims for lack of support under § 112, but AGIS
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`overcame the rejections by pointing to the ’724 patent—which was incorporated by
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`reference into the ’838 patent’s application, but not its parent, the ’410 application. ’838 FH
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`307-309. application ¶ 40. There is no disclosure of where the georeferenced map originates,
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`let alone requesting and receiving second georeferenced map data from a server. Second, the
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`’410 application fails to provide written description support for the full scope of the
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`generically recited “network corresponding to a group” feature in all claims. In particular,
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`although the claims generically recite this feature, and there is no disclosure of closed groups
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`in the ’410 application.
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`46
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