Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 1 of 9 PageID #: 18159
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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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`§
`§
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`§
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`§
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`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE IN OPPOSITION TO
`HTC CORPORATION’S SEALED MOTION FOR SUMMARY JUDGMENT
`OF NO PRE-SUIT INDIRECT INFRINGEMENT (DKT. 109)
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`

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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 2 of 9 PageID #: 18160
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`Plaintiff AGIS Software Development LLC (“AGIS”) respectfully submits this Response
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`in Opposition to HTC Corporation’s (“HTC” or “Defendant”) Sealed Motion for Summary
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`Judgment of No Pre-Suit Indirect Infringement (Dkt. 109).
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`I.
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`INTRODUCTION
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`AGIS does not intend to assert at trial pre-suit indirect infringement. Because there is no
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`case or controversy regarding these issues, HTC’s motion should be denied.
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`II.
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`STATEMENT OF ISSUES TO BE DECIDED
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`1. Whether HTC can be liable for pre-suit indirect infringement as a matter of law when
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`it had no pre-suit knowledge of the asserted patents.
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`Response: Whether HTC is entitled to judgment as a matter of law that it is not liable for
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`pre-suit indirect infringement as a matter of law when AGIS does not intend to present pre-suit
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`indirect infringement at trial.
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`III. RESPONSE TO RECITATION OF UNDISPUTED FACTS
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`1.
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`AGIS alleges that HTC induces infringement of the asserted patents and
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`contributorily infringes the asserted patents.
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`Response: Disputed, however, AGIS does not intend to present a theory of pre-suit
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`indirect infringement at trial.
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`2.
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`AGIS seeks pre-suit damages for HTC’s alleged indirect infringement.
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`Response: Disputed, however, AGIS does not intend to present a theory of pre-suit
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`indirect infringement at trial. As AGIS explained in correspondence with HTC, HTC has
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`continued to support and update the accused HTC devices, even after AGIS filed its complaint,
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`and after HTC had notice of the patents. Accordingly, HTC has induced its customers to infringe
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`at least by causing their customers to upgrade their devices to newer versions of the Android
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`Operating System, Google Maps app, and Find My Device app which include the accused
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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 3 of 9 PageID #: 18161
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`functionalities. Additionally, AGIS maintains its direct infringement case that HTC had directly
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`infringed the patents by selling and/or offering the products for sale in the United States. As
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`such, AGIS is entitled to seek the full scope of its damages at trial. See Ex. A, Letter to M.
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`Bernstein from V. Rubino, dated November 28, 2018; Ex. B, Expert Report of Joseph
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`McAlexander at ¶¶ 129, 134.
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`3.
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`In the Complaint, AGIS’s only allegation as to HTC’s knowledge of the patents
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`and knowledge of the alleged infringement is that HTC had knowledge “at least as of the date of
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`this Complaint.”
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`Response: Disputed, however, as stated above, AGIS does not intend to present a theory
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`of pre-suit indirect infringement at trial.
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`4.
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`On November 7, 2018, HTC served Interrogatory No. 17 on AGIS, for which
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`AGIS responded: “Discovery in this case is still ongoing and AGIS continues to investigate this
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`matter.”
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`Response: Undisputed.
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`5.
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`On November 7, 2018, HTC served Interrogatory No. 18 on AGIS, for which
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`AGIS responded: “HTC received notice of the Patents-in-Suit, at least of [sic] the date of the
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`Complaint.”
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`Response: Undisputed.
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`6.
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`On November 7, 2018, HTC served Request for Admission No. 1 on AGIS, for
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`which AGIS responded: “Admitted.”
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`Response: Undisputed.
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`2
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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 4 of 9 PageID #: 18162
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`7.
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`HTC served other requests for admission as to any party providing pre-suit notice
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`to HTC about the existence of the asserted patents or alleged infringement thereof, but AGIS
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`responded only with objections.
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`Response: Undisputed.
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`8.
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`None of AGIS’s fact witnesses could recall any pre-suit notice to HTC of the
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`asserted patents or alleged infringement thereof.
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`Response: Undisputed.
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`9.
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`HTC’s Rule 30(b)(6) witness testified that HTC first became aware of the asserted
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`patents: “After HTC was sued.”
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`Response: Undisputed that HTC was aware of the patents at least as of the filing of the
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`Complaint.
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`10.
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`On November 13, 2018, in an attempt to narrow the issues in this case, counsel
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`for HTC sent a letter to counsel for AGIS asking AGIS to stipulate that HTC “does not induce
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`infringement [of the ’970 patent] prior to AGIS’s filing of the complaint (June 21, 2017).”
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`Response: Undisputed.
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`11.
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`The letter noted that discovery had no evidence of pre-suit knowledge of the ’970
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`patent by HTC, and that as a result HTC had not committed pre-suit induced infringement as a
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`matter of law.
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`Response: Disputed, however, AGIS does not intend to present a theory of pre-suit
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`indirect infringement at trial. As AGIS explained in response to HTC’s letter, AGIS is entitled to
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`the full scope of its damages at least based on HTC’s post-complaint acts.
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`12.
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`Counsel for AGIS responded with a paragraph that seemingly argued that HTC
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`could still be liable for post-suit induced infringement.
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`3
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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 5 of 9 PageID #: 18163
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`Response: Undisputed that HTC is liable for post-suit induced infringement. However,
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`as AGIS explained in response to HTC’s letter, AGIS is entitled to the full scope of its damages
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`at least based on HTC’s post-complaint acts.
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`13.
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`Counsel for HTC made one last attempt to resolve the matter:
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`It is black letter law that there cannot be induced infringement without notice of
`the patents-in-suit. There was no pre-suit notice, and AGIS’s pre-suit inducement
`claims are therefore frivolous as a matter of law.
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`Response: AGIS does not intend to present a theory of pre-suit indirect infringement at
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`trial. Undisputed that HTC is liable for post-suit induced infringement. However, as AGIS
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`explained in response to HTC’s letter, AGIS is entitled to the full scope of its damages at least
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`based on inducement based on HTC’s post-complaint acts, as well as HTC’s direct infringement
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`of the patents.
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`IV. ARGUMENT
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`HTC seeks summary judgment on issues that are not in dispute. As AGIS explained in
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`its November 28, 2018 letter, AGIS intends to pursue direct infringement and post-complaint
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`inducement at trial which entitles AGIS to the full scope of its damages. Ex. A. AGIS does not
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`contend and will not allege at trial that HTC indirectly infringes any claim of the Patents-in-Suit
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`prior to the filing date of the Complaint. HTC’s motion for summary judgment seeks dispositive
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`judgments on issues for which there is no present case or controversy, and HTC cites to no case
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`law holding that such relief is appropriate. To the contrary, case law in this District indicates
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`that courts should not grant summary judgment on issues that are not to be presented at trial. See
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`e.g., VirnetX Inc. v. Apple Inc., 925 F. Supp. 2d 816, 849 (E.D. Tex. 2013) (rev’d, 767 F.3d 1308
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`(Fed. Cir. 2014)) on other grounds (“The Court encourages and requires the parties to narrow
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`their case for trial. Accordingly, the Court will not penalize such attempts to narrow issues by
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`4
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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 6 of 9 PageID #: 18164
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`entering judgment on issues not presented at trial.”). HTC’s motion should, therefore, be denied
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`as moot.
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`V.
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`CONCLUSION
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`For the foregoing reasons, HTC has failed to show good cause for its motion and AGIS
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`respectfully requests that the Court deny HTC’s Motion for Summary Judgment of No Pre-Suit
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`Indirect Infringement.
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`Dated: February 19, 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
`Timothy J. Rousseau
`NY Bar No. 4698742
`Email: trousseau@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
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`5
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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 7 of 9 PageID #: 18165
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`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
`
`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 207 Filed 02/21/19 Page 8 of 9 PageID #: 18166
`Case 2:17-cv-00514—JRG Document 207 Filed 02/21/19 Page 8 of 9 PageID #: 18166
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`Case 2:17-cv-00514-JRG Document 207 Filed 02/21/19 Page 9 of 9 PageID #: 18167
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on February 19, 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
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` Alfred R. Fabricant
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