Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 1 of 17 PageID #: 18278
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
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`
`
`v.
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`
`HTC CORPORATION,
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`
`Defendant.
`
`
`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:17-CV-0515-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`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
`SEALED MOTION FOR PARTIAL SUMMARY JUDGMENT
`OF LIMITATION OF DAMAGES (DKT. 117)
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`

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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 2 of 17 PageID #: 18279
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`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION .............................................................................................................. 1
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`RESPONSE TO STATEMENT OF ISSUES ..................................................................... 1
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`RESPONSE TO STATEMENT OF UNDISPUTED MATERIAL FACTS ...................... 1
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`COUNTER-STATEMENT OF UNDISPUTED MATERIAL FACTS ............................. 3
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`LEGAL STANDARDS ...................................................................................................... 4
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`ARGUMENT ...................................................................................................................... 5
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`A.
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`LG Cannot Show Failure to Comply with Section 287 .......................................... 5
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`VII. CONCLUSION ................................................................................................................. 10
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`i
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 3 of 17 PageID #: 18280
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Am. Med. Sys., Inc. v. Med. Eng’g Corp.,
`6 F.3d 1523, 1537 (Fed. Cir. 1993)........................................................................................5, 9
`
`Amsted Industries Inc. v. Buckeye Steel Castings Co.,
`24 F.3d 178, 30 U.S.P.Q.2d 1462 (Fed. Cir. 1994) ...................................................................5
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986) ...........................................................4
`
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350, 124 U.S.P.Q.2d 1885 (Fed. Cir. 2017) .............................................................7
`
`AVID Identification Sys., Inc. v. Philips Elecs. N.A. Corp.,
`No. 2:07-cv-183, 2006 WL 1408318 (E.D. Tex. 2006) .............................................................9
`
`Celotex Corp. v. Catrett,
`477 U.S. 317, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986) ...........................................................4
`
`Gart v. Logitech, Inc.,
`254 F.3d 1334, 1339, 59 U.S.P.Q. 1290 (Fed. Cir. 2001) .........................................................5
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996)....................................................................................................6
`
`Nike, Inc. v. Wal-Mart Stores, Inc.,
`138 F.3d 1437 (Fed. Cir. 1998)..................................................................................................5
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`Sentry Protection Prods., Inc. v. Eagle Mfg. Co.,
`400 F.3d 910, 918 (Fed. Cir. 2005)............................................................................................9
`
`Tivo Inc. v. Echostar Comm’ns Corp.,
`No. 2:07-cv-1-DF, 2006 WL 8408221 (E.D. Tex. 2006) ....................................................5, 10
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`United States v. Renda Marine, Inc.,
`667 F.3d 651 (5th Cir. 2012) .....................................................................................................4
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`Statutes
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`35 U.S.C. § 287(a) ...................................................................................................................4, 5, 9
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`ii
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 4 of 17 PageID #: 18281
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`Other Authorities
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`Fed. R. Civ. P. 56(c) ........................................................................................................................4
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`Local Rule CV-56(a)........................................................................................................................1
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`Local Rule CV-56(d) .......................................................................................................................1
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`iii
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 5 of 17 PageID #: 18282
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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”) Sealed Motion for Partial Summary Judgment of
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`Limitation of Damages (Dkt. 117).
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`I.
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`INTRODUCTION
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`LG alleges that AGIS has failed to sufficiently mark its products and, therefore, AGIS
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`cannot recover any pre-suit damages. However, at most, LG establishes that there are factual
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`issues that require resolving which would preclude a finding of summary judgment.
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`II.
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`RESPONSE TO STATEMENT OF ISSUES
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`Whether AGIS may recover damages for pre-suit infringement of the location sharing
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`patents where: (i) AGIS, Inc. did not mark the LifeRing product and its other publications with
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`these patent numbers, and (ii) AGIS failed to give LGEKR notice of the alleged infringement of
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`these patents prior to filing its Complaint in this action.
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`Response: Whether LG is entitled to judgment as a matter of law that (i) AGIS, Inc. did
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`not mark the LifeRing product and its other publications with the patent numbers, and (ii) AGIS
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`failed to give LG notice of the alleged infringement of these patents prior to filing its Complaint
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`in this action.
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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, are argumentative, and lack
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`citations to proper summary judgment evidence under Local Rule CV-56(d). AGIS presents the
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`following responses to the allegations in the Statement of Undisputed Material Facts.
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`Response to No. 1: Undisputed.
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`Response to No. 2: Undisputed.
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 6 of 17 PageID #: 18283
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`Response to No. 3: AGIS disputes that its patent portfolio was licensed back to AGIS
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`Holdings, Inc. “solely for the purpose of fulfilling its obligations to AGIS.”
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`Response to No. 4: AGIS disputes that each LifeRing product practices all of the
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`location sharing patents.
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` AGIS further disputes that
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`LGEKR first became aware of AGIS’s claims of infringement of the location sharing patents
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`when AGIS filed the Complaint in this Action.
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`Response to No. 5: Undisputed that AGIS has put a version of its LifeRing product on
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`sale before this action was filed. However, AGIS disputes that versions of LifeRing were sold
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`after the 2016 issuances of the location sharing patents and before the June 21, 2017 filing of this
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`lawsuit.
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`Response to No. 6: Undisputed that AGIS identified the LifeRing product was marked
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`with the Patents-in-Suit. AGIS disputes whether no other documents or evidence of marking
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`was produced during the course of this litigation.
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`Response to No. 7: AGIS disputes LG’s assertion that AGIS, Inc. did not mark the
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`software for the LifeRing product with the patent numbers or patent application numbers of the
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`location sharing patents. The software for the LifeRing product has been marked with the patent
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`numbers of the location sharing patents since at least March 26, 2017.
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`Response to No. 8: Disputed to the extent LG contends that the manuals were provided
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`with any products between June 2016 and July 2017.
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 7 of 17 PageID #: 18284
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`Response to No. 9: AGIS disputes that the patent numbers for the location sharing patents
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`were marked on the website after this lawsuit commenced. Exhibit P, the Affidavit of
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`Christopher Butler of the Internet Archive, shows that AGIS, Inc. marked its website with the
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`Location Sharing Patents on May 17, 2017. This action was commenced on June 17, 2017.
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`Further, the Internet Archive does not show any archived data between November 2016 and May
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`2017.
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`IV. COUNTER-STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`AGIS, Inc. has been marking its products with patent numbers since at least 2007.
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`See Dkt. 117-2, AGIS Operator’s Manual, dated June 2007; Dkt. 117-3, LifeRing Operator’s
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`Manual, dated December 2010. Each of these markings including “patent pending” language.
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`2.
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`AGIS, Inc. marked its website with the ’055 Patent on March 26, 2017. Ex. B,
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`Website Upload Information for U.S. Patent No. 9,408,055.
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`3.
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`AGIS, Inc. had no sales or deliveries of the LifeRing product after the issuance of
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`the location sharing patents and before the filing of the Complaint in this action.
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`4.
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`AGIS designated Malcolm K. Beyer Jr. as a 30(b)(6) witness with regard to
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`Topics 7 and 15 of Defendants’ Notice of 30(b)(6) Deposition to AGIS. See Ex. C, Notice of
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`30(b)(6) Deposition to AGIS Software Development LLC, dated July 27, 2018; Ex. D, Email
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`from E. Iturralde to Defendants, dated September 21, 2018.
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`5.
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`3
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 8 of 17 PageID #: 18285
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`LEGAL STANDARDS
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`Summary judgment is proper if the pleadings, depositions, answers to interrogatories, and
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`V.
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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. Fed. R.
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`Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323-25, 106 S. Ct. 2548, 91 L. Ed. 2d 265
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`(1986). In considering a summary judgment motion, the court must “view the evidence in the
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`light most favorable to the non-moving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`248, 106 S. Ct. 2505, 91 L. Ed. 2d 202, (1986); United States v. Renda Marine, Inc., 667 F.3d
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`651, 655 (5th Cir. 2012).
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`Section 287 provides in pertinent part as follows:
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`Patentees, and persons making, offering for sale, or selling within
`the United States any patented article for or under them, or
`importing any patented article into the United States, may give
`notice to the public that the same is patented, either by fixing
`thereon the word “patent” or the abbreviation “pat.”, together with
`the number of the patent, or by fixing thereon the word “patent” or
`the address, that associates the patented article with the number of
`the patent, or when, from the character of the article, this can not
`be done, by fixing to it, or to the package wherein one or more of
`them is contained, a label containing a like notice. In the event of
`a failure to so mark, no damages shall be recovered by the patentee
`in any action for infringement, except on proof that the infringer
`was notified of the infringement and continued to infringe
`thereafter, in which event damages may be recovered only for
`infringement occurring after such notice. Filing of an action for
`infringement shall constitute such notice.
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`35 U.S.C. § 287(a).
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`“In determining whether the patentee marked its products sufficiently to comply with the
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`constructive notice requirement, the focus is not on what the infringer actually knew, but on
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 9 of 17 PageID #: 18286
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`whether the patentee’s actions were sufficient, in the circumstances, to provide notice in rem.”
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`Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). Compliance with the
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`marking statute is a question of fact and only appropriately decided upon summary judgment
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`when “no reasonable jury could find that the patentee either has or has not provided actual notice
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`to the ‘particular defendants by informing them of his patent and of their infringement of it.’”
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`Gart v. Logitech, Inc., 254 F.3d 1334, 1339, 59 U.S.P.Q. 1290 (Fed. Cir. 2001) (quoting Amsted
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`Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187, 30 U.S.P.Q.2d 1462 (Fed. Cir.
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`1994)).
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`VI. ARGUMENT
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`LG alleges that it should be granted partial summary judgment that AGIS may not
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`recover damages for pre-suit infringement of the location sharing patents on the grounds that
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`AGIS, Inc. did not comply with the marking requirements of 35 U.S.C. § 287(a). LG has failed
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`to establish there is no genuine issue of material fact regarding whether AGIS has carried its
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`burden to show compliance with Section 287 and is precluded from summary judgment on those
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`grounds.
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`A.
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`LG Cannot Show Failure to Comply with Section 287
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`
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`The Location Sharing Patents issued on August 2, 2016, September 13, 2016, and
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`October 11, 2016. See Statement of Undisputed Material Facts ¶ 1. Tivo Inc. v. Echostar
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`Comm’ns Corp., No. 2:07-cv-1-DF, 2006 WL 8408221, at *3 (E.D. Tex. 2006) (“The failure to
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`fully comply with the marking statute immediately after a patent issues, however, does not bar
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`recovery of damages until the time of actual notice.”) (citing Am. Med. Sys., Inc. v. Med. Eng’g
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`Corp., 6 F.3d 1523, 1537 (Fed. Cir. 1993)). LG alleges that because AGIS failed to mark its
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`products with the Location Sharing Patents, it has failed to comply with § 287. However, LG’s
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`position must fail.
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`5
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 10 of 17 PageID #: 18287
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` Thus, at least with regard to the ’251 Patent, AGIS was under no duty to mark any
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`products, regardless of when they had been sold, and AGIS has complied with § 287 for at least
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`that reason.
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`Next, regarding the remaining patents and products, LG alleges that “AGIS cannot show
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`even attempted compliance with § 287” because there is no provision in the license agreements
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`requiring marking. Dkt. 117 at 8. LG’s argument is without merit—a provision in a license
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`agreement requiring licensee to mark its products is not the only method of enforcing patent
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`protection. LG provides no other evidence to establish that AGIS has failed to enforce marking
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`of its products by licensees and, at most, creates a genuine issue of material fact whether AGIS
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`continues to enforce its rights. Where a licensee is responsible for a failure to mark, “the Federal
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`Circuit has called for a more relaxed ‘rule of reason’ approach in determining ‘substantial
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`compliance’ with the marking statute.” Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir.
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`1996) (“The rule of reason is consistent with the purpose of the constructive notice provision—to
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`encourage patentees to mark their products in order to provide notice to the public of the
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`existence of the patent and to prevent innocent infringement.”). It is AGIS’s burden to prove
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`compliance with marking, but LG “bears an initial burden of production to articulate the
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 11 of 17 PageID #: 18288
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`products it believes are unmarked ‘patented articles’ subject to § 287.” See Arctic Cat Inc. v.
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`Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1367, 124 U.S.P.Q.2d 1885 (Fed. Cir.
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`2017) (“Permitting infringers to allege failure to mark without identifying any products could
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`lead to a large scale fishing expedition and gamesmanship.”). However, LG has not identified a
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`single product, sale, or even a specific version number of the AGIS product that was not
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`allegedly marked. See generally Dkt. 117. LG provides no evidence that any products were
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`provided to anyone in the U.S. during the alleged time of non-compliance, aside from
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`unsupported assertions that item numbers in AGIS, Inc.’s Job List include “release dates after the
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`issuances of the location sharing patents, but before the filing of this lawsuit.” Dkt. 117 at 3.
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`However, LG makes no attempts to distinguish between “PO” contracts and “non-PO” contracts.
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` Again, LG did not inquire into or seek clarification regarding
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`any of the jobs LG alleges have release dates after the issuances of the location sharing patents,
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`but before filing of this lawsuit. See generally id. At the very least, there is a question of fact as
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`to whether any products were sold during the relevant time period, and AGIS should be
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 12 of 17 PageID #: 18289
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`permitted to introduce evidence at trial, including testimony from one or more AGIS witnesses,
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`explaining how there were no sales of unmarked products prior to the filing date of the
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`Complaint, consistent with AGIS’s statements during discovery. (For example, AGIS has stated
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`that it has complied with the marking statute and that AGIS has stated that AGIS, Inc. marks its
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`products. See Statement of Material Facts No. 6; Dkt. 117-6 at 20;
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` As a result, LG is not entitled to summary judgment.
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`In support of its argument that AGIS has allegedly failed to comply with Section 287 and
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`mark its products,
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` Again, LG provides no support to establish what version of the
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`LifeRing source code was cited to and the date such version was released. Further, the source
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`code is not evidence of the sale of a product within the U.S.
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 13 of 17 PageID #: 18290
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`LG alleges that there is no genuine issue of material fact that AGIS has failed to comply
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`with the marking requirements of 35 U.S.C. § 287(a). However, AGIS has provided sources of
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`evidence stating otherwise, such as deposition testimony from AGIS employees and the Job List
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`demonstrating there were no sales made during the timeframe LG alleges non-compliance which
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`preclude a finding of summary judgment. See AVID Identification Sys., Inc. v. Philips Elecs.
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`N.A. Corp., No. 2:07-cv-183, 2006 WL 1408318, at *2 (E.D. Tex. 2006) (where Court denied
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`defendant’s motion for summary judgment to exclude past damages where plaintiff provided
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`(1) an interrogatory response with the specific marking language used; (2) instruction manuals
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`and packaging materials evidencing marking; (3) pictures of the product marked; and
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`(4) deposition testimony that plaintiff marks its products). Id. The Court in Philips further held
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`that defendant’s argument that plaintiff had “failed to produce evidence of the exact number or
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`percentage of products marked, as well as an exact date on which it began marking its patented
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`products” was insufficient to warrant summary judgment on this issue. Id.; see also Am. Med.
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`Sys., 6 F.3d at 1534 (Fed. Cir. 1993) (where the Federal Circuit allowed plaintiff to recover
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`damages even though the only evidence in the record of when marking began stated “marking
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`did not begin until ‘about two months after issuance of the . . . patent.’”); Sentry Protection
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`Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 918 (Fed. Cir. 2005) (holding the district court
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`erred in holding plaintiff’s marking evidence did not preclude summary judgment and that
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`plaintiff is “entitled to an opportunity to prove constructive notice and corresponding entitled to
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`damages for infringement”). When there are genuine issues of material fact whether marking
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 14 of 17 PageID #: 18291
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`became substantially consistent and continuous during the relevant time period, summary
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`judgment is inappropriate. Tivo Inc., 2006 WL 8408221, at *4.
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`VII. CONCLUSION
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`For the foregoing reasons, LG’s motion for partial summary judgment of limitation of
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`damages should be denied in its entirety.
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`Dated: February 19, 2019
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`BROWN RUDNICK LLP
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`
`
` /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
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 15 of 17 PageID #: 18292
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`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 212 Filed 02/21/19 Page 16 of 17 PageID #: 18293
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
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`pursuant to the Protective Order entered in this case.
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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`Case 2:17-cv-00514-JRG Document 212 Filed 02/21/19 Page 17 of 17 PageID #: 18294
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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
` Alfred R. Fabricant
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