Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 1 of 32 PageID #: 18697
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`v.
`
`HTC Corporation,
`
`
`Defendant.
`
`
`
`
`Case No. 2:17-cv-0514-JRG
`(LEAD CASE)
`
`
`JURY TRIAL DEMANDED
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`
`
`
`
`JOINT PRE-TRIAL ORDER FOR THE
`AGIS SOFTWARE DEVELOPMENT LLC V. HTC CORPORATION TRIAL
`
`The Pretrial Conference is scheduled for March 1, 2019 in Marshall, Texas, pursuant to
`
`the Court’s Fourth Amended Docket Control Order (Dkt. 141) and Rule 16 of the Federal Rules
`
`of Civil Procedure. As used herein, “AGIS” or “Plaintiff” means AGIS Software Development
`
`LLC. As used herein, “HTC” or “Defendant” means HTC Corporation.
`
`The following parties submit this Joint Pre-Trial Order:
`
`A.
`
`COUNSEL FOR THE PARTIES
`
`1.
`
`AGIS Software Development LLC
`
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`
`

`

`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 2 of 32 PageID #: 18698
`
`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
`
`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
`
`2.
`
`HTC Corporation
`
`Matthew C. Bernstein
`CA State Bar No. 199240
`mbernstein@perkinscoie.com
`
`2
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`

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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 3 of 32 PageID #: 18699
`
`Patrick J. McKeever
`CA State Bar No. 268763
`pmckeever@perkinscoie.com
`Miguel J. Bombach
`CA State Bar No. 274287
`mbombach@perkinscoie.com
`Kyle R. Canavera
`CA State Bar No. 314664
`kcanavera@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2080
`Tel: (858) 720-5700
`Fax: (858) 720-5799
`
`Eric Findlay
`State Bar No. 00789886
`efindlay@findlaycraft.com
`Brian Craft
`State Bar No. 04972020
`bcraft@findlaycraft.com
`FINDLAY CRAFT, P.C.
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`
`
`Harry Lee Gillam, Jr.
`State Bar No. 07921800
`gil@gillamsmithlaw.com
`GILLAM & SMITH LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`
`
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`3
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 4 of 32 PageID #: 18700
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`A.
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`STATEMENT OF JURISDICTION
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331
`
`and 1338(a) because this action arises under the patent laws of the United States, including 35
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`U.S.C. § 1 et seq. For the purpose of this action, AGIS does not contest that this Court has
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`personal jurisdiction over AGIS. AGIS further does not contest that venue is proper in the
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`United States District Court for the Eastern District of Texas, Marshall Division.
`
`HTC Corp. did not consent to the Court’s exercise of personal jurisdiction in this action.
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`(See Dkt. No. 29, HTC Corp.’s Motion to Dismiss for Lack of Personal Jurisdiction; Dkt. No. 77,
`
`Order Denying HTC Corp. Motion to Dismiss for Lack of Personal Jurisdiction.) HTC Corp.
`
`also does not agree that the United States District Court for the Eastern District of Texas is the
`
`appropriate venue for the purposes of this action. (See Dkt. No. 29, HTC Corp.’s Motion to
`
`Transfer Venue; Dkt. No. 77, Order Denying HTC Corp. Motion to Transfer Venue; Dkt. No. 97,
`
`Motion to Reconsider Denial of Motion to Transfer Venue.).
`
`B.
`
`NATURE OF ACTION
`
`1.
`
`AGIS’s Statement Regarding the Description of the Case
`
`Plaintiff AGIS alleges that Defendant HTC directly infringes and/or indirectly infringes
`
`U.S. Patent No. 8,213,970 (the “’970 patent”), U.S. Patent No. 9,408,055 (the “’055 patent”),
`
`U.S. Patent No. 9,445,251 (the “’251 patent”), and U.S. Patent No. 9,467,838 (the “’838 patent”)
`
`(collectively, the “Patents-in-Suit”), by making, using, selling, offering for sale and/or importing
`
`into the United States the following Android-based phones and tablets: 10, 10 evo, 10 Lifestyle,
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`2125 / 2100 (Faraday), 3125 / Smartflip / 8500 (Star Trek), 5800 / Fusion / S720, 7 Mozart, 7
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`Pro, 7 Surround, 7 Trophy, 8125 / 8100 / MDA (USA) / K-JAM / P4300 (Wizard), 8XT, AD
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`phones continues below..., Amaze 4G, Aria, Arrive, Arrive / 7 Pro (CDMA), Bolt, Butterfly,
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`
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`4
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 5 of 32 PageID #: 18701
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`Butterfly 2, Butterfly 3, Butterfly S, ChaCha, Dash / S620 / S621 (Excalibur), Dash 3G / Snap
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`(GSM), Desire, Desire (CDMA), Desire / Desire 601 (CDMA), Desire 10 Compact, Desire 10
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`Lifestyle, Desire 10 Pro, Desire 200, Desire 210 dual sim, Desire 300, Desire 310, Desire 310
`
`dual sim, Desire 320, Desire 326G dual sim, Desire 400 dual sim, Desire 500, Desire 501, Desire
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`501 dual sim, Desire 510, Desire 510 (CDMA), Desire 510 (GSM), Desire 516 dual sim, Desire
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`520, Desire 526, Desire 526 (CDMA), Desire 526G+ dual sim, Desire 530, Desire 555, Desire
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`600 dual sim, Desire 601, Desire 601 dual sim, Desire 610, Desire 610 (GSM), Desire 612,
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`Desire 612 (CDMA), Desire 616 dual sim, Desire 620, Desire 620G dual sim, Desire 625, Desire
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`626, Desire 626 (CDMA), Desire 626 (GSM), Desire 626 (USA), Desire 626G+, Desire 626s,
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`Desire 626s (CDMA), Desire 626s (GSM), Desire 628, Desire 630, Desire 650, Desire 700,
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`Desire 700 dual sim, Desire 728 dual sim, Desire 728 Ultra, Desire 816, Desire 816 dual sim,
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`Desire 816G dual sim, Desire 820, Desire 820 dual sim, Desire 820G+ dual sim, Desire 820q
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`dual sim, Desire 820s dual sim, Desire 825, Desire 826 dual sim, Desire 828 dual sim, Desire
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`830, Desire C, Desire C (CDMA), Desire Eye, Desire HD, Desire L, Desire P, Desire Q, Desire
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`S, Desire SV, Desire U, Desire V, Desire VC, Desire VT, Desire X, Desire XC, Desire Z,
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`Dream, DROID DNA, DROID ERIS, Droid Incredible, DROID Incredible 2, DROID Incredible
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`4G LTE, EVO 3D, EVO 3D CDMA, Evo 4G, Evo 4G LTE, Evo 4G+, EVO Design 4G, EVO
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`Design 4G / Hero S (CDMA), EVO Shift 4G, EVO V 4G / EVO 3D (CDMA), EVO View 4G,
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`Explorer, First, Flyer, Flyer Wi-Fi, Freestyle, Fuze / Touch Pro (GSM), G1, G2, Glacier, Gratia,
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`HD mini, HD2, HD7, HD7 / HD7S, HD7S, Hero, Hero (CDMA), Hero CDMA, Hero S, Imagio,
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`Incredible S, Inspire 4G, J, JAMin / S200 (Prophet), Jetstream, Lead, Legend, Magic, MAX 4G,
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`MDA Compact / xda II mini / JAM (Magician), Merge, Mogul / XV6800 / PPC6800 / P4000,
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`myTouch 3G / Magic, myTouch 3G Slide, myTouch 4G, myTouch 4G Slide, One, One (E8),
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`
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`5
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`

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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 6 of 32 PageID #: 18702
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`One (E8) CDMA, One (M7 / CDMA), One (M7 / GSM), One (M8 Eye), One (M8), One (M8)
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`(CDMA), One (M8) (GSM), One (M8) CDMA, One (M8) dual sim, One A9, One A9s, One
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`Dual Sim, One E9, One E9+, One M8s, One M9, One M9 (CDMA), One M9 (GSM), One M9
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`Prime Camera, One M9+, One M9+ Supreme Camera, One M9s, One Max, One max (CDMA),
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`One ME, One mini, One mini 2, One mini 2 (GSM), One Remix, One Remix / One mini 2
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`(CDMA), One S, One S C2, One S9, One SC, One ST, One SV, One SV CDMA, One V, One
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`VX, One X, One X AT&T, One X+, One X10, One X9, One XC, One XL, Ozone, Ozone
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`XV6175, Panache, Paradise, Prime, Pure, Pure / Touch Diamond2, Radar, Raider 4G, Rezound,
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`Rhyme, Rhyme CDMA, Rider, S710 (Vox), S730, S740, Salsa, Schubert, SDA (USA) / SP5m
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`(Tornado), Sensation, Sensation 4G, Sensation XE, Sensation XL, Shadow, Shadow (2009),
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`Smart, Snap, Snap S511 (CDMA), SP3i / SDA (Europe) (Feeler), SPV C550 (Hurricane), SPV
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`E200 / XPhone (Voyager), Status, Surround, Tattoo, ThunderBolt, ThunderBolt 4G, Tilt 8925 /
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`TyTN II, Tilt2, Titan, Titan II, Touch (CDMA) / XV6900, Touch 3G, Touch Cruise, Touch
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`Cruise 09, Touch Diamond (CDMA), Touch Diamond2, Touch Diamond2 CDMA, Touch Dual,
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`Touch HD, Touch HD T8285, Touch Pro, Touch Pro (CDMA), Touch Pro CDMA, Touch Pro2,
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`Touch Pro2 (CDMA), Touch Pro2 (GSM) / Tilt 2, Touch Pro2 CDMA, Touch Viva, Touch2,
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`Trophy, Trophy (CDMA), TyTN / 8525 / JasJam (Hermes), U Play, U Ultra, U Ultra, U11, U11,
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`U11 Eyes, U11 Life, U11 Plus, U11+, Velocity 4G, Vivid, Wildfire, Wildfire (CDMA), Wildfire
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`CDMA, Wildfire S, Wildfire S (CDMA), Wildfire S (GSM), Wing / P4350 (Herald), xda II /
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`MDA II, FLYER, JETSTREAM, FLYER WI-FI, EVO View 4G, FLYER CDMA, Desire 12,
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`Desire 12+ and any variants thereof that are (1) running the following versions (and all
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`intervening updates and subversions) of the Android mobile operating system: Android 2.3, 4.0,
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`4.1, 4.2, 4.3, 4.4, 5.0, 5.1, 6.0, 7.0, 7.1, 8.0, and 8.1; (2) running any versions of the following
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`
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`6
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 7 of 32 PageID #: 18703
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`Android-based applications and/or software: Android Device Manager, Find My Device, Google
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`Latitude, Google Plus, Google Hangouts, Google Maps, Google Assistant, Google Search,
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`Google Messages, Android Messenger, Google Allo, Google Duo, GMail, and Google Chrome;
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`(3) participating in any networks and/or services related to the execution and/or use of the
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`Android mobile operating system versions and Android-based applications and/or software
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`described herein; and (4) participating in any networks and/or services related to the execution
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`and/or use of the Android mobile operating system versions and Android-based applications
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`and/or software described herein (collectively, the “Accused Devices”), all of which are pre-
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`configured or adapted with map-based communication applications and/or features such as
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`Google Maps, Android Device Manager, Find My Device, Google Chrome, Google Messages,
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`Android Messenger, Google Hangouts, Google Plus, and Google Latitude, among other relevant
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`applications and/or features relevant to the patents-in-suit. . The Accused Devices include
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`software, including but not limited to the above-listed applications and/or features as components
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`of its operating system and as downloads from a pre-installed application store, such as the Play
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`Store, in the Accused Devices. The Accused Devices include functionality that allows users to
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`form groups with other users such that users may view each other’s locations on a map and
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`engage in communication including text, voice, and multimedia based communication. AGIS
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`also alleges that HTC indirectly infringes by way of induced infringement of the ’970 patent, the
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`’055 patent, the ’251 patent, and the ’838 patent. AGIS further alleges that HTC willfully
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`infringes the Patents-in-Suit.
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`The Patents-in-Suit are directed to location sharing and communications technology. The
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`technology uses GPS-based location technology on existing or special-purpose cellular
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`communication networks through which users can exchange location and information with other
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 8 of 32 PageID #: 18704
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`members of a group, view each other’s locations on maps and satellite images, and rapidly
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`communicate. A device joins a group and begins transmitting and receiving location
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`information. Location updates show updated positions of group members or users on a
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`geographical map, and devices can add points to such map and transmit location information as
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`well as message through the map display.
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`AGIS alleges that HTC has sold multiple generations of phones and tablets that are pre-
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`configured or adapted with map-based communication applications and/or features such as, but
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`not limited to: Google Maps, Android Device Manager, Find My Phone, Find My Device,
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`Google Chrome, Google Messages, Android Messenger, Google Hangouts, Google Plus, and
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`Google Latitude. HTC includes software, including but not limited to the above-listed
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`applications and/or features, as components of its operating system and as downloads from a pre-
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`installed application store, such as the Play Store, in the Accused Devices. The Accused Devices
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`include functionalities that allow users to form groups with other users and/or Accused Devices,
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`to view the geographical locations, which may be continuously updated, of other users and/or
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`Accused Devices in the groups, including text, voice, and multimedia-based communications.
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`The Accused Devices include additional functionalities that allow users to form groups to
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`include their own Accused Devices and track their own lost or stolen Accused Devices, to send
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`and receive communications from their own lost or stolen Accused Devices, and to remotely
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`control the lost or stolen Accused Devices.
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`AGIS alleges that HTC induces the infringement of the Patents-in-Suit by, among other
`
`things, making, using, offering to sell, selling and/or importing into the United States the
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`infringing Accused Devices and by instructing users of the Accused Devices to perform methods
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`claimed in the Patents-in-Suit. AGIS alleges that HTC induces the infringement of the Patents-
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`8
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 9 of 32 PageID #: 18705
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`in-Suit by instructing users of the Accused Devices to use the Google Maps, Google Plus,
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`Google Hangouts, Google Chrome, Android Device Manager, and Find My Device applications
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`on Accused Devices and/or to upgrade the Android operating system on the HTC Accused
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`Devices such that the HTC Accused Devices are configured to infringe the Patents-in-Suit.
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`AGIS alleges that it is entitled to damages from the issue date forward for each patent-in-
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`suit, which is July 3, 2012 for the ’970 patent, August 2, 2016 for the ’055 patent, September 13,
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`2016 for the ‘251 patent, and October 11, 2016 for the ’838 patent. Currently, HTC has alleged
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`invalidity based on 17 prior art references, a volume that AGIS contends is unreasonably large
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`and will confuse and overwhelm the jury.
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`2.
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`HTC’s Statement Regarding the Description of the Case
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`In order to litigate in its desired venue, AGIS filed suit alleging patent infringement
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`against only HTC Corp., and not the company that actually does business in the United States,
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`HTC America, Inc. The tradeoff for AGIS to this litigation strategy is that the only entity that
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`arguably makes, uses, offers to sell, sells, or imports any patented invention within the United
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`States (HTC America, Inc.) is not a party to this case. And because HTC Corp. conducts all its
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`activities outside the United States, it does not do anything that would constitute infringement of
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`the Patents-in-Suit under 35 U.S.C. § 271.
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`The technology at issue in this case is Google LLC’s technology, not HTC Corp.’s.
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`AGIS alleges that certain Android applications (commonly called “apps”) made by Google, not
`
`HTC Corp., infringe the Patents-in-Suit. Specifically, this case is about AGIS’s infringement
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`allegations against: (1) Google’s Find My Device app (formerly the Android Device Manager
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`app) and (2) the aspects of the Google Maps app.
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`The issue of the Find My Device app is a simple one. The Find My Device app has never
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 10 of 32 PageID #: 18706
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`been pre-installed on any of HTC Corp.’s phones. Never. Users must download it from Google
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`Play Store, owned and operated by Google, on Google’s servers. Because the Find My Device
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`app is not installed on any of HTC’s phones as shipped, HTC Corp. cannot infringe the ’970
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`patent under 35 U.S.C. § 271.
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`AGIS was never in the consumer app business, but instead was and always has been a
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`command and control company. AGIS made products that allowed soldiers and first responders
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`to communicate with each other in the field, so it is not surprising that its patents are directed to
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`that technology rather than that found in the consumer Google apps at issue in this case. AGIS’s
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`patents simply do not map on the accused products. For example, HTC Corp. cannot infringe the
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`the’970 patent because the accused Google apps do not have the claimed two-way messaging
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`structure which requires that a manual response be selected and sent back to the sender device.
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`Likewise, HTC Corp. cannot infringe the ’055 patent because that patent’s claims require IP
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`based communication between two devices, but the Google apps on the Accused Devices just
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`use simple text messages. And the ’251 and ’838 patents are directed to joining a group and
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`sharing a location within the group, but there is no mechanism in the accused Google apps on
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`HTC Corp.’s phones that allow a user to join and share locations as a group.
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`The Patents-in-Suit are also invalid under 35 U.S.C. §§ 102 and 103. AGIS obviously
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`did not invent GPS, messaging, mapping, location sharing, and communication technology
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`generally. Its patents are undisputedly not foundational, but are instead at most directed to very
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`specific ways of implementing command and control software. But the command and control
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`space is a crowded one, including with many references AGIS never disclosed to the USPTO
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`when it was obtaining its patents, and HTC Corp. alleges those undisclosed references invalidate
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`the Patents-in-Suit. But this is also a case where AGIS’s own command and control product
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 11 of 32 PageID #: 18707
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`(LifeRing) invalidates the asserted patents. And because of a break in the priority chain in
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`AGIS’s many continuations-in-part, one of AGIS’s own patents renders the ’055, ’251, and ’838
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`patents invalid.
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`To the extent AGIS is entitled to damages, its damages model suffers from several legal
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`deficiencies. First, the earliest date of infringement in this case is August 2, 2013 when Google
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`released the Find My Device application, not July 2, 2012 when the ’970 patent issued. A party
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`is not entitled to damages just because a patent issues, there needs to be a product that actually
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`infringes, and by its own allegations in this case, the only possible product is Find My Device
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`which was not released until August 2013. Second, AGIS’s damages theory is completely
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`disassociated from what actually drives consumer demand for HTC Corp.’s phones. HTC Corp.
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`is a hardware company, and the key features HTC Corp. promotes and that its customers care
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`about are hardware related. AGIS completely ignores all of this evidence, and instead bases its
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`damages theory on Google, Apple, and other third parties’ data completely disassociated from
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`the accused products.
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`AGIS has alleged willful infringement in this case, but has never set forth any facts which
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`support its allegations. While AGIS notified several companies about its patents prior to
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`bringing suit (such as to Google), it is undisputed it never provided any notice to HTC Corp., and
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`HTC Corp. had no knowledge of the Patents-in-Suit before AGIS filed. There is no legitimate
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`basis for a willful finding in this case.
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 12 of 32 PageID #: 18708
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`C.
`
`CONTENTIONS OF THE PARTIES
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`1.
`
`AGIS’s Statement of its Contentions
`
`By providing these contentions, AGIS does not concede that all of these issues are
`
`appropriate for trial. In addition, AGIS does not waive any of its motions in limine.
`
`1.
`
`AGIS has accused HTC phones and tablets of infringing the Asserted Patents. In
`
`particular, AGIS accuses HTC Android-based smartphones and tablets (including, but not
`
`limited to, the Desire 626s, U11, U Ultra, 10, and Bolt) (collectively, the “Accused Devices”).
`
`2.
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`In this case, AGIS contends that HTC is directly infringing and/or indirectly
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`infringing claims 1, 3, 5, and 8 of the ’970 patent under 35 U.S.C. §§ 271 and 281-285, by
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`making, using, offering for sale, selling, and/or importing products with patented AGIS
`
`technology.
`
`3.
`
`AGIS holds all right, title and interest to the ’970 patent and has standing to bring
`
`this suit. AGIS possesses all rights of recovery under the ’970 patent.
`
`4.
`
`In this case, AGIS contends that HTC is directly infringing and/or indirectly
`
`infringing claims 1, 2, 7, 22, 24, 28, 32, 36, 42, 49, and 54 of the ’055 patent under 35 U.S.C.
`
`§§ 271 and 281-285, either literally or, in the alternative, under the doctrine of equivalents, by
`
`making, using, offering for sale, selling, and/or importing products with patented AGIS
`
`technology.
`
`5.
`
`The ’970 patent’s application is a continuation-in-part of application No.
`
`11/612,830, filed on December 19, 2006, now Patent No. 2,853,273, which is a continuation-in-
`
`part of application No. 11/308,648, filed on April 17, 2006, now Patent No. 7,630,724, which is
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`a continuation-in-part of application No. 10/711,490, filed on September 21, 2004, now Patent
`
`No. 7,031,728, and which issued as the ’970 patent.
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`12
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 13 of 32 PageID #: 18709
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`6.
`
`AGIS holds all right, title and interest to the ’055 patent and has standing to bring
`
`this suit. AGIS possesses all rights of recovery under the ’055 patent.
`
`7.
`
`In this case, AGIS contends that HTC is directly infringing and/or indirectly
`
`infringing claims 1, 5, 6, 12, 15, 19, 24, 27, 29, 31, and 35 of the ’251 patent under 35 U.S.C. §§
`
`271 and 281-285, either literally or, in the alternative, under the doctrine of equivalents, by
`
`making, using, offering for sale, selling, and/or importing products with patented AGIS
`
`technology.
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`8.
`
`The ’055 patent’s application is a continuation of application No. 14/529,978,
`
`filed on October 31, 2014, now Patent No. 8,467,838, which is a continuation-in-part of
`
`application No. 14/027,410, filed on September 16, 2013, now Patent No. 8,880,042, which is a
`
`continuation of application No. 13/751,453, filed on January 28, 2013, now Patent No,
`
`8,538,393, which is a continuation-in-part of application No. 12/761,533, filed on April 16,
`
`2010, now Patent No. 8,364,129, which is a continuation-in-part of application No. 11/615,472,
`
`filed on December 22, 2006, now Patent No. 8,126,441, which is a continuation-in-part of
`
`application No. 11/308,648, filed on April 17, 2006, now Patent No. 7,630,724, which is a
`
`continuation-in-part of application No. 10/711,490, filed on September 21, 2004, now Patent No.
`
`7,031,728, and which issued as the ’055 patent.
`
`9.
`
`AGIS holds all right, title and interest to the ’251 patent and has standing to bring
`
`this suit. AGIS possesses all rights of recovery under the ’251 patent.
`
`10.
`
`The ’251 patent’s application is a continuation of application No. 14/529,978,
`
`filed on October 31, 2014, now Patent No. 9,467,838, which is a continuation-in-part of
`
`application No. 14/027,410, filed on September 16, 2013, now Patent No. 8,880,042, which is a
`
`continuation of application No. 13/751,453, filed on January 28, 2013, now Patent No,
`
`
`
`13
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`

`

`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 14 of 32 PageID #: 18710
`
`8,538,393, which is a continuation-in-part of application No. 12/761,533, filed on April 16,
`
`2010, now Patent No. 8,364,129, which is a continuation-in-part of application No. 11/615,472,
`
`filed on December 22, 2006, now Patent No. 8,126,441, which is a continuation-in-part of
`
`application No. 11/308,648, filed on April 17, 2006, now Patent No. 7,630,724, which is a
`
`continuation-in-part of application No. 10/711,490, filed on September 21, 2004, now Patent No.
`
`7,031,728, and which issued as the ’251 patent.
`
`11.
`
`In this case, AGIS contends that HTC is directly infringing and/or indirectly
`
`infringing claims 1, 5, 7, 10, 15, 18, 19, 20, 27, 38, 40, and 54 of the ’838 patent under 35 U.S.C.
`
`§§ 271 and AGIS technology, either literally or, in the alternative, under the doctrine of
`
`equivalents, by making, using, offering for sale, selling, and/or importing products with patented
`
`AGIS technology.
`
`12.
`
`AGIS holds all right, title and interest to the ’838 patent and has standing to bring
`
`this suit. AGIS possesses all rights of recovery under the ’838 patent.
`
`13.
`
`The ’838 patent’s application is a continuation-in-part of application No.
`
`14/027,410, filed on September 16, 2013, now Patent No. 8,880,042, which is a continuation of
`
`application No. 13/751,453, filed on January 28, 2013, now Patent No, 8,538,393, which is a
`
`continuation-in-part of application No. 12/761,533, filed on April 16, 2010, now Patent No.
`
`8,364,129, which is a continuation-in-part of application No. 11/615,472, filed on December 22,
`
`2006, now Patent No. 8,126,441, which is a continuation-in-part of application No. 11/308,648,
`
`filed on April 17, 2006, now Patent No. 7,630,724, which is a continuation-in-part of application
`
`No. 10/711,490, filed on September 21, 2004, now Patent No. 7,031,728, and which issued as the
`
`’838 patent.
`
`
`
`14
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`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 15 of 32 PageID #: 18711
`
`14.
`
`AGIS contends that it has been damaged by HTC’s conduct and seeks pre-verdict,
`
`post-verdict, and post-judgment damages, and an accounting, if necessary, to compensate for the
`
`infringement by HTC, but in no event less than a reasonable royalty, together with prejudgment
`
`and post-judgment interest and costs as fixed by the Court.
`
`15.
`
`AGIS contends that HTC has willfully infringed the Patents-in-Suit and
`
`accordingly, that it is entitled to enhanced damages.
`
`16.
`
`AGIS contends that this case is exceptional and that AGIS is entitled to
`
`reasonable attorneys’ fees and costs (and consultant fees and costs) pursuant to 35 U.S.C. § 285.
`
`17.
`
`AGIS denies HTC’s defenses and counterclaims and contends that HTC’s
`
`defenses and counterclaims are without merit.
`
`18.
`
`AGIS denies that HTC is entitled to its costs, a declaration that this case is
`
`exceptional and its attorneys’ fees.
`
`2.
`
`1.
`
`HTC Corp.’s Statement of its Contentions
`
`HTC Corp. denies that it directly infringes, either literally or under the doctrine of
`
`equivalents, any claim from any of the Patents-in-Suit, and further contends that AGIS cannot
`
`meet its burden of establishing by a preponderance of the evidence that any valid claim of the
`
`Patents-in-Suit is infringed.
`
`2.
`
`HTC Corp. contends that it is has not made, used, offered for sale, or sold any of
`
`the Accused Devices in the United States. HTC Corp. further contends that it has not imported
`
`any of the Accused Devices into the United States.
`
`3.
`
`HTC Corp. contends that it has not actively induced any other person or entity to
`
`directly infringe the Patents-in-Suit.
`
`
`
`15
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`

`

`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 16 of 32 PageID #: 18712
`
`4.
`
`HTC Corp. contends that all asserted claims of the Patents-in-Suit are invalid
`
`because they are either anticipated by or rendered obvious by one or more prior art references
`
`under 35 U.S.C. §§ 102 and 103.
`
`5.
`
`HTC Corp. contends that all asserted claims of the Patents-in-Suit are invalid
`
`because they claim unpatentable subject matter under 35 U.S.C. § 101.
`
`6.
`
`HTC Corp. contends that, even if at least one claim of the Patents-in-Suit is found
`
`to be valid and infringed, AGIS is not entitled to the relief it is requesting.
`
`7.
`
`HTC Corp. contends that AGIS’s claim for damages is limited based on AGIS’s
`
`failure to comply with 35 U.S.C. § 287 and due to AGIS’s failure to provide actual notice to
`
`HTC Corp. before the filing of its complaint.
`
`8.
`
`HTC Corp. denies that this is an exceptional case for AGIS or that AGIS is
`
`entitled to costs, expenses, or attorney fees under 35 U.S.C. § 285. HTC Corp. contends
`
`however, that this is an exception case in HTC Corp.’s favor and that HTC Corp. is entitled to its
`
`costs, expenses, and attorney fees under 35 U.S.C. § 285.
`
`9.
`
`HTC Corp. denies that AGIS holds all right, title, and interest to the Patents-in-
`
`Suit and has standing to bring this suit.
`
`10.
`
`HTC Corp. denies that it has willfully infringed the Patents-in-Suit and that AGIS
`
`entitled to enhanced damages.
`
`11.
`
`HTC Corp. contends that the ’055, ’251, and ’838 patents are unenforceable due
`
`to the doctrine of unclean hands.
`
`STIPULATIONS AND UNCONTESTED FACTS
`
`3.
`
`1.
`
`Joint Statement of Uncontested Facts
`
`Subject matter jurisdiction is proper in this Court.
`
`
`
`16
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`

`

`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 17 of 32 PageID #: 18713
`
`2.
`
`Plaintiff AGIS filed its Original Complaint against HTC Corp. on June 21, 2017
`
`in the AGIS Software Development LLC v. HTC Corporation, Marshall Division, Civil Action
`
`No. 2:17-cv-00514 case.
`
`3.
`
`The ’970 patent issued on July 3, 2012 and is entitled “Method of Utilizing
`
`Forced Alerts for Interactive Remote Communications.” The application for the ’970 patent was
`
`filed on November 26, 2008.
`
`case.
`
`4.
`
`5.
`
`6.
`
`Claims 1, 3, 5, and 8 of the ’970 patent are at issue and currently asserted in this
`
`The named inventor of the ’970 patent is Malcolm K. Beyer.
`
`The ’055 patent issued on August 2, 2016 and is entitled “Method to Provide Ad
`
`Hoc and Password Protected Digital and Voice Networks.” The application for the ’055 patent
`
`was filed on April 24, 2015.
`
`7.
`
`Claims 1, 2, 7, 22, 24, 28, 32, 36, 42, 49, and 54 of the ’055 patent are at issue and
`
`currently asserted in this case.
`
`8.
`
`9.
`
`The named inventor of the ’055 patent is Malcolm K. Beyer, Jr
`
`The ’251 patent issued on September 13, 2016 and is entitled “Method to Provide
`
`Ad Hoc and Password Protected Digital and Voice Networks.” The application for the ’251
`
`patent was filed February 27, 2015.
`
`10.
`
`Claims 1, 5, 6, 12, 15, 19, 24, 27, 29, 31, and 35 of the ’251 patent are at issue and
`
`currently asserted in this case.
`
`11.
`
`The named inventors of the ’251 patent are Malcolm K. Beyer, Jr. and
`
`Christopher R. Rice.
`
`
`
`17
`
`

`

`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 18 of 32 PageID #: 18714
`
`12.
`
`The ’838 patent issued on October 11, 2016 and is entitled “Method to Provide
`
`Ad Hoc and Password Protected Digital and Voice Networks.” The application for the ’838
`
`patent was filed October 31, 2014.
`
`13.
`
`Claims 1, 5, 7, 10, 15, 18, 19, 20, 27, 38, 40, and 54 of the ’838 patent are at issue
`
`and currently asserted in this case.
`
`14.
`
`The named inventors of the ’838 patent are Malcolm K. Beyer, Jr. and
`
`Christopher R. Rice.
`
`15.
`
`4.
`
`Google released the Android Device Manager no earlier than August 2, 2013.
`
`Proposed Stipulations
`
`a.
`
`The Parties’ Agreed Stipulations
`
`1.
`
`The parties are cooperating to decrease the number of exhibits on their respective
`
`exhibit lists and will exchange amended exhibit lists and objections on dates to be agreed upon
`
`by the parties.
`
`2.
`
`The parties will make available
`
`for
`
`inspection all non-documentary
`
`demonstratives or live product demonstrations, such as physical exhibits, physical prior art or
`
`physical products they plan to use at trial for use during direct examination – but not for cross-
`
`examination – by 6:30 PM one night before their intended use. In other words, if a
`
`demonstrative will be used on a Wednesday, it must be exchanged or made available by 6:30 PM
`
`on the previous Tuesday. The parties shall exchange objections to these non-documentary
`
`demonstratives or live product demonstrations by 7:30 PM the night before their intended use.
`
`The parties will meet and confer to resolve objections by 8:00 PM. The parties will submit any
`
`objections or outstanding disputes to the Court by 9:00 PM. Demonstratives exchanged will not
`
`be used by the opposing party prior to being used by the disclosing party.
`
`
`
`18
`
`

`

`Case 2:17-cv-00514-JRG Document 216 Filed 02/21/19 Page 19 of 32 PageID #: 18715
`
`3.
`
`The