Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 1 of 38 PageID #: 19068
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
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`
`
`v.
`
`
`HTC CORPORATION,
`
`
`Defendant.
`
`LG ELECTRONICS INC.,
`
`
`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
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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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 SUMMARY JUDGMENT
`OF NON-INFRINGEMENT (DKT. 119)
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`

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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 2 of 38 PageID #: 19069
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`
`I.
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`INTRODUCTION .............................................................................................................. 1
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`TABLE OF CONTENTS
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`Page(s)
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`II.
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`COUNTERSTATEMENT OF ISSUES TO BE DECIDED BY THE COURT ................ 2
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`III.
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`COUNTERSTATEMENT OF UNDISPUTED MATERIAL FACTS .............................. 2
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`IV.
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`LEGAL STANDARD ....................................................................................................... 13
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`A.
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`B.
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`C.
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`Summary Judgement ............................................................................................. 13
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`Direct Infringement ............................................................................................... 13
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`Indirect Infringement ............................................................................................ 14
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`V.
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`ARGUMENT .................................................................................................................... 15
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`A.
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`A Genuine Issue of Material Fact Exists as to Whether LGEKR has
`Directly Infringed the Patents-In-Suit in the United States .................................. 15
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`1.
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`A Genuine Issue Exists as to Whether LGEKR Sells and
`Imports the Accused Devices in the United States ....................... 15
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`(a)
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`The Evidence on the Record Supports a Genuine
`Issue of Fact ...................................................................... 15
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`2.
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`3.
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`4.
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`(b)
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`LGEKR is Incorrect as a Matter of Law ........................... 18
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`A Genuine Issue Exists as to Whether LGEKR Offers
`Accused Devices for Sale in the United States ............................. 21
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`A Genuine Issue Exists as to Whether LGEKR Uses the
`Patented Invention in by Testing Accused Functionalities
`in the United States ....................................................................... 22
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`A Genuine Issue Exists as to Whether LGEKR Makes the
`Patented Invention through its Software Updates in the
`United States ................................................................................. 23
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`B.
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`C.
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`A Genuine Issue of Material Fact Exists as to Whether LGEKR’s
`Subsidiaries are its Agents, such that their Acts of Infringement are
`Imputed to LGEKR through the Corporate Veil ................................................... 24
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`A Genuine Issue of Material Fact Exists as to Whether LGEKR has
`Indirectly Infringed the Patents-In-Suit ................................................................ 25
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`i
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 3 of 38 PageID #: 19070
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`1.
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`LGEKR has the requisite knowledge under §271(b) or
`was willfully blind ........................................................................ 26
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`2.
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`LGEKR Encouraged Infringement ............................................... 28
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`VI.
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`CONCLUSION ................................................................................................................. 29
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`ii
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 4 of 38 PageID #: 19071
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`TABLE OF AUTHORITIES
`
`
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`Page(s)
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`Cases
`
`A. Stucki Co. v. Worthington Industries, Inc.,
`849 F.2d 593 (Fed. Cir. 1988)..................................................................................................14
`
`Akamai Technologies, Inc. v. Limelight Networks, Inc.,
`797 F.3d 1020 (Fed. Cir. 2015)................................................................................................14
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) .....................................................................................................13, 18, 27
`
`Chalumeau Power Sys. LLC v. Alcatel–Lucent,
`No. 11-1175-RGA, 2012 WL 6968938 (D. Del. July 18, 2012) .............................................27
`
`Commil USA, LLC v. Cisco Sys., Inc.,
`135 S. Ct. 1920 (2015) .......................................................................................................14, 26
`
`DermaFocus LLC v.Ulthera, Inc.,
`201 F. Supp. 3d 465, 471 (D. Del. 2016) .................................................................................27
`
`Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) .....................................................................................................14, 15, 27
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`831 F.3d 1369 (Fed. Cir. 2016)..........................................................................................18, 19
`
`Insituform Technologies, Inc. v. CAT Contracting, Inc.,
`385 F.3d 1360 (Fed. Cir. 2004)..........................................................................................14, 24
`
`Manville Sales Corp. v. Paramount Systems, Inc.,
`917 F.2d 544 (Fed. Cir. 1990)..................................................................................................14
`
`Medicines Company v. Hospira, Inc.,
`827 F.3d 1363 (Fed. Cir. 2016)................................................................................................18
`
`North American Philips Corp. v. American Vending Sales, Inc.,
`35 F.3d 1576 (Fed. Cir. 1994)............................................................................................13, 18
`
`Pfaff v. Wells Elecs. Inc.,
`525 U.S. 55 (1998) ...................................................................................................................21
`
`Rotec Industries, Inc., v. Mitsubishi Corp.,
`215 F.3d 1246 (Fed. Cir. 2000)................................................................................................21
`
`iii
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 5 of 38 PageID #: 19072
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`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296 (Fed. Cir. 2010)........................................................................................ passim
`
`U.S. v. Central Gulf Lines, Inc.,
`747 F.2d 315 (5th Cir., 1982) ..................................................................................................17
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`Vivid Techs. v. Am. Sci. & Eng’g., Inc.,
`200 F.3d 795 (Fed. Cir. 1999)............................................................................................13, 18
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`VWP of America, Inc v. U.S.,
`175 F.3d 1327 (Fed. Cir. 1999)................................................................................................17
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`Wing Shing Products (BVI), Ltd v. Simatelex Manufactory Co., Ltd.,
`479 F.Supp.2d 388 (S.D. N.Y. 2007).......................................................................................20
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`Statutes
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`35 U.S.C. 271(a) ............................................................................................................................13
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`35 U.S.C. § 271(a), (b) .....................................................................................................................2
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`35 U.S.C. § 271(b) ................................................................................................................. passim
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`UCC §7-309 ...................................................................................................................................16
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`Other Authorities
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`Restatement (Second) of Contracts § 24 ........................................................................................21
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`iv
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 6 of 38 PageID #: 19073
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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 (“LGEKR”) Sealed Motion for Summary Judgment of Non-
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`Infringement (Dkt. 119).
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`I.
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`INTRODUCTION
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`A genuine issue of material fact exists as to LGEKR’s direct and indirect infringement of
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`the patents-in-suit. LGEKR presents conclusory statements of disputed legal issues as
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`“undisputed facts,” supported only by the declarations of two employees – one prepared
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`expressly for this motion, and another recast from LGEKR’s Motion to Dismiss. LGEKR
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`presents a range of arguments against the merits of AGIS’ case, based on disputed issues. But
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`LGEKR has not met its burden to show the absence of genuine issues of material fact on any
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`issue of infringement herein; a reasonable jury can still conclude that LGEKR directly and
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`indirectly1 infringes the patents-in-suit. LGEKR’s shipping documents suggest that it imports
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`and sells the Accused Devices in the United States, and LGEKR’s own witnesses testified that it
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`imports the Accused Products into the United States prior to selling them. Infra V.A.1. LGEKR
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`claims that it could not locate highly probative agreements with its subsidiaries, despite
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`testimony that such documents exist. Id. LGEKR concedes that it provides Android OS updates
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`to its largest customers, and cannot credibly dispute that it encourages customers do download
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`further updates from the LG Update Center. Infra V.A.3-4. Additionally, LGEKR’s subsidiaries
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`are mere business conduits without corporate existences of their own, such that a jury could
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`properly impute infringement through the corporate veil. Infra V.B. Furthermore, LG has cited
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`the patents in suit or members of their family at least nine times, providing a multitude of
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`inferences upon which a jury could conclude that it had knowledge of the patents or was
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`1 AGIS previously dropped its assertions under 271(c), thus LGEKR’s demand for summary judgement on this ground is moot.
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 7 of 38 PageID #: 19074
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`willfully blind. Infra V.C. These disputed issues are uniformly improper for summary
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`judgement.
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`Thus, AGIS, its evidence to be believed, and drawing all justifiable inferences in its
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`favor, has presented evidence sufficient for a reasonable jury to find in its favor on every issue of
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`direct and indirect infringement.
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`II.
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`COUNTERSTATEMENT OF ISSUES TO BE DECIDED BY THE COURT
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`Whether LGEKR is entitled to summary judgment as to U.S. Patent Nos. 8,213,970,
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`9,408,055, 9,445,251, and 9,467,838, where LGEKR has not committed any acts of infringement
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`under 35 U.S.C. § 271(a), (b), or (c).
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`Response: Whether LGEKR’s transmission of software updates and upgrades to Accused
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`Devices in the United States constitutes “making” under 271(a); Whether LGEKR sells the
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`Accused Devices to its subsidiaries in the United States; Whether LGEKR offers the Accused
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`Devices for sale to its subsidiaries in the United States; Whether LGEKR imports the Accused
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`Devices to the United States prior to transferring them to its subsidiaries; Whether LGEKR tests
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`or otherwise uses the Accused Devices in the United States; Whether LGEKR’s subsidiaries are
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`its agents such that their acts of direct infringement are imputed through the corporate veil;
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`Whether LGEKR had the requisite knowledge of the patents in suit for infringement under
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`271(b); Whether LGEKR’s was willfully blind, and whether that willful blindness shows that it
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`had the knowledge requisite for 271(b); Whether LGEKR encouraged end users to use the
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`Accused Devices to practice the patented invention.
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`III. COUNTERSTATEMENT OF UNDISPUTED MATERIAL FACTS
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`LGEKR’s statements of fact numbered 1-2, and 4 regarding the date of filing of this suit,
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`the patents-in-suit, and AGIS’ assertion of direct and indirect infringement are undisputed.
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`2
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 8 of 38 PageID #: 19075
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`AGIS has contended that one or more claims of the Patents-in-Suit are infringed by LG-branded
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`products manufactured, used, or sold during and after 2011, including certain phones and tablets,
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`that (1) utilize certain versions of the Android mobile operating system; (2) have installed the
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`following Android-based applications and/or software: Android Device Manager, Find My
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`Phone, Find My Device, Google Latitude, Google Plus, Google Hangouts, Google Maps, Google
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`Assistant, Google Search, Google Messages, Android Messenger, Google Allo, Google Duo,
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`Gmail, and Google Chrome (the “Accused Applications”); and/or (3) participate in any networks
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`and/or services related to the execution and/or use of the Android mobile operating system
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`versions and Android-based applications and/or software described above. Ex. 2, December 19,
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`2018 AGIS Infringement Contentions Exhibit A (970) (Amended Final), at A-2 to A-3; Ex. 3,
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`November 28, 2017 AGIS Infringement Contentions Exhibit B (055), at B-2; Ex. 4, November
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`28, 2017 AGIS Infringement Contentions Exhibit C (251), at C- 2; Ex. 5, November 28, 2017
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`AGIS Infringement Contentions Exhibit D (838), at D-2.2 AGIS’s expert, Mr. Joseph
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`McAlexander, has narrowed AGIS’s infringement contention to accused functionality in Google
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`Maps and Find My Device, and, in some limited instances, Google Hangouts or Messages. Ex. 6,
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`McAlexander Report, at 58-119; Attachments A-D.
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`Response: Disputed. Mr. McAlexander’s expert report has not narrowed AGIS’
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`contentions.
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`2 Exhibits referenced in statement of fact sections hereinafter reference those accompanying LG’s Motion, Dkt. 119.
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`3
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 9 of 38 PageID #: 19076
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`LGEKR is a South Korean corporation with its principal place of business in Seoul, Korea.
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`(Declaration of Juseong Ryu (“Ryu Decl.”), filed as Dkt. 119-3, ¶ 3.)
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`Response: Undisputed
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`LGEKR designs, engineers, and manufactures the Accused Devices outside the United States,
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`mostly in South Korea. (Ryu Decl. ¶ 3.)
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`Response: Undisputed, but misleading to the extent that it omits LGEKR’s ongoing role
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`in providing warranty and software support after the devices enter the United States. Ex. 3,
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`Deposition of Cecilia Son, at 114:15-116:1; Ex. 9, 187, 190.
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`LG Electronics MobileComm U.S.A., Inc. (“LGEMU”) was a wholly-owned subsidiary of LG
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`Electronics USA, Inc. (“LGEUS”), which is a wholly-owned subsidiary of LGEKR. (Ryu Decl.
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`¶ 4.) As of August 1, 2018, LGEMU was merged into LGEUS. (Ryu Decl. ¶ 4.).
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`Response: Undisputed.
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` Before August 1, 2018, LGEMU acquired the Accused Devices from LGEKR and imported
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`them into the United States for sale to national phone carriers, retailers, and distributors, who in
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`turn sell those devices to end users throughout the United States. (Ryu Decl. ¶ 6.) LGEMU was
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`the only entity authorized by LGEKR to offer to sell or sell LG-branded mobile devices in the
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`United States. (Id.) Since August 1, 2018, LGEUS acquires the Accused Devices from LGEKR
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`and imports them into the United States for sale to national phone carriers, retailers, and
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`distributors, who in turn sell those devices to end users throughout the United States. (Id.)
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`LGEUS is the only entity authorized by LGEKR to offer to sell or sell LG branded mobile
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`devices in the United States. (Id.)
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`Response: Disputed; It is AGIS’ position that LGEKR is responsible for import, offer for
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`sale, and sale of the accused devices in the United States to its subsidiaries, and for at least offer
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`4
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 10 of 38 PageID #: 19077
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`to sale to subsequent customers.3
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` Moreover, whether acts constitute import, offer
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`for sale, and sale at a given location under 271(a) are legal questions dependent on the resolution
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`of numerous disputed factual issues. See Transocean Offshore Deepwater Drilling, Inc. v.
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`Maersk Contractors USA, Inc., 617 F.3d 1296, 1310-11 (Fed. Cir. 2010). LGEKR improperly
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`presents them as pure “undisputed facts.”
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`3 LGEKR cites only the declaration of Mr. Juseong Ryu, given in support of LG’s failed motion to dismiss, for its “undisputed
`fact”.
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`5
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 11 of 38 PageID #: 19078
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`Before August 1, 2018, LGEMU acquired the Accused Devices from LGEKR and imported
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`them into the United States for sale to national phone carriers, retailers, and distributors, who in
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`turn sell those devices to end users throughout the United States. (Ryu Decl. ¶ 6.) LGEMU was
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`the only entity authorized by LGEKR to offer to sell or sell LG-branded mobile devices in the
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`United States. (Id.) Since August 1, 2018, LGEUS acquires the Accused Devices from LGEKR
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`and imports them into the United States for sale to national phone carriers, retailers, and
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`distributors, who in turn sell those devices to end users throughout the United States. (Id.)
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`LGEUS is the only entity authorized by LGEKR to offer to sell or sell LG branded mobile
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`devices in the United States. (Id.)
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`Response: Disputed. It is AGIS’ position that LGEKR imports the Accused Devices into
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`the United States and sells the Accused Devices to its LGEMU4 after their arrival.5
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` Again, the location of imports and sales is a legal issue dependent
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`on the determination of multiple disputed factual issues raised in this Opposition, not an
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`“undisputed fact”. See Transocean, 617 F.3d at 1310-11.
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` Before August 1, 2018, LGEMU purchased the Accused Devices from LGEKR outside the
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`States. (Ryu Decl. ¶ 8.) Since August 1, 2018, LGEUS purchases the Accused Devices from
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`LGEKR outside the United States. 4 (Id.)
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`4 References to “LGEUMU” hereinafter mean LGEMU prior to August 1, 2018 and LGEUS since August 1, 2018.
`5 LGEKR again relies on Mr. Ryu’s declaration for the assertion that title passes from LGEKR to its subsidiaries overseas to support its
`conclusion.
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`6
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 12 of 38 PageID #: 19079
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`Response: Disputed. It is AGIS’ position that sales from LG to its LGEMU occurred, and
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`continue to occur, within the United States. Shipments of Accused Devices between LG parties
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`(i.e. the delivery of goods) terminate in the United States.
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`issue dependent on determinations of the factual disputes herein, and not an undisputed “fact.”
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` Again, the location of a sale is a disputed legal
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`See Transocean, 617 F.3d at 1310-11.
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` The Accused Devices are shipped to the United
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`States by air. (Ryu Decl. ¶ 8.) Title and risk of loss for the Accused Devices passes to LGEMU
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`outside the United States. (Id.) LGEKR does not have any ownership or title to the Accused
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`Devices at any point within the United States. (Id.) 12. LGEKR does not sell or offer for sale the
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`Accused Devices in the United States. (Ryu Decl. ¶ 7.)
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`Response: Disputed. It is AGIS’ position that title to the Accused Devices passes inside
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`the United States, and that LGEKR hold title until that point.6
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`6 Mr. Ryu, a member of LGEKR’s IP department, stated that it was his “understanding” that LGEUM purchased the devices outside the United
`State, but also conceded that he lacked personal knowledge of the subject, and testified in his personal capacity, rather than on behalf of
`LGEKR.
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`7
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 13 of 38 PageID #: 19080
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` Moreover, the location of title transfer is not dispositive of the location of a sale.
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`See infra 13-14.
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`LGEKR does not sell or offer for sale the Accused Devices in the United States. (Ryu Decl. ¶ 7.)
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`Response: Disputed. As stated supra 4-7, it is AGIS’ position that LGEKR sells and
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`offers for sale the Accused Devices to its subsidiaries in the United States, and further offers
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`such devices for sale to its subsidiaries’ customers. AGIS again disputes LGEKR’s statement on
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`the grounds that sale and offer for sale are disputed legal issues dependent on at least the factual
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`disputes herein, improperly presented as “undisputed facts.” See Transocean, 617 F.3d at 1310-
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`11.
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` The Android operating system (“OS”) and Accused Applications are developed and supplied by
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`non-party Google LLC (“Google”). (Ryu Decl. ¶ 2.)
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`Response: Disputed to the extent that it suggests that LGEKR suggests it does not also
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`supply the operating system to its customers and/or end users.
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`LGEKR obtains the Android OS and certain Android OS applications from Google. (Ryu Decl.
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`¶¶ 2-3.)
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`Response: Undisputed.
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` LGEKR installs Android OS and certain of the Accused Applications it obtains from Google
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`(the Google Mobile Services, or “GMS”, applications) on the Accused Devices outside the
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`United States in Korea.5 (Ryu Decl. ¶¶ 2-3.)
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`Response: Undisputed, however it is AGIS’ position that LGEKR also installs Android
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`OS and certain applications, including GMS and Play Protect, inside the United States via
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`updates and upgrades. LGEKR concedes that it provides these updates at least to major carriers
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`such as Verizon and AT&T. Dkt. 119-2, ¶ 4.
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`8
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 14 of 38 PageID #: 19081
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` Google develops and provides software updates for the Android OS and GMS applications.
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`(Declaration of Yasser Nafei (“Nafei Decl.”), filed as Dkt. 119-2, ¶ 3.)
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`Response: Undisputed, however LGEKR’s statement omits LGEKR’s role in providing
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`those updates to carriers and end users.7
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` Google provides updates of the Android OS to LGEKR in Korea. (Id., ¶ 4.) The Android OS
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`updates for AT&T and Verizon can be downloaded by LGEUS through FTP or disc from
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`LGEKR. (Id.) LGEUS will then distribute those software updates to those major U.S. carriers,
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`who will use their own servers to provide, at their discretion, the Android OS updates to its
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`customer’s device, once those customers elect to download and install them. (Id.) All of the LG
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`Android devices sold through T-Mobile and all but one model of LG Android devices sold
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`through Sprint go through the same Android OS upgrade process as for AT&T and Verizon,
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`except that T-Mobile and Sprint place their respective Android OS upgrades onto Google
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`servers. (Id.) In turn, T-Mobile and Sprint end-users download their Android OS upgrades from
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`Google’s servers. (Id.) For U.S. Cellular and unlocked LG mobile devices, LGEKR stores
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`Android OS upgrades on a server in Korea. (Id.) If and when an Android OS upgrade is
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`available, the end user decides whether to download the software upgrade. (Id.)
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`Response: Disputed. It is AGIS position that LGEKR provides updates to carriers in the
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`United States, including at least Verizon and AT&T, and that end users do not necessarily decide
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`when/whether to download a software update. LGEKR concedes here that it provides at least
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`Verizon and AT&T with Android OS updates, and that it distributes updates to other carriers
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`through its subsidiaries.
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` LGEKR’s statement is also
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`7 Additionally, Mr. Nafei, whose declaration LGEKR cites, testified that he has never interacted with Google in its capacity as the supplier of the
`Android OS, and is “not familiar of the interactions between Google and LG.” Ex. 2, 58:3-16, 80:3-18.
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`9
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 15 of 38 PageID #: 19082
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`misleading to the extent that it suggests that software updates are only downloaded via FTP or
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`disc;
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`No LG entity pushes any Android OS upgrades from LG servers, whether in Korea or in the
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`United States, to Android devices sold by LGEUS in the United States. (Id., ¶ 5.)
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`Response: Disputed. It is AGIS’ position that LG pushes Android OS update at least by
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`giving update prompts to the end user.
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`The LG USA website may provide information about software upgrades, such as versioning and
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`release details, for Android devices sold by LGEUS in the United States, but software downloads
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`are not directly accessible for download or installation on such devices. (Id., ¶ 6.) Notably, the
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`www.lg.com/us website and its contents are owned, operated, and managed by LGEUS, not
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`LGEKR. (Id.)
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`Response: Disputed. LGEKR’s provides Android OS and application software
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`downloads, and encouragement to use those downloads, through the www.lg.com/us website,
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`and through other means such as the LG Update Center. Ex. 11. Manuals included with the
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`Accused Devices provide users with further encouragements to download updates from LGEKR.
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`Ex. 9, 146-47.
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`10
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`

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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 16 of 38 PageID #: 19083
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`With respect to software updates to GMS applications that are pre-installed on LG Android
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`devices during the manufacturing process by LGEKR, Google can directly and does provide
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`those updates to LG Android device end-users in the United States through the Google Play
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`Store. (Id., ¶ 7.) This is also the case for GMS applications that are not pre-installed by LGEKR
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`during the manufacturing of those phones overseas. (Id.) No LG entity is involved in creating
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`and releasing GMS application update packages, which is solely managed by, and is the
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`responsibility of, Google. (Id.) And, no LG entity manages, controls, or is responsible for the
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`Google Play Store. (Id.)
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`
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`Response: Disputed. It is AGIS’ position that at least the Android OS updates that
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`LGEKR provides include updates to GMS applications, and that LGEKR and/or its agents
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`additionally distribute update packages at least through the LG Update Center. See supra 9-10.
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`The Update Center establishes and maintains a connection to Accused Devices located in the US,
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`while transferring instruction and code to update/upgrade and or install the software configured
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`to practice the asserted claims.
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`
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`
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`
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`Google may provide pre-installed GMS applications in the same package as an Android OS
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`update to LGEKR, but these are updates of the OS with applications included that go through the
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`OS update process. (Id. ¶ 4.) No GMS application updates are ever available for download
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`through the LG.com U.S. website. (Id. ¶ 7.)
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`
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`Response: Disputed. It is AGIS’ position that installing an update package from Google
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`also installs the GMS applications,
`
`
`
` It is AGIS’ position that installing an
`
`11
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`

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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 17 of 38 PageID #: 19084
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`OS update with included applications necessarily involves installation of those applications, and
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`further, that the normal update process involves replacing the instances of those applications on
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`the end user’s phone with the more recent versions included on the Android OS Update package.
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`. It is further AGIS’ position that LGEKR directs users to download updates through the LG
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`website, and through other means such as manuals included with the Accused Devices. See Ex.
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`9; Ex. 11.
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`A late-2018 article mentions a new LG “Software Update Center” in Seoul, South Korea. (Id., ¶
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`8.) The “Software Update Center” does not have dedicated servers that distribute or push out OS
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`updates directly to LG mobile devices sold in the United States. (Id.) It does not and cannot
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`replace or supplant the process and protocol described above for how LG mobile devices sold in
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`the United States will receive Android OS or GMS application updates, which occur at the
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`discretion and control of U.S. carriers. (Id.)
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`
`
`Response: Disputed. It is AGIS’ position that regardless of whether the LG Software
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`Update Center has dedicated servers, the LG Software Update Center provides updates and
`
`upgrades to Accused Devices in the United States by establishing a connection to a given
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`Accused Device in the United States and maintaining that connection for the duration required to
`
`update or upgrade the Accused Device. LGEKR’s response is misleading to the extent that it
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`suggests that this process requires “dedicated” servers, and irrelevant to the extent that it
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`suggests that the process need to “supplant” other software update mechanisms implemented
`
`through carriers to infringe. It is further AGIS’ position that the LG Software Update Center was
`
`in operation prior to the late 2018 article that LGEKR cites in its motion, which refers to a
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`“Global Software Upgrade Center.” Moreover, LGEKR manuals provide instructions for
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`updating/upgrading the Accused Devices through the Update Center, and Carriers instruct users
`
`12
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 18 of 38 PageID #: 19085
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`to download updates from the Update Center.
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`
`
`IV.
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`LEGAL STANDARD
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`A.
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`Summary Judgement
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`
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`
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`A movant for summary judgment must satisfy its heavy initial burden “either by
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`providing evidence that negates an essential element of [AGIS’s] case, or by showing that the
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`evidence on file . . . establishes no material issue of fact and that [AGIS] will not be able to
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`prove an essential element of its case,” and must show that “the judgement is correct as a matter
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`of law.” Vivid Techs. v. Am. Sci. & Eng’g., Inc., 200 F.3d 795, 807 (Fed. Cir. 1999) (citations
`
`omitted). “Summary judgment will not lie if the dispute about a material fact is “genuine,” that
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`is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). In deciding whether a genuine issue
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`of material fact exists, “[t]he evidence of the non-movant is to be believed, and all justifiable
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`inferences are to be drawn in his favor.” Id. at 255.
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`B.
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`Direct Infringement
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`
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`35 U.S.C. 271(a) provides that an actor is liable for direct infringement if the actor
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`“makes, uses, offers to sell, or sells any patented invention, within the United States or imports
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`into the United States any patented invention.” The location at which a “sale,” and by extension
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`an “import,” occurs is not controlled by the location at which title to a good passes. North
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`American Philips Corp. v. American Vending Sales, Inc., 35 F.3d 1576, 1579-80 (Fed. Cir. 1994)
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`(“even if we were to conclude that a ‘mechanical test’ might be appropriate here for some
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`reason, appellee has failed to explain why the criterion should be the place where legal title
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`passes rather than the more familiar places of contracting and performance . . . Appellees have
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`13
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`Case 2:17-cv-00514-JRG Document 219 Filed 02/21/19 Page 19 of 38 PageID #: 19086
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`pointed to no policy that would be furthered by according controlling significance to the passage
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`of legal title here.”). “A ‘sale’ is not limited to the transfer of tangible property; a sale may also
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`be the agreement by which such a transfer takes place.” Transocean, 617 F.3d at 1311.
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`Moreover, the location of an offer to sell is not “the location of the offer, but rather the location
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`of the future sale that would occur pursuant to the offer.” Id. at 1309.
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`
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`Further, “an actor is liable for infringement under § 271(a) if it acts through an agent
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`(applying traditional agency principles).” Akamai Technologies, Inc. v. Limelight Networks, Inc.,
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`797 F.3d 1020, 1023 (Fed. Cir. 2015). Acts of infringement by a subsidiary are imputed through
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`the corporate veil if the subsidiary corporation is an “alter ego” of the parent. Insituform
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`Technologies, Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1380 (Fed. Cir. 2004); Manville
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`Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 553 (Fed. Cir. 1990); A. Stucki Co. v.
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`Worthington Industries, Inc., 849 F.2d 593, 596 (Fed. Cir. 1988). The alter ego determination in
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`patent cases is governed by regional circuit law. Insituform Technologies, Inc. v. CAT
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`Contracting, Inc., 385 F.3d 1360, 1380 (Fed. Cir. 2004). Under Texas alter ego law, “the court
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`may disregard the corporate form ‘where a corporation is organized and operated as a mere tool
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`or business conduit’ for another entity.” Id. at 1381.
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`C.
`