Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 1 of 10 PageID #: 21313
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`IN THE UNITED STATES DISTRICT COURT FOR
`THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:17-cv-514-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`CASE NO. 2:17-CV-515-JRG
`(Member Case)
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`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
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`§§§§§§§§§
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`§§§§§§§§§
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`§§
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`
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`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION, et al.
`
`Defendant.
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC.
`
`Defendant.
`
`DEFENDANT LG ELECTRONICS INC.’S REPLY IN SUPPORT OF ITS MOTION FOR
`PARTIAL SUMMARY JUDGMENT OF LIMITATION OF DAMAGES
`
`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 2 of 10 PageID #: 21314
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`III.
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`AGIS, NOT LG KOREA, BEARS THE BURDEN OF DEMONSTRATING
`COMPLIANCE WITH § 287 ............................................................................................. 1
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`AGIS ADMITS THAT IT FAILED TO PROPERLY MARK THE LIFERING
`PRODUCT .......................................................................................................................... 2
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`AGIS FAILS TO PROVE THAT IT DID NOT SELL LIFERING BEFORE THE
`FILING OF THIS LAWSUIT ............................................................................................ 3
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`IV.
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`CONCLUSION ................................................................................................................... 4
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`i
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`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 3 of 10 PageID #: 21315
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................1
`
`Maxwell v. J. Baker, Inc.,
`86 F.3d 1098 (Fed. Cir. 1996)....................................................................................................1
`
`Nike Inc. v. Wal–Mart Stores,
`138 F.3d 1437 (Fed.Cir.1998)....................................................................................................1
`
`Statutes
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`35 U.S.C. § 295 ................................................................................................................................3
`
`ii
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`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 4 of 10 PageID #: 21316
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`AGIS’s opposition argues that LG Korea cannot prove that AGIS failed to properly mark
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`its LifeRing products with the numbers for the ’055, ’251 and ’838 Patents (the “Location
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`Sharing Patents”) because AGIS did not sell any of its LifeRing product between issuance of the
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`’055 Patent and commencement of this action. See, e.g., D.I. 189 at 5. AGIS misstates its
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`burden with respect to Section 287, focusing only on “sales” and ignoring that “making” and
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`“offering for sale” also trigger its marking obligation. And even if AGIS’s sales claim were true,
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`AGIS has failed to submit any evidence to support it. As the party with the burden to prove
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`marking, AGIS must put forth evidence showing that a reasonable trier of fact could find that it
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`complied with Section 287. AGIS has not done so. Accordingly, the motion should be granted.
`
`I.
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`AGIS, NOT LG KOREA, BEARS THE BURDEN OF DEMONSTRATING
`COMPLIANCE WITH § 287
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`The patentee has the burden to prove that it complied with Section 287. Maxwell v. J.
`
`Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996); Nike Inc. v. Wal–Mart Stores, 138 F.3d 1437,
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`1446 (Fed. Cir.1998). Further, a party opposing a motion for summary judgment on an issue for
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`which it bears the burden of proof must come forward with admissible evidence upon which a
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`reasonable trier of fact could find in its favor on the issue in question. See Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 256-257 (1986). In a fatal move, AGIS has ignored both its burden
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`with respect to the ultimate issue, and its burden to put forth evidence to defeat the summary
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`judgment motion. AGIS does not dispute that it “made” and “offered for sale” LifeRing
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`products during the relevant time period, and admits that it did not properly mark its products or
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`its website for months after the ’055 Patent issued. D.I. 189, Counter-Statement of Undisputed
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`Material Facts (“CUMF”) at ¶ 2. This concession means summary judgment should be granted.
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`AGIS criticizes LG Korea for alleged failure to adduce testimony
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` AGIS also argues
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`1
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`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 5 of 10 PageID #: 21317
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` But AGIS submits no declarations
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`
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`from any witnesses—or evidence in any form—supporting its claim that it did not make any
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`LifeRing sales during the relevant time period. AGIS never proffers the purported sales and
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`marketing evidence showing marking. AGIS also offers no evidence to support its assertion that
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`“[t]he software for the LifeRing product has been marked with the patent numbers of the
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`Location Sharing Patents since at least March 26, 2017.” Id. at 2. Finally, while AGIS criticizes
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`LG Korea for
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` LG Korea put forth evidence that AGIS did not comply with its
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`marking obligation for the Location Sharing Patents (see D.I. 117, at 7-8), shifting the burden to
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`AGIS. AGIS’s failure to proffer rebuttal evidence means LG Korea’s motion should be granted.
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`II.
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`AGIS ADMITS THAT IT FAILED TO PROPERLY MARK THE LIFERING
`PRODUCT
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`AGIS does not contest that
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`
`
`
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`. Therefore, there is
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`no material issue of fact as to whether the versions of the LifeRing product that were in use after
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`the issuance of the Location Sharing Patents practice at least the ’055 and ’838 patents.
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`AGIS also admits that it did not mark its software with the ’055 Patent until March 26,
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`2017, more than eight months after the issuance of the ’055 Patent. See D.I. 189, CUMF at ¶ 2.
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`1
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`, with full knowledge that its failure to mark was an issue in this case.
`, AGIS should have produced them but did not.
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`2
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`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 6 of 10 PageID #: 21318
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`AGIS further admits that it did not mark its website with the Location Sharing Patents prior to
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`May 17, 2017, one month before commencing this case. See D.I. 117, Statement of Undisputed
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`Material Facts (“SUMF”) at ¶ 9; D.I. 117-18, at 18-19. Therefore, there is no issue of material
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`fact that AGIS failed to mark the LifeRing product with at least the ’055 and ’838 Patents.
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`
`
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` AGIS’s claim
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`directly contradicts its prior representations in this case. As set forth in LG Korea’s Motion,
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`AGIS admitted that the LifeRing product practices the Location Sharing Patents, including at
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`least claim 24 of the ’251 Patent. See D.I. 117, Motion at 2; D.I. 117-8, Ex. F at 4-5. AGIS
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`also, after the filing of this lawsuit, stated on its website that the LifeRing product practiced the
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`’251 Patent. See D.I. 117-18, Ex. P at 18-19. AGIS cannot contradict its prior admissions with
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`respect to the ’251 Patent to evade summary judgment.2
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`III.
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`AGIS FAILS TO PROVE THAT IT DID NOT SELL THE LIFERING PRODUCT
`BEFORE THE FILING OF THIS LAWSUIT
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`AGIS argues that it did not sell versions of the LifeRing product between the 2016
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`issuances of the Location Sharing Patents and the June 21, 2017 filing of this lawsuit. See D.I.
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`189 at 2. AGIS provides no evidentiary support for its statement that it did not make any sales of
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`the LifeRing product in the 2016–2017 period. Therefore, AGIS’s statement is nothing more
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`than unsubstantiated attorney argument. To the contrary, AGIS has already admitted that it made
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`and offered the LifeRing product for sale in that time period. Indeed,
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`
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`2 If AGIS is correct that the LifeRing product does not practice the ‘251 Patent, its prior
`interrogatory response was false. AGIS also may be guilty of false patent marking. The false
`marking statute prohibits marking upon, or affixing to, or using in advertising in connection with
`any unpatented article, the word “patent” or any word or number importing that the same is
`patented, for the purpose of deceiving the public. 35 U.S.C. § 295.
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`3
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`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 7 of 10 PageID #: 21319
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` It is therefore undisputed that AGIS
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`made sales of the LifeRing product after the issuances of the Location Sharing Patents and
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`before filing this lawsuit. Therefore, AGIS must prove that it marked the LifeRing product
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`during this period to recover any damages from before the filing of this lawsuit. It has not.
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`AGIS also argues that LG Korea has not identified “a single product, sale, or even a
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`specific version number of the AGIS product that was not allegedly marked.” D.I. 189 at 7.
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`AGIS provides no support for the proposition that LG Korea’s arguments regarding AGIS’s
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`failure to mark its products must specify individual sales or version numbers. Nevertheless,
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`
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` Therefore, there are no issues of material fact as to the AGIS
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`products sold between the issuances of the Location Sharing Patents and filing of this lawsuit.
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`IV.
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`CONCLUSION
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`Because AGIS failed to properly mark LifeRing with the Location Sharing Patents before
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`filing this lawsuit, LG Korea’s Motion should be granted, and any damages from infringement of
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`the Location Sharing Patents should be limited to the period after the filing of this lawsuit.
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`4
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`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 8 of 10 PageID #: 21320
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`Dated: February 27, 2019
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`Respectfully submitted,
`
`By:
`
`/s/ Michael A. Berta
`J. Mark Mann (SBN: 12926150)
`G. Blake Thompson (SBN: 24042033)
`MANN TINDEL THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`Tel: (903) 657-8540
`mark@themannfirm.com
`blake@themannfirm.com
`
`Michael A. Berta
`ARNOLD & PORTER KAYE SCHOLER LLP
`Three Embarcadero Center, 10th Floor
`San Francisco, CA 94111-4024
`Tel: (415) 471-3277
`Michael.Berta@arnoldporter.com
`
`James S. Blackburn
`Nicholas H. Lee
`Justin J. Chi
`ARNOLD & PORTER KAYE SCHOLER LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4000
`James.Blackburn@arnoldporter.com
`Nicholas.Lee@arnoldporter.com
`Justin.Chi@arnoldporter.com
`
`Bonnie Phan
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306-3807
`Tel: (650) 319-4500
`Bonnie.Phan@arnoldporter.com
`
`Attorneys for Defendant LG Electronics Inc.
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`5
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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 9 of 10 PageID #: 21321
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have
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`consented to electronic services are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on February 27, 2019.
`
`/s/ Michael A. Berta
` Michael A. Berta
`
`
`
`

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`Case 2:17-cv-00514-JRG Document 268 Filed 03/04/19 Page 10 of 10 PageID #: 21322
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
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`pursuant to paragraphs 26 and 27 of the Protective Order entered in this case.
`
`/s/ Michael Berta
`
`