Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 1 of 11 PageID #: 3308
`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 1 of 11 PageID #: 3308
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`EXHIBIT C
`EXHIBIT C
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 2 of 11 PageID #: 3309
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`
`
`Plaintiff,
`
`v.
`
`HUAWEI DEVICE USA INC., HUAWEI
`DEVICE CO., LTD. AND HUAWEI
`DEVICE (DONGGUAN) CO., LTD.,
`
`Defendants.
`
`CASE NO. 2:17-CV-0513-JRG
`LEAD CASE
`
`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT, LLC,
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`
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION,
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`Defendant.
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`CASE NO. 2:17-CV-0514-JRG
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`JURY TRIAL DEMANDED
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`DEFENDANT HTC CORPORATION’S
`FIRST SUPPLEMENTAL INITIAL DISCLOSURES
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`Pursuant to Fed. R. Civ. P. 26(a)(1), and the Docket Control and Discovery Order entered
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`in this case, Defendant HTC Corp. supplements its initial disclosures based on the information
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`reasonably available to it at this time. HTC Corp. has moved to dismiss for lack of personal
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`jurisdiction in this case for reasons as set forth in that motion. The service of the following
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`initial disclosures is done subject to HTC Corp.’s motion to dismiss and without waiver of HTC
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`Corp.’s objection to personal jurisdiction in this case.
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`HTC Corp. is continuing its investigation as to relevant documents and witnesses and
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`will, as necessary, further supplement these disclosures in a timely manner as necessary. HTC
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`Corp. reserves the right to supplement, revise, correct, clarify, or otherwise amend the
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 3 of 11 PageID #: 3310
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`information disclosed, consistent with the Federal Rules of Civil Procedure and any applicable
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`orders of the Court, including after HTC Corp. receives and reviews any applicable discovery or
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`other information from third parties or from Plaintiff AGIS Software Development, LLC
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`(“AGIS” or “Plaintiff”).
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`By making these disclosures, HTC Corp. does not intend to waive any applicable
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`privilege or work product protection and expressly reserves its right to object to the production
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`of any of the information identified herein on those grounds. HTC Corp. also reserves its right to
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`object to the admissibility of any of the information disclosed below. Subject to these
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`reservations, HTC Corp. provides the following information:
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`I.
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`Initial disclosures under the discovery order
`“the correct names of the parties to the lawsuit”
`a.
`The correct name of HTC Corp. is listed above. HTC Corp. lacks knowledge as to
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`whether the correct names have been used for other parties to this lawsuit.
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`“the name, address, and telephone number of any potential parties”
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`b.
`HTC Corp. is currently unaware of any potential parties.
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`c.
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`“the legal theories and, in general, the factual bases of the disclosing party’s
`claims or defenses”
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`HTC Corp. has moved to dismiss AGIS’s complaint in this case, and that motion is still
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`pending. Nevertheless, HTC Corp. denies the allegations contained in AGIS’s complaint and
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`contends that AGIS is not entitled to any damages or other relief. HTC Corp. reserves the right
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`to raise additional claims as discovery progresses.
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`HTC Corp. does not, and has not infringed, under any theory of infringement (including
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`directly (whether individually or jointly) or indirectly (whether contributorily or by inducement),
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 4 of 11 PageID #: 3311
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`any valid, enforceable claim of the Patents-in-Suit.1 AGIS’s claims that HTC Corp. indirectly
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`infringes the Patents-in-Suit, either contributorily or by inducement, are barred, in whole or in
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`part, because HTC Corp. is not liable to AGIS for the allegedly infringing acts for any time
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`periods during which HTC Corp. did not know of the Patents-in-Suit and/or did not have the
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`specific intent to cause infringement of the Patents-in-Suit and/or otherwise did not know that
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`their actions would constitute indirect infringement. In addition, any and all products or actions
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`accused of infringement have substantial uses that do not infringe and do not induce or
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`contribute to the infringement of the claims of the Patents-in-Suit.
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`Each asserted claim of the Patents-in-Suit are invalid for failure to comply with one or
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`more of the requirements of United States Code, Title 35, including without limitation,
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`35 U.S.C. §§ 101, 102, 103, and 112, and the rules, regulations, and laws pertaining thereto. The
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`legal theories and general factual bases for invalidity are disclosed in HTC Corp.’s invalidity
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`contentions to be served on AGIS pursuant to P.R. 3-3.
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`AGIS’s claims are barred in whole or in part by the doctrines of prosecution history
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`estoppel and/or prosecution history disclaimer based on statements, representations, and
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`admissions made during the prosecution of the patent applications.
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`AGIS’s claim for damages is limited by 35 U.S.C. § 286. Further, to the extent that
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`AGIS and alleged predecessors-in-interest to the Patents-in-Suit failed to properly mark any of
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`their relevant products, as required by 35 U.S.C. § 287, or otherwise give proper notice that HTC
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`Corp.’s actions allegedly infringed the Patents-in-Suit, HTC Corp. is not liable to AGIS for the
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`acts alleged to have been performed before it received actual notice that it was allegedly
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`1 “Patents-in-Suit” refers to U.S. Pat. Nos. 8,213,970 (the “’970 patent”); 9,408,055 (the
`“’055 patent”); 9,445,251 (the “’251 patent”); and 9,467,838 (the “’838 patent”).
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 5 of 11 PageID #: 3312
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`infringing the Patents-in-Suit.
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`AGIS is not entitled to any damages in this case, nor is AGIS entitled to any enhanced
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`damages or attorneys’ fees. Should AGIS make a specific claim for damages, HTC Corp.
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`reserves the right to challenge any such claim. It is also HTC Corp.’s position that AGIS is not
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`entitled to any injunctive relief in this case. AGIS’s claims for injunctive relief are barred
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`because there exist adequate remedies at law and because AGIS’s claims otherwise fail to meet
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`the requirements for such relief. In addition, 35 U.S.C. § 288 bars AGIS from recovering costs
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`associated with this action.
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`HTC Corp. seeks reimbursement of all costs and expenses, including reasonable
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`attorneys’ fees incurred as a result of this action. HTC Corp. reserves the right to assert any
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`additional damage claims, including sanctions, if appropriate, against AGIS at a later stage in
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`this case. Such costs and expenses continue to accrue, and therefore an exact computation
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`thereof cannot be performed at this time.
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`d.
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`“the name, address, and telephone number of persons having knowledge of
`relevant facts, a brief statement of each identified person’s connection with
`the case, and a brief, fair summary of the substance of the information
`known by any such person”
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`Based on currently known information, HTC Corp. believes the following individuals
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`may have discoverable information. These individuals are identified based upon HTC Corp.’s
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`current understanding of the lawsuit, and HTC Corp. expressly reserves the right to supplement,
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`limit, or otherwise amend the list below as the case progresses. Any HTC Corp. employee listed
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`in these disclosures, or in any supplement thereto, may only be contacted through HTC Corp.’s
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`counsel of record.
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`Name
`Malcolm Beyer Jr.
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`Contact Information
`Known to Plaintiff
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`Subjects
`Patents-in-Suit; prosecution
`of the Patents-in-Suit;
`conception and reduction to
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 6 of 11 PageID #: 3313
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`Name
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`Contact Information
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`Christopher Rice
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`Known to Plaintiff
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`Margaret Beyer
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`Known to Plaintiff
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`Sandell Blackwell
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`Known to Plaintiff
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`Malcolm Beyer II
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`Known to Plaintiff
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`Ronald Wisneski
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`Known to Plaintiff
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`Barry Haley
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`Goodwin Proctor LLP
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`Malin, Haley & DiMaggio,
`P.A. 1936 South Andrews
`Ave. Fort Lauderdale, FL
`33316
`100 Northern Avenue
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`Subjects
`practice of the alleged
`inventions; prior art; scope of
`the alleged invention;
`invalidity, ownership, and
`unenforceability of the
`Patents-in-Suit; AGIS and its
`parents’ and affiliates’
`businesses, alleged damages,
`products, and
`communications with third
`parties regarding AGIS’s
`patents.
`The ’838 and ’251 patents
`prosecution of the ’838 and
`’251 patents; conception and
`reduction to practice of the
`alleged inventions; prior art;
`scope of the alleged
`invention; invalidity,
`ownership, and
`unenforceability of the ’838
`and ’251 patents; AGIS and
`its parents’ and affiliates’
`businesses, alleged damages,
`products, and
`communications with third
`parties regarding AGIS’s
`patents.
`Knowledge regarding AGIS
`and its parents’ and affiliates’
`businesses.
`Knowledge regarding AGIS
`and its parents’ and affiliates’
`businesses.
`Knowledge regarding AGIS
`and its parents’ and affiliates’
`businesses.
`Knowledge regarding AGIS,
`and its predecessors’ and
`affiliates’ businesses.
`Prosecution of the Patents-in-
`Suit.
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`Prosecution of the Patents-in-
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 7 of 11 PageID #: 3314
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`Name
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`Daniel Burns
`
`Steven Teng
`Assistant Manager of
`Software Engineering
`HTC Corp.
`Lynn Yu
`Senior Director, Legal
`HTC Corp.
`
`Mei Wang
`Principal Engineer
`HTC Corp.
`
`Hsui Lai
`Assistant Vice President,
`Accounting and Tax
`HTC Corp.
`Nigel Newby-House
`Associate Vice President,
`Product Planning & Go-To-
`Market
`Third-party HTC America,
`Inc.
`As yet unidentified third-
`party Google LLC witnesses
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`As yet unidentified third-
`party Google Inc. witnesses
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`Drew Rowny
`Project Manager, Android
`Messages
`Google LLC
`Andrew Lee
`Technical Lead, Google
`Hangouts
`Google LLC
`Brian Johnson
`Technical Lead, Google Plus
`Google LLC
`Abeer Dubey
`Director, People Analytics
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`Contact Information
`Boston, MA 02210
`Futurewei Technologies, Inc.
`2330 Central Expressway
`Santa Clara, CA 95050
`Perkins Coie LLP
`11988 El Camino Real,
`Suite 350
`San Diego, CA 92130-2594
`Perkins Coie LLP
`11988 El Camino Real,
`Suite 350
`San Diego, CA 92130-2594
`Perkins Coie LLP
`11988 El Camino Real,
`Suite 350
`San Diego, CA 92130-2594
`Perkins Coie LLP
`11988 El Camino Real,
`Suite 350
`San Diego, CA 92130-2594
`Perkins Coie LLP
`11988 El Camino Real,
`Suite 350
`San Diego, CA 92130-2594
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`Subjects
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`Suit.
`Prosecution of the Patents-in-
`Suit.
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`Knowledge regarding accused
`products.
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`Information related to HTC
`Corp.’s licenses.
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`Knowledge regarding accused
`products.
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`Financials related to sales of
`HTC Corp.’s products.
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`Marketing and promotion of
`the accused products.
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`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
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`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding Google
`products and business.
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 8 of 11 PageID #: 3315
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`Name
`Google LLC
`Andrew Oplinger
`Technical Lead, Google
`Maps
`Google LLC
`Daniel Resnick
`Technical Lead, Google
`Maps
`Google LLC
`Tom Green,
`Technical Program Manager,
`Google Maps
`Google LLC
`William Luh,
`Technical Lead, Find My
`Device
`Google LLC
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`Contact Information
`United States
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
`
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`United States
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`Subjects
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`Knowledge regarding accused
`functionality.
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`In addition to the above-listed individuals, HTC Corp. incorporates by reference the
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`individuals identified by AGIS in its Rule 26(a)(1) disclosures, all individuals identified by any
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`party in Case Nos. 2:17-513, 515, 516, and 517, or disclosed by any other party to this case as if
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`fully set forth herein.
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`HTC Corp. also expects to discover the identities of additional individuals employed by
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`or related to AGIS, as well as third parties, who have knowledge of the scope, validity,
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`enforceability, construction, and ownership of the Patents-in-Suit, and relevant prior art to the
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`same. Such individuals may include HTC Corp.’s expert witnesses, who will be disclosed at the
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`time and in the manner provided by the Court. HTC Corp. also expects to discover the identities
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`of additional individuals employed by third parties, including Google LLC, Google Inc., and
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`HTC America, Inc., who may have knowledge of the operation of the accused functionality,
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`sales, or marketing of the accused products.
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`HTC Corp. expressly reserves the right to supplement this witness list as further
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`investigations and discovery continue.
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 9 of 11 PageID #: 3316
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`e.
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`“any indemnity and insuring agreements under which any person or entity
`carrying on an insurance business may be liable to satisfy part or all of a
`judgment entered in this action or to indemnify or reimburse for payments
`made to satisfy the judgment”
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`HTC Corp. is not currently aware of the existence of any insurance agreement under
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`which an insurance business may be liable to satisfy part or all of a judgment on AGIS’s claims
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`entered in this action, or to indemnify or reimburse for payments made to satisfy the judgment.
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`“any settlement agreements relevant to the subject matter of this action”
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`f.
`HTC Corp. is currently unaware of settlement agreements relevant to the subject matter
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`of this action.
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`“any statement of any party to the litigation”
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`g.
`HTC Corp. is currently unaware of any statements on behalf of HTC Corp. other than
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`those filed with this court or served upon counsel of record.
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 10 of 11 PageID #: 3317
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`Dated: July 18, 2018
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`Respectfully submitted,
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`/s/ Miguel J. Bombach
`Matthew C. Bernstein, (Lead Attorney)
`CA State Bar No. 199240
`mbernstein@perkinscoie.com
`Miguel J. Bombach
`CA State Bar No. 274287
`mbombach@perkinscoie.com
`James Young Hurt (Pro Hac Vice)
`CA State Bar No. 312390
`jhurt@perkinscoie.com
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130-2594
`Tel: (858) 720-5700
`Fax: (858) 720-5799
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`Eric Findlay
`State Bar No. 00789886
`efindlay@findlaycraft.com
`FINDLAY CRAFT, P.C.
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
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`ATTORNEYS FOR DEFENDANT
`HTC CORPORATION
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`Case 2:17-cv-00514-JRG Document 74-3 Filed 09/24/18 Page 11 of 11 PageID #: 3318
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 18, 2018, the forgoing document was served via e-mail upon
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`counsel for Plaintiff AGIS Software Development LLC.
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`/s/ Miguel J. Bombach
` Miguel J. Bombach
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`140571806.1
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