Case 2:17-cv-00516-JRG Document 20 Filed 08/28/17 Page 1 of 14 PageID #: 138
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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,
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`Plaintiff,
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`Civil Action No. 2:17-CV-516-JRG
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`v.
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`APPLE INC.,
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`Defendant.
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`APPLE’S ANSWER TO AGIS’S ORIGINAL COMPLAINT FOR PATENT
`INFRINGEMENT
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`Defendant Apple Inc. (“Apple”) answers Plaintiff’s Original Complaint for Patent
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`Infringement (“Complaint”) filed by AGIS Software Development LLC (“AGIS”) (D.I. 1) as
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`follows:
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`THE PARTIES1
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`1.
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`Apple has insufficient knowledge or information to admit or deny the allegations
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`in Complaint paragraph 1 and on that basis denies all such allegations.
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`2.
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`Apple admits that it is a corporation organized and existing under the laws of
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`California and has a principal place of business at 1 Infinite Loop, Cupertino, California 95014.
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`Apple admits that it has retail stores at 2601 Preston Road, Frisco, Texas, and 6121 West Park
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`Boulevard, Plano, Texas, as well as other locations in Texas. Apple admits that it offers and
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`sells its products and/or services, including those accused herein of infringement, to customers
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`and potential customers located in Texas, including in the judicial Eastern District of Texas.
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`1 For clarity and ease of reference, Apple repeats herein the section headers recited in AGIS’s
`Complaint. To the extent any section header is construed to be a factual allegation, Apple denies
`any and all such allegations.
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`

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`Apple admits that it may be served with process through its registered agent for service in Texas:
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`CT Corporation System, 1999 Bryant Street, Suite 900, Dallas, Texas 75201. To the extent any
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`factual allegations remain in the Complaint paragraph 2, Apple denies them.
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`JURISDICTION AND VENUE
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`3.
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`Apple admits that AGIS purports to bring an action for patent infringement.
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`Apple states that the remaining allegations in the Complaint paragraph 3 contain legal
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`conclusions that require no answer. To the extent an answer is required, Apple denies that any
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`factual or legal basis exists for any of AGIS’s claims against Apple in this action, or that AGIS is
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`entitled to any relief whatsoever from Apple or this Court. To the extent any factual allegations
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`remain in the Complaint paragraph 3, Apple denies them.
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`4.
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`Apple admits that it has retail stores in the Eastern District of Texas. Apple
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`admits that it has transacted business in the Eastern District of Texas. Apple denies that it has
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`committed or induced acts of patent infringement in this judicial district or in any other district.
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`Apple further denies that venue is proper in this District, and further asserts that a District Court
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`in the Northern District of California would be a clearly more convenient venue, and on that
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`additional basis, denies the propriety of venue in this district. To the extent any factual
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`allegations remain in the Complaint paragraph 4, Apple denies them.
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`5.
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`Apple admits that it has conducted business in the Eastern District of Texas.
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`Apple denies that it has committed, induced, or contributed to acts of patent infringement in this
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`judicial district or in any other district. Apple states that the remaining allegations in the
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`Complaint paragraph 5 contain legal conclusions that require no answer. To the extent an
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`answer is required, Apple admits that it is subject to personal jurisdiction in this Court for the
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`purposes of this action, but denies that any factual or legal basis exists for any of AGIS’s claims
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`2
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`

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`against Apple in this action, or that AGIS is entitled to any relief whatsoever from Apple or this
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`Court. To the extent any factual allegations remain in the Complaint paragraph 5, Apple denies
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`them.
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`PATENTS-IN-SUIT
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`6.
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`Apple admits that according to the records of the U.S. Patent and Trademark
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`Office (“USPTO”), on July 3, 2012, the USPTO issued United States Patent No. 8,213,970 (the
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`“’970 patent”), but denies that the ’970 patent was duly and legally issued. Apple admits that the
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`’970 patent
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`is entitled “Method of Utilizing Forced Alerts for Interactive Remote
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`Communications.” Apple admits that, on information and belief, Exhibit A to the Complaint
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`appears to be a copy of the ’970 patent.
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`7.
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`Apple admits that according to the records of the USPTO, on August 2, 2016, the
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`USPTO issued United States Patent No. 9,408,055 (the “’055 patent”), but denies that the ’055
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`patent was duly and legally issued. Apple admits that the ’055 patent is entitled “Method to
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`Provide Ad Hoc and Password Protected Digital and Voice Networks.” Apple admits that, on
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`information and belief, Exhibit B to the Complaint appears to be a copy of the ’055 patent.
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`8.
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`Apple admits that according to the records of the USPTO, on September 13, 2016,
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`the USPTO issued United States Patent No. 9,445,251 (the “’251 patent”), but denies that the
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`’251 patent was duly and legally issued. Apple admits that the ’251 patent is entitled “Method to
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`Provide Ad Hoc and Password Protected Digital and Voice Networks.” Apple admits that, on
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`information and belief, Exhibit C to the Complaint appears to be a copy of the ’251 patent.
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`9.
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`Apple admits that according to the records of the USPTO, on October 11, 2016,
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`the USPTO issued United States Patent No. 9,467,838 (the “’838 patent”), but denies that the
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`’838 patent was duly and legally issued. Apple admits that the ’838 patent is entitled “Method to
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`3
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`

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`Provide Ad Hoc and Password Protected Digital and Voice Networks.” Apple admits that, on
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`information and belief, Exhibit D to the Complaint appears to be a copy of the ’838 patent.
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`FACTUAL ALLEGATIONS
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`10.
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`Apple has insufficient knowledge or information to admit or deny the allegations
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`in Complaint paragraph 10 and on that basis denies all such allegations.
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`11.
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`Apple has insufficient knowledge or information to admit or deny the allegations
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`in Complaint paragraph 11 and on that basis denies all such allegations.
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`12.
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`Apple has insufficient knowledge or information to admit or deny the factual
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`allegations in Complaint paragraph 12 and on that basis denies all such allegations.
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`13.
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`Apple has insufficient knowledge or information to admit or deny the factual
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`allegations in Complaint paragraph 13 and on that basis denies all such allegations.
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`14.
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`Apple admits that it has manufactured, used, sold, offered for sale, and/or
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`imported into the United States iPhone versions 4, 4s, 5, 5s, SE, 6s, 6s+, 7, 7+, and 7 Red, and
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`iPad versions 1 through 3, iPad Air versions 1 and 2, iPad Mini versions 1 through 4, and iPad
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`Pro 9.7, 10.5, and 12.9 (collectively, the “Accused Devices”). Apple denies the remaining
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`factual allegations of the first sentence of Complaint paragraph 14.
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`Apple admits that it
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`currently makes available the Apple Maps, Find My iPhone, Find My Friends, and iMessage
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`apps as components of certain of its iOS operating systems software and as downloads on
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`Apple’s App Store. Apple denies the remaining allegations of Complaint paragraph 14.
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`15.
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`Complaint paragraph 15 contains legal conclusions to which no response is
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`required, at least to the extent Complaint paragraph 15 alleges that the Accused Devices meet the
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`limitations recited in the claims of the Patents-In-Suit. To the extent a response is deemed to be
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`required, Apple denies the allegations of Complaint paragraph 15.
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`4
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`

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`COUNT I
`(Infringement of the ’970 Patent)
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`16.
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`Apple incorporates by reference its responses to Complaint paragraphs 1-15 as if
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`fully set forth herein.
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`17.
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`Apple admits that it has not entered into a license with AGIS concerning the ’970
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`patent. Apple denies any remaining factual allegations of Complaint paragraph 17.
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`18.
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`19.
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`20.
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`21.
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`Apple denies the allegations of Complaint paragraph 18.
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`Apple denies the allegations of Complaint paragraph 19.
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`Apple denies the allegations of Complaint paragraph 20.
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`Apple admits that its website includes certain instructions concerning its Find My
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`iPhone app. Apple denies the remaining allegations of Complaint paragraph 21.
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`22.
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`23.
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`24.
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`Apple denies the allegations of Complaint paragraph 22.
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`Apple denies the allegations of Complaint paragraph 23.
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`Apple denies the allegations of Complaint paragraph 24.
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`COUNT II
`(Infringement of the ’055 Patent)
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`25.
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`Apple incorporates by reference its responses to Complaint paragraphs 1-24 as if
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`fully set forth herein.
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`26.
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`Apple admits that it has not entered into a license with AGIS concerning the ’055
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`patent. Apple denies any remaining factual allegations of Complaint paragraph 26.
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`27.
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`28.
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`29.
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`30.
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`Apple denies the allegations of Complaint paragraph 27.
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`Apple denies the allegations of Complaint paragraph 28.
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`Apple denies the allegations of Complaint paragraph 29.
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`Apple admits that its website includes instructions concerning its Find My Friends
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`app. Apple denies the remaining allegations of Complaint paragraph 30.
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`5
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`Case 2:17-cv-00516-JRG Document 20 Filed 08/28/17 Page 6 of 14 PageID #: 143
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`31.
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`32.
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`33.
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`34.
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`35.
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`36.
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`37.
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`38.
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`Apple denies the allegations of Complaint paragraph 31.
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`Apple denies the allegations of Complaint paragraph 32.
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`Apple denies the allegations of Complaint paragraph 33.
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`Apple denies the allegations of Complaint paragraph 34.
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`Apple denies the allegations of Complaint paragraph 35.
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`Apple denies the allegations of Complaint paragraph 36.
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`Apple denies the allegations of Complaint paragraph 37.
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`Apple denies the allegations of Complaint paragraph 38.
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`COUNT III
`(Infringement of the ’251 Patent)
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`39.
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`Apple incorporates by reference its responses to Complaint paragraphs 1-38 as if
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`fully set forth herein.
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`40.
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`Apple admits that it has not entered into a license with AGIS concerning the ’055
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`patent. Apple denies any remaining factual allegations of Complaint paragraph 40.
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`41.
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`42.
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`43.
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`44.
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`Apple denies the allegations of Complaint paragraph 41.
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`Apple denies the allegations of Complaint paragraph 42.
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`Apple denies the allegations of Complaint paragraph 43.
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`Apple admits that its website includes instructions concerning its Find My Friends
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`app. Apple denies the remaining allegations of Complaint paragraph 44.
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`45.
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`46.
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`47.
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`48.
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`49.
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`Apple denies the allegations of Complaint paragraph 45.
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`Apple denies the allegations of Complaint paragraph 46.
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`Apple denies the allegations of Complaint paragraph 47.
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`Apple denies the allegations of Complaint paragraph 48.
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`Apple denies the allegations of Complaint paragraph 49.
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`6
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`

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`50.
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`51.
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`52.
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`Apple denies the allegations of Complaint paragraph 50.
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`Apple denies the allegations of Complaint paragraph 51.
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`Apple denies the allegations of Complaint paragraph 52.
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`COUNT IV
`(Infringement of the ’838 Patent)
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`53.
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`Apple incorporates by reference its responses to Complaint paragraphs 1-52 as if
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`fully set forth herein.
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`54.
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`Apple admits that it has not entered into a license with AGIS concerning the ’838
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`patent. Apple denies any remaining factual allegations of Complaint paragraph 54.
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`55.
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`56.
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`57.
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`58.
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`Apple denies the allegations of Complaint paragraph 55.
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`Apple denies the allegations of Complaint paragraph 56.
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`Apple denies the allegations of Complaint paragraph 57.
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`Apple admits that its website includes instructions concerning its Find My Friends
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`app. Apple denies the remaining allegations of Complaint paragraph 58.
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`59.
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`60.
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`61.
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`62.
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`63.
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`64.
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`65.
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`66.
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`Apple denies the allegations of Complaint paragraph 59.
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`Apple denies the allegations of Complaint paragraph 60.
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`Apple denies the allegations of Complaint paragraph 61.
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`Apple denies the allegations of Complaint paragraph 62.
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`Apple denies the allegations of Complaint paragraph 63.
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`Apple denies the allegations of Complaint paragraph 64.
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`Apple denies the allegations of Complaint paragraph 65.
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`Apple denies the allegations of Complaint paragraph 66.
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`DEMAND FOR JURY TRIAL
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`Apple hereby demands a jury for all issues so triable.
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`7
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`PRAYER FOR RELIEF
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`Apple denies that AGIS is entitled to any relief, either as prayed for in its Complaint or
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`otherwise.
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`GENERAL DENIAL
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`Apple further denies each and every allegation contained in the Complaint to which
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`Apple has not specifically admitted, denied, or otherwise responded to herein.
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`APPLE’S DEFENSES
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`Apple asserts the following defenses in response to the allegations of the Complaint,
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`undertaking the burden of proof only as to those defenses deemed affirmative defenses by law,
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`regardless of how such defenses are denominated herein. Apple reserves the right to assert any
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`additional defenses as they become known during the course of this action.
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`First Defense – Patent Invalidity
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`AGIS’s purported claims for infringement of the ’970 patent are barred because the
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`claims of the ’970 patent are invalid for failure to comply with the requirements of Title 35,
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`United States Code, including at least §§ 101, 102, 103, and 112.
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`AGIS’s purported claims for infringement of the ’055 patent are barred because the
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`claims of the ’055 patent are invalid for failure to comply with the requirements of Title 35,
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`United States Code, including at least §§ 101, 102, 103, and 112.
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`AGIS’s purported claims for infringement of the ’251 patent are barred because the
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`claims of the ’251 patent are invalid for failure to comply with the requirements of Title 35,
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`United States Code, including at least §§ 101, 102, 103, and 112.
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`8
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`AGIS’s purported claims for infringement of the ’838 patent are barred because the
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`claims of the ’838 patent are invalid for failure to comply with the requirements of Title 35,
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`United States Code, including at least §§ 101, 102, 103, and 112.
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`Second Defense – Non-Infringement
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`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
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`inducement, any valid and enforceable claim of the ’970 patent.
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`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
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`inducement, any valid and enforceable claim of the ’055 patent.
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`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
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`inducement, any valid and enforceable claim of the ’251 patent.
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`Apple does not infringe and has not infringed, directly, indirectly, contributorily or by
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`inducement, any valid and enforceable claim of the ’838 patent.
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`Third Defense – Prosecution History Estoppel and Disclaimer
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`The relief sought by AGIS is barred, in whole or in part, under the doctrines of
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`prosecution history estoppel and prosecution disclaimer due to amendments and/or statements
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`made during prosecution related to the ’970 patent and/or in the specification and claims of the
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`’970 patent.
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`The relief sought by AGIS is barred, in whole or in part, under the doctrines of
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`prosecution history estoppel and prosecution disclaimer due to amendments and/or statements
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`made during prosecution related to the ’055 patent and/or in the specification and claims of the
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`’055 patent.
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`The relief sought by AGIS is barred, in whole or in part, under the doctrines of
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`prosecution history estoppel and prosecution disclaimer due to amendments and/or statements
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`Case 2:17-cv-00516-JRG Document 20 Filed 08/28/17 Page 10 of 14 PageID #: 147
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`made during prosecution related to the ’251 patent and/or in the specification and claims of the
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`’251 patent.
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`The relief sought by AGIS is barred, in whole or in part, under the doctrines of
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`prosecution history estoppel and prosecution disclaimer due to amendments and/or statements
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`made during prosecution related to the ’838 patent and/or in the specification and claims of the
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`’838 patent.
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`Fourth Defense – Prosecution Laches
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`The ’970 patent is unenforceable due to prosecution laches.
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`The ’055 patent is unenforceable due to prosecution laches.
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`The ’251 patent is unenforceable due to prosecution laches.
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`The ’838 patent is unenforceable due to prosecution laches.
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`Fifth Defense – Equitable Doctrines
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`On information and belief, some or all of AGIS’s claims are barred by one or more of the
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`equitable doctrines of waiver, acquiescence, laches, estoppel (including without limitation
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`equitable estoppel and prosecution history estoppel), and/or unclean hands.
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`Sixth Defense – No Entitlement To Injunctive Relief
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`AGIS is not entitled to injunctive relief against Apple under the principles of equity
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`applicable to actions for patent infringement by virtue of 35 U.S.C. § 283. Apple has not
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`infringed and is not infringing the ’970 patent, and the ’970 patent is not valid. Further, any
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`purported injury to AGIS is not immediate and not irreparable, and AGIS will have an adequate
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`remedy at law. Further, the public interest and the balance of hardships disfavors an injunction
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`under the circumstances here.
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`10
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`

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`AGIS is not entitled to injunctive relief against Apple under the principles of equity
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`applicable to actions for patent infringement by virtue of 35 U.S.C. § 283. Apple has not
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`infringed and is not infringing the ’055 patent, and the ’055 patent is not valid. Further, any
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`purported injury to AGIS is not immediate and not irreparable, and AGIS will have an adequate
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`remedy at law. Further, the public interest and the balance of hardships disfavors an injunction
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`under the circumstances here.
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`AGIS is not entitled to injunctive relief against Apple under the principles of equity
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`applicable to actions for patent infringement by virtue of 35 U.S.C. § 283. Apple has not
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`infringed and is not infringing the ’251 patent, and the ’251 patent is not valid. Further, any
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`purported injury to AGIS is not immediate and not irreparable, and AGIS will have an adequate
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`remedy at law. Further, the public interest and the balance of hardships disfavors an injunction
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`under the circumstances here.
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`AGIS is not entitled to injunctive relief against Apple under the principles of equity
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`applicable to actions for patent infringement by virtue of 35 U.S.C. § 283. Apple has not
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`infringed and is not infringing the ’838 patent, and the ’838 patent is not valid. Further, any
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`purported injury to AGIS is not immediate and not irreparable, and AGIS will have an adequate
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`remedy at law. Further, the public interest and the balance of hardships disfavors an injunction
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`under the circumstances here.
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`Seventh Defense – Limitation on Damages and Costs
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`AGIS’s claims for damages is barred, in whole or in part, by 35 U.S.C. § 286 or 287.
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`Moreover, Apple has not engaged in any conduct that would entitle AGIS to a finding that this is
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`an exceptional case, or to an award of enhanced damages, costs, attorneys’ fees, or expenses. To
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`the extent any claims of the Patents-In-Suit is invalid, AGIS is barred from recovering costs by
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`35 U.S.C. § 288.
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`Eighth Defense – Lack of Notice
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`Apple did not have notice of any of the Patents-in-Suit prior to service of the Complaint.
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`For at least this reason, Apple could not have, and did not, indirectly infringe any of the Patents-
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`in-Suit prior to service of the Complaint.
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`Apple did not have notice of any of the Patents-in-Suit prior to service of the Complaint.
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`For at least this reason, Apple could not have, and did not, willfully infringe any of the Patents-
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`in-Suit prior to service of the Complaint.
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`Reservation of Additional Defenses
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`Apple reserves the right to assert additional defenses in the event that discovery or other
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`analysis indicates that additional defenses are appropriate.
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`APPLE’S PRAYER FOR RELIEF
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`Apple respectfully prays for judgment in its favor and against AGIS, and that Apple be
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`granted the following relief:
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`a.
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`b.
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`c.
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`Dismissal with prejudice of AGIS’s Complaint in its entirety;
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`Denial of all remedies and relief sought by AGIS in its Complaint;
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`A finding that this case is exceptional under 35 U.S.C. § 285 and/or other
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`applicable laws, and awarding Apple its costs, expenses, and disbursements
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`in this action, including reasonable attorneys’ fees; and
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`d.
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`Awarding Apple any other and additional relief as this Court deems just
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`and proper.
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`APPLE’S DEMAND FOR JURY TRIAL
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`Apple hereby demands a jury trial on all issues so triable.
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`Dated: August 28, 2017
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`By:
`
`/s/ Melissa R. Smith
`
`Melissa Richards Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`John M. Desmarais (pro hac vice pending)
`Michael P. Stadnick (pro hac vice pending)
`Ameet A. Modi (pro hac vice pending)
`Kerri-Ann Limbeek (pro hac vice pending)
`Brian Matty (pro hac vice pending)
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Tel: (212) 351-3400
`Fax: (212) 351-3401
`Email: jdesmarais@desmaraisllp.com
`Email: mstadnick@desmaraisllp.com
`Email: amodi@desmaraisllp.com
`Email: klimbeek@desmaraisllp.com
`Email: bmatty@desmaraisllp.com
`
`Attorneys for Defendant Apple Inc.
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`Case 2:17-cv-00516-JRG Document 20 Filed 08/28/17 Page 14 of 14 PageID #: 151
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that all counsel of record who are deemed to have
`consented to electronic service are being served with a copy of this document via the Court’s
`CM/ECF system per Local Rule CV-5(a)(3).
`
`/s/ Melissa R. Smith
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`14
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