Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 1 of 7 PageID #: 7903
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:21-cv-00072-JRG
`(Lead Case)
`
`CASE NO. 2:21-cv-00026-JRG
`(Member Case)
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`§
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER,
`
`
`DEFENDANT UBER TECHNOLOGIES, INC.’S OBJECTIONS TO THE
`COURT’S CLAIM CONSTRUCTION ORDER
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 2 of 7 PageID #: 7904
`
`
`
`Defendant Uber Technologies, Inc. (“Uber”) respectfully submits its objections to the
`Court’s Claim Construction Order (Dkt. 213). Uber objects to the Court’s constructions of the
`following terms:1
`1.
`cellular
`equipped PDA
`phone”/“similarly
`cellular
`equipped
`“similarly
`phone”/“similarly equipped PDA/cell phone” (’728 Patent, Claim 7, ’724 Patent, Claim 16, ’970
`Patent, Claim 1): These subjective terms are indefinite. The intrinsic evidence fails to provide
`any guidance—let alone objective boundaries—for determining when two cellular phones are
`“similarly equipped.” These claims are therefore indefinite because they “fail to inform, with
`reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
`Biosig Instruments, Inc., 572 U.S. 898, 899 (2014). (Dkt. 156 at 5-9).
`2.
`“said database including the generation of one or more symbols associated with a
`particular participating user” (’724 Patent, Claim 9)2: This claim is indefinite because a POSITA
`would not have understood how a “database” can “include[e] the generation of one or more
`symbols” as the claim requires. (Dkt. 156 at 9-10).
`3.
`“accessing an application program in each cell phone for generating one or more
`symbols representative of one or more participating users, each of whom have a similarly
`equipped cellular phone” (’724 Patent, Claim 9): Section 112, ¶ 6 governs this term because it
`uses purely functional language without reciting sufficient structure to perform the function.
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc). Moreover, this
`term is indefinite because the specification “does not contain an adequate disclosure of the
`structure that corresponds to the claimed function.” Blackboard, Inc. v. Desire2Learn, Inc., 574
`F.3d 1371, 1382 (Fed. Cir. 2009). (Dkt. 156 at 10-13).
`
`
`1 The complete bases for Uber’s constructions are presented in its briefing, exhibits and argument
`presented at the October 21, 2021 claim construction hearing, all of which are hereby incorporated
`by reference.
`
` Uber acknowledges that the Court found claim 9 of the ’724 Patent indefinite for other reasons
`and objects to the construction of other disputed terms within claim 9 of the ’724 Patent only to
`the extent the Court’s indefiniteness holding is withdrawn or overturned.
`
` 2
`
`
`
`1
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 3 of 7 PageID #: 7905
`
`
`
`4.
`“free and operator selected text messages” (’728 Patent, Claim 7): This term is unclear,
`indefinite and ambiguous since a POSITA cannot understand it with reasonable certainty. Neither
`“free” nor “operator selected,” when modifying “text message,” have an established meaning to a
`POSITA, and the intrinsic evidence of the ’728 patent fails to provide any guidance. These two
`terms were first introduced when the applicant amended claim 7 (prosecuted as claim 6) during
`prosecution and did so without providing clarity for these terms. (Dkt. 156 at 16-19).
`5.
`“a forced message alert software application”/“a forced message alert software
`application program” (’970 Patent, Claims 1, 2, 10, 11, 12): The claims, the specification and the
`file history demonstrate that the forced message alert software requires a “manual response” to
`clear the recipient’s display, as Uber proposed in its construction. (Dkt. 156 at 25-27).
`6.
`“a data transmission means that facilitates the transmission of electronic files between
`said PDA/cell phones in different locations” (’970 Patent, Claim 1)3: The parties agreed that this
`term is a means-plus-function limitation and agreed that the function is “facilitat[ing]
`the
`transmission of electronic files between said PDA/cell phones in different locations.” The
`corresponding structure is a “PDA/cell phone programmed to implement transmission of a forced
`message alert using TCP/IP or another communications protocol.” This is supported by the
`specification, which expressly ties the “transmission means” to a PDA or cell phone that uses
`TCP/IP or another communications protocol, and expressly excludes a communications server as
`a necessary component to achieve that function but, instead, recites a PDA/cell phone. (Dkt. 156
`at 27-28).
`7.
`“means for allowing a manual response to be manually selected from the response list
`or manually recorded and transmitting said manual response to the sender PDA/cell phone”
`(’970 Patent, Claim 2): This term, which is governed by § 112, ¶ 6, is indefinite because the patent
`fails to disclose adequate corresponding structure. The portions of the specification relied on by
`AGIS do not disclose any algorithmic structure for performing the agreed function, as is required
`
`
`3 Uber objects only to the Court’s construction of the “structure/algorithm.”
`
`
`
`2
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 4 of 7 PageID #: 7906
`
`
`
`when the function is performed by a general-purpose computer. Triton Tech. of Tex., LLC v.
`Nintendo of Am., Inc., 753 F.3d 1375, 1378–79 (Fed. Cir. 2014). Neither do other portions of the
`specification disclose adequate structure. (Dkt. 156 at 28-31).
`8.
`“transmitting a selected required response from the response list in order to allow the
`message required response list to be cleared from the recipient’s cellphone display” (’970 Patent,
`Claim 10): The transmitted “response” is a manual response. This requirement is based on the sole
`object of the alleged invention, which AGIS has ignored. The requirement for a manual response to
`clear the display is identified as “the invention” in both the specification and the prosecution
`history, where the applicant distinguished it over the prior art and thereby disavowed a broader
`scope. (Dkt. 156 at 31-35).
`9.
`“each representing a different participant that has a cellular phone that includes said
`voice communication, free and operator selected text messages, photograph and video, a CPU,
`said GPS system and a touch display” (’728 Patent, Claim 7): AGIS read this limitation isolated
`from the remainder of the claim language. According to AGIS, this limitation only requires a
`cellular phone that has voice, text, photograph, and video communications capabilities—even if
`such capabilities cannot be accessed using the “established cellular phone communication
`network.” The intrinsic record, however, confirms that this limitation goes to the “heart of the
`invention”—software that enables rapid voice, text, photograph, and video communication over a
`purportedly novel communication network. See, e.g., ’728 Patent at 1:11–12, 3:26–29, 7:61–62.
`Thus, based on the intrinsic evidence, these capabilities of the phone must work over the claimed
`communications network. It would be nonsensical to require the features but not require the
`features to work on the established network. (Dkt. 156 at 35-37).
`10.
`“receiving entity-of-interest data transmitted by the second mobile device, the entity of
`interest data comprising coordinates of a geographical location of a new entity of interest”
`(’1,838 Patent, Claims 1, 14): Uber’s construction adopted the very language used by applicants
`when this limitation was added to the claims to overcome a prior art rejection. This constituted a
`disclaimer. The disclaimer, moreover, was supported by the claims and the specification. Under
`
`
`
`3
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 5 of 7 PageID #: 7907
`
`
`
`the plain language of the claims, for example, the “entity-of-interest data” must include a “new entity
`of interest”—i.e., an entity of interest that did not yet exist in the system or had not yet been
`identified by the user. (Dkt. 156 at 38-39).
`11.
`“obtaining first data provided by a first mobile device corresponding to a vehicle, the
`first data including a first identifier”/“obtaining second data provided by a second mobile device
`corresponding to a vehicle, the second data including a second identifier” (’1,838 Patent, Claims
`1, 14): The claims recite, at a server, obtaining “data” from two devices and “permitting” or
`“allowing” the devices to join a network based upon the obtained data. For the server to allow
`access to the network, the device must identify the network the device wants to join. Identification
`of a network is necessary so that the server knows the network to which the device is allowed
`access. The “data” provides that identification. Indeed, the alleged invention purportedly enables
`the creation of ad hoc networks that first responders can join (by identifying a network name and
`password) so that the first responders can coordinate activities. (Dkt. 156 at 40-42).
`For the reasons stated above and further explained in its briefing and at the Claim
`Construction Hearing, Uber respectfully objects to the Court’s contrary constructions.
`
`
`
`
`
`
`
`4
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 6 of 7 PageID #: 7908
`
`
`
`Respectfully submitted,
`
`Dated: November 24, 2021
`
`
`
`
`
`
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`Texas State Bar No. 16759900
`mreiter@gibsondunn.com
`Robert A. Vincent
`Texas State Bar No. 24056474
`rvincent@gibsondunn.com
`Nathan R. Curtis
`Texas State Bar No. 24078390
`ncurtis@gibsondunn.com
`Ashbey N. Morgan
`Texas State Bar No. 24106339
`anmorgan@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, TX 75201-6912
`Telephone: 214.698.3360
`Facsimile: 214.571.2907
`
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
`Email: melissa@gillamsmithlaw.com
`
`Attorneys for Defendant Uber
`Technologies, Inc. d/b/a Uber
`
`
`
`
`5
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 238 Filed 11/24/21 Page 7 of 7 PageID #: 7909
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 24, 2021, the foregoing was electronically filed in
`
`compliance with Local Rule CV-5(a) and served via the Court’s electronic filing system on all
`
`counsel who have consented to electronic service on this 24th day of November, 2021.
`
`
`
`
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
`
`
`
`6
`
`