Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 1 of 18 PageID #: 8240
`
`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
`MOTION TO DISMISS U.S. PATENT NO. 8,213,970
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 2 of 18 PageID #: 8241
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION........................................................................................................................1
`
`II. FACTUAL BACKGROUND.....................................................................................................1
`
`A.
`
`B.
`
`The Reexamination Proceedings .............................................................................1
`
`The Proceedings Before This Court ........................................................................5
`
`III. LEGAL STANDARD ...............................................................................................................6
`
`IV. ARGUMENT ............................................................................................................................9
`
`A.
`
`The Scope of the ’970 Patent Claims Substantively Changed During
`Reexamination .........................................................................................................9
`
`V. CONCLUSION.........................................................................................................................11
`
`i
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 3 of 18 PageID #: 8242
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Bloom Eng’g. Co., Inc. v. North American Mfg. Co., Inc.,
`129 F.3d 1247 (Fed. Cir. 1997)............................................................................................9, 11
`
`Cancaribe Limited v. Cobra Int’l, Inc.,
`2012 WL 13001025 (C.D. Cal. Feb. 13, 2012)........................................................................11
`
`Fresenius USA, Inc. v. Baxter Intern., Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)....................................................................................1, 6, 7, 11
`
`Genesis Healthcare Corp. v. Symczyk,
`569 U.S. 66 (2013).....................................................................................................................6
`
`Laitram Corp. v. NEC Corp.,
`163 F.3d 1342 (Fed. Cir. 1998)......................................................................................8, 10, 11
`
`Laitram Corp. v. NEC Corp.,
`952 F.2d 1357 (Fed. Cir. 1991)..............................................................................................7, 8
`
`Lemair Illumination Techs., LLC v. HTC Corp.,
`2019 WL 1489065 (E.D. Tex. April 4, 2019)............................................................................6
`
`MyGo, LLC v. Mission Beach Indus.,
`2018 WL 3438650 (S.D. Cal. July 17, 2018) ............................................................................7
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l., Inc.,
`2017 WL 6206382 (D. Del. Dec. 8, 2017).................................................................................7
`
`R+L Carriers, Inc. v. Qualcomm, Inc.,
`801 F.3d 1346 (Fed. Cir. 2015)............................................................................................8, 11
`
`SHFL Enter., Inc. v. DigiDeal Corp.,
`729 Fed. Appx. 931 (Fed. Cir. 2018).................................................................................6, 7, 8
`
`Target Training Intern., Ltd. v. Extended Disc North America, Inc.,
`645 Fed. Appx. 1018 (Fed. Cir. 2016).......................................................................................7
`
`ii
`
`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 4 of 18 PageID #: 8243
`
`TABLE OF EXHIBITS
`
`Exhibit 5
`
`Exhibit
`Exhibit 1
`
`Document
`Ex Parte Reexamination Certificate for U.S. Patent No. 8,213,970 (“’970
`patent”)
`Exhibit 2 March 3, 2021 Non-Final Office Action
`Exhibit 3 May 17, 2021 Interview Summary Record in Reexam Control No. 90/014,507
`Exhibit 4
`June 3, 2021 Amendment and Reply to Non-Final Office Action in Reexam
`Control No. 90/014,507
`June 3, 2021 Declaration of Dr. Loren Terveen in Support of Reply to Non-Final
`Office Action in Reexam Control No. 90/014,507
`Exhibit 6 August 19, 2021 Final Action in Reexam Control No. 90/014,507
`Exhibit 7
`September 13, 2021 Interview Summary Record in Reexam Control No.
`90/014,507
`Exhibit 8 October 12, 2021 Interview Summary Record in Reexam Control No.
`90/014,507
`Exhibit 9 October 19, 2021 Amendment and Reply to Final Office Action in Reexam
`Control No. 90/014,507
`Exhibit 10 Notice of Intent to Issue Ex Parte Reexamination Certificate in Reexam Control
`No. 90/014,507
`
`iii
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`

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`I. INTRODUCTION
`
`One of the patents— U.S. Patent No. 8,213,970 (“the ’970 patent”)—asserted by Plaintiff
`
`AGIS Software Development LLC (“AGIS”) against Defendant Uber Technologies, Inc.
`
`(“Uber”) no longer includes the claims asserted in this case. In reexamination, AGIS amended
`
`the asserted claims in response to an examiner’s invalidity rejection. Those amendments, which
`
`substantively changed the scope of the claims, rendered moot and extinguished AGIS’s
`
`allegations of infringement based on the ’970 patent. See Fresenius USA, Inc. v. Baxter Intern.,
`
`Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013). The Patent Office issued the reexamination
`
`certificate on December 9, 2021. See Ex. 1. This Court thus now lacks subject matter
`
`jurisdiction over AGIS’s ’970 patent infringement allegations, and the Court must dismiss the
`
`’970 patent.
`
`II. FACTUAL BACKGROUND
`
`A.
`
`The Reexamination Proceedings
`
`On May 15, 2020, Google LLC filed a Request for Ex Parte Reexamination of U.S.
`
`Patent No. 8,213,970 under 35 U.S.C. § 302 and 37 C.F.R. § 1.510. Google requested
`
`reexamination of claims 2 and 10-13, showing that those claims are unpatentable in view of four
`
`references—“Kubala” (U.S. Patent Publication No. 2006/0218232), “Hammond” (U.S. Patent
`
`No. 6,854,007), “Johnson” (U.S. Patent No. 5,325,310) and “Pepe” (U.S. Patent No. 5,742,905).
`
`On July 27, 2020, the Patent Office issued its Order Granting Ex Parte Reexamination, finding
`
`that Google had raised a “substantial new question of patentability affecting claims 2 and 10-13”
`
`of the ’970 patent. Reexamination Control No. 90,014,507, Determination – Reexam Ordered at
`
`8 (July 27, 2020).
`
`On March 3, 2021, the Patent Office issued a Non-Final Action rejecting claims 2 and
`
`10-13 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kubala and Hammond and
`
`1
`
`

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`as being unpatentable over Hammond, Johnson and Pepe. Ex. 2, March 3, 2021 Non-Final Office
`
`Action at 4, 23. The Examiner included a near forty-page claim chart detailing the rejections.
`
`Id. at 4–41.
`
`On April 12, 2021, AGIS requested a one-month extension to respond to the Office
`
`Action, which made its response due June 3, 2021. The Patent Office granted the request on
`
`April 14, 2021.
`
`AGIS Proposes New Claims at Examiner Interview: On May 17, 2021, counsel for
`
`AGIS, including litigation counsel, conducted an interview with the Patent Examiners. See Ex.
`
`3. During that interview, counsel for AGIS contended that claim 2 “required more than merely
`
`taking control of an email program” and also proposed new claims 14–16. Id. at 4. The
`
`proposed new claims were as follows:
`
`14. (New) The system as in claim 2, further comprising means for releasing
`control of the recipient PDA/cell phone after selection of the response to the
`sender PDA/cell phone.
`
`15. (New) The system as in claim 2, further comprising:
`means for displaying a geographic map with georeferenced entities on the
`display of the sender PDA/cell phone;
`means for obtaining location and status data associated with the recipient
`PDA/cell phone; and
`means for presenting a recipient symbol on the geographical map
`corresponding to a correct geographical location of the recipient PDA/cell phone.
`
`16. (New) The system as in claim 10, further comprising:
`displaying a geographic map with georeferenced entities on the display of
`the sender PDA/cell phone;
`obtaining location and status data associated with the recipient PDA/cell
`phone; and
`presenting a recipient symbol on the geographical map corresponding to a
`correct geographical location of the recipient PDA/cell phone based on at least the
`location data.
`
`Id. at 5.
`
`2
`
`

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`AGIS Submits Further Modified Claims to Avoid Prior Art: On June 3, 2021, AGIS
`
`filed a Response to Ex Parte Non-Final Office Action Transmittal. In the response, AGIS
`
`argued that the forced message alerts of the rejected claims did not include email messages and
`
`expressly disavowed email messages as being covered by the claims. See Ex. 4 at 9–22. In
`
`addition, AGIS withdrew the new claims it proposed in May and added new claims 14 and 15
`
`(reproduced below), which are based on, but differ slightly from, the proposed claims 15 and 16
`
`above:
`
`14. (New) The system as in claim 2, further comprising: means for displaying a
`geographic map with georeferenced entities on the display of the sender PDA/cell
`phone; means for obtaining location and status data associated with the recipient
`PDA/cell phone; and means for presenting a recipient symbol on the geographical
`map corresponding to a correct geographical location of the recipient PDA/cell
`phone.
`
`15. (New) The system as in claim 10, further comprising: displaying a
`geographic map with georeferenced entities on the display of the sender
`PDA/cellphone; obtaining location and status data associated with the recipient
`PDA/cell phone; and presenting a recipient symbol on the geographical map
`corresponding to a correct geographical location of the recipient PDA/cellphone
`based on at least the location data.
`
`Id. at 6–7, 22. AGIS asserted that the new claims are patentable and valid over the prior art
`
`references relied on by the Examiner. Id. at 22. Additionally, AGIS asked that, to the extent the
`
`disavowal of email and its arguments traversing the rejection do not overcome the prior art
`
`rejection, the Examiner allow the newly added claims. Id.
`
`In support of its request that the Examiner allow the new claims, AGIS pointed the
`
`Examiner to the Declaration of Dr. Loren Terveen, which AGIS submitted with its Response.
`
`See Ex. 5. In his declaration, Dr. Terveen explained that he reviewed new claims 14 and 15
`
`against the prior art and that, in his opinion, the claims are patentable and valid over the prior art.
`
`Id. at ¶ 34. Dr. Terveen continued that the prior art “does not teach or suggest the claimed
`
`inventions of claims 2 and 10 with the additional limitations reciting displaying a geographic
`
`3
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 8 of 18 PageID #: 8247
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`map with georeferenced entities on the display of the sender PDA/cell phone, obtaining location
`
`and status data associated with the recipient PDA/cell phone, and presenting a recipient symbol
`
`on the geographical map corresponding to a correct geographical location of the recipient
`
`PDA/cell phone based on at least the location data.” Id. (emphasis added). Thus, AGIS and Dr.
`
`Terveen represented to the Examiner that the “additional limitations” substantively altered the
`
`scope of the ’970 patent claims. Id.
`
`AGIS Unsuccessfully Attempts to Preserve Claim Scope: On August 19, 2021, the
`
`Examiner issued a “Final Action.” Ex. 6. In that Final Action, the Examiner maintained the
`
`rejection of claims 2 and 10–13, finding AGIS’s attempted disavowal ineffective. Id. at 3–10.
`
`The Examiner, however, did find new claims 14 and 15 patentable. Id. at 49. The Examiner
`
`wrote that the prior art cited does not teach or fairly suggest the limitations contained in the
`
`amended claim. Id.
`
`In response to the Final Action, AGIS conducted an interview, which included litigation
`
`counsel, with the Examiner on September 13, 2021. See Ex. 7. During that interview, AGIS
`
`suggested a further amendment in which it would include all of the features of claim 2 into new
`
`claim 14 and all of the features of claim 10 into new claim 15. Id. at 4. The Examiner indicated
`
`that the proposed claims would be entered if formally presented. Id. According to the interview
`
`summary, AGIS asked the Examiner “whether it would be possible to somehow split the
`
`proceeding into two separate proceedings in order to preserve the allowable subject matter while
`
`appealing the rejected claims.” Id. The Examiner was unable to suggest a procedure to do so.
`
`Id.
`
`On October 12, 2021, AGIS conducted yet another interview, which also included
`
`litigation counsel; based on the interview record, AGIS tried again to persuade the Examiners
`
`4
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 9 of 18 PageID #: 8248
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`that a “forced message alert” does not include an email message. See Ex. 8 at 4. The Examiners
`
`maintained that nothing in the specification of the ’970 patent supported such a disavowal, even
`
`if expressly recited in the claims. Id.
`
`AGIS Submits Amended Claims With Different Scope And Cancelled the Claims
`
`Asserted Against Uber: On October 19, 2021, AGIS formally responded to the August 19,
`
`2021 Final Action. See Ex. 9. AGIS submitted amended claims in which it redrafted claim 2 as
`
`an independent claim by incorporating all of claim 1 into claim 2 and adding the new limitations
`
`of previously proposed claim 14 into the redrafted claim. Id. at 3–4, 10. AGIS also amended
`
`claim 10 by incorporating the new limitations of previously proposed claim 15 into claim 10. Id.
`
`at 6–7, 10. AGIS canceled new claims 14 and 15. Id. at 8. Based on the amendments, AGIS
`
`asserted that the claims were patentable over the cited prior art. Id. at 10.
`
`On November 15, 2021, the Examiner accepted the amended claims and also issued a
`
`Notice of Intent to Issue Ex Parte Reexamination Certificate. See Ex. 10. In the Notice, the
`
`Examiner provided a “Statement of Reasons for Patentability and/or Confirmation.” Id. at 3.
`
`Specifically, the Examiner stated:
`
`The prior art cited in the Request fails to teach or fairly suggest means for
`obtaining location and status data associated with the recipient PDA/cell phone
`(i.e., the algorithm described in the ’970 patent at col. 3, lines 52-67) and means
`for presenting a recipient symbol on the geographical map (displayed on the
`means for displaying . . . , i.e., on the LCD display of the sender PDA/cell phone,
`described in the ’970 patent at col. 4, lines 12-16) corresponding to a correct
`geographical location of the recipient PDA/cell phone (i.e., the algorithm
`described in the ’970 patent at col. 5, lines 28-44), in the context of independent
`claim 2.
`
`The prior art cited in the Request fails to teach or fairly suggest obtaining location
`and status data associated with the recipient PDA/cellphone and presenting a
`recipient symbol on the geographical map (displayed on the sender PDA/cell
`phone) corresponding to a correct geographical location of the recipient
`PDA/cellphone based on at least the location data, in the context of independent
`claim 10.
`
`5
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 10 of 18 PageID #: 8249
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`Id. Thus, the Examiner found newly amended claims 2 and 10–13 patentable. Id.
`
`The Reexamination Certification Issued on December 9, 2021 and contains the amended
`
`claims. See Ex. 1. Original claims 2 and 10-13 no longer exist.
`
`B.
`
`The Proceedings Before This Court
`
`Despite the pending reexamination and the Patent Office’s finding that a substantial new
`
`question of patentability existed as to claims 2 and 10–13 of the ’970 patent, on January 29,
`
`2021, AGIS filed its complaint against Uber. Case No. 2:21-cv-00026-JRG, Dkt. 1. In its
`
`complaint, AGIS alleged that Uber infringes at least claim 10 of the ’970 patent. Id. at ¶ 31. On
`
`May 19, 2021, AGIS served its P.R. 3-1 and 3-2 Infringement Contentions. In those contentions,
`
`AGIS asserted claims 2 and 10–13 of the ’970 patent. On November 4, 2021, the Court Ordered
`
`that AGIS may serve its Third Amended P.R. 3-1 and 3-2 Infringement Contentions. (Dkt. 202).
`
`In those contentions, AGIS continued to assert claims 2 and 10–13 of the ’970 patent, as
`
`originally issued. On November 8, 2021, AGIS served its Expert Report of Joseph C.
`
`McAlexander regarding infringement; in his report, Mr. McAlexander opines that Uber infringes
`
`claims 2 and 10, 12 and 13, as originally issued.1
`
`III. LEGAL STANDARD
`
`In Fresenius USA, Inc. v. Baxter Intern., Inc., the Federal Circuit held that “under either
`
`the reissue or reexamination statute, if the PTO confirms the original claim in identical form, a
`
`suit based on that claim may continue, but if the original claim is cancelled or amended to cure
`
`invalidity, the patentee’s cause of action is extinguished and the suit fails.” 721 F.3d 1330, 1340
`
`(Fed. Cir. 2013). The court continued that “when a claim is cancelled, the patentee loses any
`
`cause of action based on that claim, and any pending litigation in which the claims are asserted
`
`1 During claim construction, the Court found claim 11 of the ’970 patent indefinite, and AGIS
`subsequently withdrew its assertion of claim 11. Dkt. 187.
`
`6
`
`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 11 of 18 PageID #: 8250
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`becomes moot.” Id. “Suits based on cancelled claims must be dismissed for lack of
`
`jurisdiction.” SHFL Enter., Inc. v. DigiDeal Corp., 729 Fed. App’x 931, 934 (Fed. Cir. 2018).
`
`As this Court has recognized, “Article III of the Constitution only permits federal courts to
`
`adjudicate a case or controversy, a mooted action—which presents no case or controversy—falls
`
`outside the subject-matter jurisdiction of the federal courts.” Lemair Illumination Techs., LLC v.
`
`HTC Corp., 2019 WL 1489065 at *2 (E.D. Tex. April 4, 2019) (citing Genesis Healthcare Corp.
`
`v. Symczyk, 569 U.S. 66, 79 (2013)). Thus, in Lemair, this Court, relying on Fresenius,
`
`concluded it no longer had jurisdiction over portions of a case where the patent owner had
`
`canceled the asserted claims and sua sponte dismissed two Counts of the plaintiff’s complaint.
`
`Id. at *3–4.
`
`Mootness also applies to claims added or amended during reexamination that are not
`
`substantively identical to the originally issued claims. Indeed, in Fresenius, the Federal Circuit
`
`also held that where the Patent Office approves newly submitted claims or amended claims, the
`
`patentee’s ability to enforce is limited to “those claims that survive reexamination in ‘identical’
`
`form.” Fresenius, 721 F.3d at 1339; see also Target Training Intern., Ltd. v. Extended Disc
`
`North America, Inc., 645 Fed. App’x 1018, 1023 (Fed. Circ. 2016); Power Integrations, Inc. v.
`
`Fairchild Semiconductor Int’l., Inc., 2017 WL 6206382, at *2–3 (D. Del. Dec. 8, 2017) (holding
`
`the court lacked subject matter jurisdiction over patent since claims amended in reexamination
`
`were not substantially identical to original claims); MyGo, LLC v. Mission Beach Indus., 2018
`
`WL 3438650, at *2–4 (S.D. Cal. July 17, 2018) (finding entire case moot because only claims
`
`substantively amended in reexamination remained in patent).
`
`Given that only asserted claims that survive reexamination in “identical” form may
`
`proceed, the Federal Circuit has explained that when a patent owner amends claims in
`
`7
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 12 of 18 PageID #: 8251
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`reexamination in response to invalidity rejections, the district court must determine whether the
`
`amended claims that emerged from the reexaminations are substantially identical to the
`
`originally asserted claims of the patents. SHFL Enter., 729 Fed. App’x at 935. The court
`
`clarified that “amended or new claims incorporated into reexamined patents do not automatically
`
`abate—let alone moot—any pending action against the accused infringer based on the patents if
`
`the amended or new claims are ‘substantially identical’ to the original claims.” Id.
`
`Thus, the court in SHFL Enter., turned to an earlier decision—Laitram Corp. v. NEC
`
`Corp., 952 F.2d 1357, 1362-63 (Fed. Cir. 1991) (“Laitram I”)—to explain how “[t]o determine
`
`whether a claim change is substantially identical.” SHFL Enter., 729 Fed. App’x at 935. In
`
`Laitram I, the court held that “[t]o determine whether a claim change is substantive it is
`
`necessary to analyze the claims of the original and the reexamined patents in light of the
`
`particular facts, including the prior art, the prosecution history, other claims, and any other
`
`pertinent information.” Laitram I, 952 F.2d at 1362–63. Later, in Laitram Corp. v. NEC
`
`Corporation, (“Laitram II”), the Federal Circuit explained that “[r]eexamined claims are
`
`‘identical’ to their original counterparts if they are ‘without substantive change.’” 163 F.3d
`
`1342, 1346 (Fed. Cir. 1998). The court further explained that “in determining whether
`
`substantive changes have been made, we must discern whether the scope of the claims are
`
`identical, not merely whether different words are used.” Id. Although the Laitram II court
`
`confirmed that a “claim amendment made during reexamination following a prior art rejection is
`
`not per se a substantive change,” the court also noted that “it is difficult to conceive of many
`
`situations in which the scope of a rejected claim that became allowable when amended is not
`
`substantively changed by the amendment.” Id. at 1347–48.
`
`The Federal Circuit, moreover, has repeatedly held that this analysis, i.e., whether the
`
`8
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 13 of 18 PageID #: 8252
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`claim amendment was substantive, is a question of claim construction and, thus, is a question of
`
`law. Laitram II, 163 F.3d at 1346–47 (“‘This court reviews without deference the district court’s
`
`conclusion that the reexamined claims remained identical in scope.’ This rule flows from the
`
`general principle that ‘the interpretation and construction of patent claims, which define the
`
`scope of the patentee’s rights under the patent, is a matter of law, exclusively for the court.’”)
`
`(citations omitted); see also R+L Carriers, Inc. v. Qualcomm, Inc., 801 F.3d 1346, 1349–50
`
`(Fed. Cir. 2015) (“Because we are reviewing the scope of the reexamined and original claims,
`
`this is a matter of claim construction.”).
`
`IV. ARGUMENT
`
`A.
`
`The Scope of
`Reexamination
`
`the
`
`’970 Patent Claimed Substantively Changed During
`
`AGIS substantively changed the scope of the asserted ’970 patent claims during
`
`reexamination. This is supported by a comparison of the original and certified, amended claims,
`
`as well as the reexamination prosecution history. Bloom Eng’g. Co., Inc. v. North American
`
`Mfg. Co., Inc., 129 F.3d 1247, 1250 (Fed. Cir. 1997) (“Determination of whether a claim change
`
`during reexamination is substantive requires analysis of the scope of the original and reexamined
`
`claims in light of the specification, with attention to the references that occasioned the
`
`reexamination, as well as the prosecution history and any other relevant information.”). As
`
`explained above, the Examiner rejected all asserted claims based on the prior art identified in the
`
`reexamination request. Despite AGIS’s arguments that the prior art did not invalidate the claims,
`
`including an attempted disavowal of claim scope, the Examiner maintained the rejection.
`
`To overcome the rejection, AGIS first submitted new dependent claims, having
`
`limitations not previously found in the originally issued claims, and subsequently amended
`
`claims 2 and 10 to incorporate these new limitations into those claims. AGIS’s amendment
`
`9
`
`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 14 of 18 PageID #: 8253
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`added multiple, new limitations into both claims 2 and 10, including:
`
`
`
`
`
`
`
`
`
`
`
`
`
`“displaying a geographical map . . . on the display of the senders PDA/cell phone;”
`
`displaying “georeferenced entities” on the geographical map;
`
`“obtaining location . . . data associated with the recipient PDA/cell phone”;
`
`“obtaining . . . status data associated with the recipient PDA/cell phone”;
`
`“presenting a recipient symbol on the geographical map” of the sender PDA/cell phone;
`
`the presentation of the “recipient symbol . . . corresponding to a correct geographical
`location of the recipient PDA/cell phone”.
`
`Ex. 9 at 3–7, 10. The originally issued claims included no such limitations. Indeed, the
`
`originally issued claims made no mention of at least (1) a “map,” (2) “georeferenced entities,”
`
`(3) “location data,” (4) “status data,” (5) “symbol,” or (6) symbols placed on a map
`
`corresponding to a geographical location. These amendments clearly and substantively changed
`
`the scope of the claims. See Laitram II, 163 F.3d at 1348 (“[A] plain reading of the claims
`
`would indicate that the original and reexamined claims are of different scope.”).
`
`The prosecution history, including AGIS’s arguments, further demonstrates that AGIS
`
`substantively changed claim scope. Indeed, AGIS argued that the new claims “are patentable
`
`and valid over the prior art references in the Office Action.” Ex. 4 at 22. AGIS, moreover,
`
`submitted and relied on its expert, Dr. Terveen, to support that argument. See Ex. 5. As
`
`explained above, in his declaration, Dr. Terveen asserted that the prior art “does not teach or
`
`suggest the claimed inventions of claims 2 and 10 with the additional limitations reciting
`
`displaying a geographical map with georeferenced entities on the display of the sender PDA/cell
`
`phone, obtaining location and status data associated with the recipient PDA/cell phone, and
`
`presenting a recipient symbol on the geographical map corresponding to a correct geographical
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`10
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 15 of 18 PageID #: 8254
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`location of the recipient PDA/cell phone based on at least the location data.” Id. at ¶ 34
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`(emphasis added).
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`In the Final Action, the Examiner found the new claims with these additional limitations
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`“patentable,” writing that the “prior art cited in the Request fails to teach or fairly suggest” the
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`additional limitations. Ex. 6 at 49. Despite at least two additional interviews (on September 13,
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`2021 and October 12, 2021), AGIS could not persuade the Examiner to rescind his rejection of
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`the originally issued claims. See Exs. 7, 8. It was only after AGIS amended claims 2 and 10 to
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`add in the new limitations did the Examiner agree to allow the claims. See Ex. 10. And in his
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`“Statement of Reasons for Patentability and/or Confirmation,” the Examiner repeated that the
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`“prior art cited in the Request fails to teach or fairly suggest” the additional limitations. Id. at 3.
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`Thus, the prosecution history clearly demonstrates the substantive nature of the claim
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`amendment.
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`Courts have repeatedly found this type of record demonstrative of substantive changes in
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`claim scope. See, e.g., Laitram II, 163 F.3d at 1348 (“[T]he addition of the ‘type quality’
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`limitation, along with the other amendments, resulted in the allowance of claims that had been
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`rejected in the reexamination proceeding over prior art; this is a highly influential piece of
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`prosecution history.”); Bloom Eng’g., 129 F.3d at 1250 (“The amendment narrowed the claims to
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`exclude an injected gas stream that includes combustion air, and to require a separate combustion
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`air stream. This change was necessary in order to distinguish Bloom’s injected stream from that
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`shown in the [prior art] patent.”); R+L Carriers, 801 F.3d at 1351 (“R+L made [the] amendment
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`after the PTO rejected original claim 1 over various pieces of prior art … The examiner
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`expressly stated he was allowing amended claim 1 [based on the amendment].”); Cancaribe
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`Limited v. Cobra Int’l, Inc., 2012 WL 13001025, at *6 (C.D. Cal. Feb. 13, 2012) (finding
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`11
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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 16 of 18 PageID #: 8255
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`amendment substantive because it (1) “was made expressly to address the Examiner’s finding of
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`obviousness,” (2) “the Examiner’s Interview Summary indicates that the change was discussed
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`to ‘avoid the prior art of record,’” and (3) “the Notice of Intent explained that amended Claim 9
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`was ‘allowable because . . . none of the references of record disclose or teach [the new
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`limitations].’”).
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`“[U]nder either the reissue or reexamination statute . . . if the original claim is cancelled
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`or amended to cure invalidity, the patentee’s cause of action is extinguished and the suit fails.”
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`Fresenius, 721 F.3d at 1340. By its substantive amendments to the asserted claims of the ’970
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`patent, AGIS mooted its suit based on the ’970 patent, and the Court must dismiss that portion of
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`the suit.
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`V. CONCLUSION
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`For the foregoing reasons, Uber respectfully requests that the Court dismiss AGIS’s
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`claims as to the ’970 patent (Count I of the Complaint).
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`12
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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 17 of 18 PageID #: 8256
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`Dated: December 13, 2021
`
`By
`
`/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
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`13
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`

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`Case 2:21-cv-00072-JRG-RSP Document 248 Filed 12/13/21 Page 18 of 18 PageID #: 8257
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 13, 2021, the foregoing was electronically filed in
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`compliance with Local Rule CV-5(a) and served via the Court’s electronic filing system on all
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`counsel who have consented to electronic service.
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`
`14
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`