Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 1 of 9 PageID #: 10204
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
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`§
`Case No. 2:21-cv-00072-JRG
`(LEAD CASE)
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`§
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
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`Defendant.
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`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S MOTION FOR
`SUMMARY JUDGMENT OF COMPLIANCE WITH 35 U.S.C. § 287(a)
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 2 of 9 PageID #: 10205
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION .............................................................................................................. 1
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`STATEMENT OF ISSUES TO BE DECIDED BY THE COURT ................................... 1
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`STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................. 2
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`LEGAL STANDARD ......................................................................................................... 2
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`ARGUMENT ...................................................................................................................... 3
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`CONCLUSION ................................................................................................................... 4
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`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`i
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 3 of 9 PageID #: 10206
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`AGIS Software Dev. LLC v. Uber Techs., Inc., d/b/a Uber,
`Case No. 2:21-cv-00026-JRG, Dkt. 1 (E.D. Tex. Jan. 29, 2021) ..............................................2
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`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017)..............................................................................................3, 4
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`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................3
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`Statutes
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`35 U.S.C. § 287 ....................................................................................................................1, 2, 3, 4
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`ii
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 4 of 9 PageID #: 10207
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
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`undersigned counsel, respectfully submits this Motion for Summary Judgment of Compliance with
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`35 U.S.C. § 287(a) (the “Motion”).
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`I.
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`INTRODUCTION
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`Defendant Uber Technologies, Inc., d/b/a Uber (“Uber” or “Defendant”) has not met its
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`burden of production to articulate the products it contends are unmarked patented articles subject
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`to Section 287(a) of the Patent Act. According to the Federal Circuit, an alleged infringer must
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`put the patentee on notice that the patentee or its authorized licensees sold specific unmarked
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`products which the alleged infringer believes practice the patent. Only when the alleged infringer
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`meets this burden of production does the patentee bear the burden of showing that the unmarked
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`products do not practice the patented invention. With fact discovery closed and expert reports
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`served, Defendant has never identified any specific products of AGIS or its licensees which
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`Defendant contends were unmarked and covered by either of the Patents-in-Suit.
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`AGIS pled that it has complied with the requirements of 35 U.S.C. § 287(a), and it has
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`stated in discovery that all of its own products practicing the Patents-in-Suit were marked as of the
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`issuance of the patents. Since the record contains no evidence to the contrary, and Defendant has
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`not met its burden of production, summary judgment that AGIS complied with 35 U.S.C. § 287(a)
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`should be granted.
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`II.
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`STATEMENT OF ISSUES TO BE DECIDED BY THE COURT
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`1.
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`Whether Defendant has met its burden of production to identify unmarked patent
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`products that support its marking defense under 35 U.S.C. § 287(a).
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`2.
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`Whether AGIS marked its own covered products.
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 5 of 9 PageID #: 10208
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`III.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`AGIS alleges that Defendant’s Accused Products infringe U.S. Patent Nos.
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`8,213,970, 7,630,724, 7,031,728, 10,299,100 (the “’100 Patent”), and 10,341,838 (the “’838
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`Patent”) (collectively, the “Patents-in-Suit”).
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`2.
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`AGIS alleged in its Complaint for Patent Infringement that “AGIS Software and all
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`previous assignees of the Patents-in-Suit have complied with the requirements of 35 U.S.C.
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`§ 287(a).” See AGIS Software Dev. LLC v. Uber Techs., Inc., d/b/a Uber, Case No. 2:21-cv-00026-
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`JRG, Dkt. 1 at ¶ 25 (E.D. Tex. Jan. 29, 2021).
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`3.
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`Defendant has not identified any specific products of AGIS which it contends are
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`unmarked and covered by any of the Patents-in-Suit.
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`4.
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`Defendant has not identified any specific products of AGIS’s licensees which it
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`contends are unmarked and covered by any of the Patents-in-Suit.
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`5.
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`Defendant’s Answer to AGIS’s Complaint included a “failure to mark” defense,
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`stating “AGIS’s claims are barred in whole or in part by failure to adequately plead compliance
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`with patent marking pursuant to the requirements of 35 U.S.C. § 287(a). See Dkt. 230 ¶ 116.
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`6.
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`In its Answer, Defendant did not identify specific products which it contends are
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`unmarked or covered by any of the Patents-in-Suit.
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`7.
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`At no time during the discovery period did Defendant identify any products it
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`contends are unmarked or covered by any of the Patents-in-Suit.
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`IV.
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`LEGAL STANDARD
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`Summary judgment is appropriate when, drawing all justifiable inferences in the non-
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`movant’s favor, there is no genuine dispute as to any material fact and the movant is entitled to
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`judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 329 (1986).
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`“Compliance with § 287 is a question of fact.” Arctic Cat Inc. v. Bombardier Recreational
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`2
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 6 of 9 PageID #: 10209
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`Prods. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017) (citation omitted). The alleged infringer
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`challenging compliance with Section 287 bears an initial burden of production to articulate the
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`products it believes are unmarked patented articles subject to Section 287. Id. at 1368. The alleged
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`infringer must “put the patentee on notice that he or his authorized licensees sold specific unmarked
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`products which the alleged infringer believes practice the patent.” Id. (emphasis added). “Once
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`the alleged infringer meets its burden of production, however, the patentee bears the burden to
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`prove the products identified do not practice the patented invention.” Id.
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`V.
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`ARGUMENT
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`AGIS is entitled to judgment as a matter of law that it has complied with its marking
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`obligations under Section 287(a) of the Patent Act because Defendant has never identified specific
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`products which it contends are patented, but not marked, as required by Arctic Cat. Now that
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`discovery is closed and expert reports have been served, the time for Defendant to meet its burden
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`of production has long passed.
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`The requirements of Arctic Cat are unambiguous. To avoid a “fishing expedition” into
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`whether a potentially unbounded universe of products is marked or patented, an accused infringer
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`must meet the low bar of identifying the specific unmarked, patented products that underlie its
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`marking defense. Arctic Cat, 876 F.3d at 1368. Once this burden of production is met, the
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`patentee’s burden to prove that the identified products are not patented is triggered. Although the
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`Federal Circuit did not determine the minimum showing needed to meet this burden of production,
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`id. at 1369, some form of notice regarding specific products is required. See id. (holding that the
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`defendant’s identification of 14 specific licensed products that its expert contended were patented
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`was sufficient to meet the burden of production).
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`Defendant never put AGIS on notice that any specific product of AGIS or its licensees was
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`an unmarked, patented product. Rather, AGIS stated that it has “taken all reasonable efforts to
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 7 of 9 PageID #: 10210
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`ensure that AGIS’s licensee, AGIS Inc., has properly marked its LifeRing products.” See Exhibit
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`1 at 43. Further, AGIS stated that it is “unaware of other products that require marking before
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`Defendant was on notice under 35 U.S.C. § 287.” Id. Defendant conducted discovery into AGIS,
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`Inc’s LifeRing products, AGIS’s patent licenses, and whether those licenses included the duty to
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`mark. Defendant did not identify any specific AGIS, Inc. product, or any specific product of any
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`licensee, as one which it contended was unmarked and practices one or more of the Patents-in-
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`Suit.
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`Defendant’s time for meeting its burden of production has elapsed. Service of a notice of
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`licensed unmarked, patented products should be done with sufficient time to permit a patentee to
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`conduct discovery into the identified products and prepare expert analysis. Now that fact discovery
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`is closed and opening and rebuttal expert reports by the parties with the burden of proof have been
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`served, summary judgment is appropriate.
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`VI. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court grant its Motion for
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`Summary Judgment of Compliance with 35 U.S.C. § 287(a).
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`Dated: December 13, 2021
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`Respectfully submitted,
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` /s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
` Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 8 of 9 PageID #: 10211
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`Facsimile: (212) 257-5796
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`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 255 Filed 12/13/21 Page 9 of 9 PageID #: 10212
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on December 13, 2021, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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