`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`Defendants.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`
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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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`FILED UNDER SEAL
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S NOTICE
`OF SUPPLEMENTAL INFORMATION RELEVANT TO AGIS’ OBJECTIONS
`TO CLAIM CONSTRUCITON ORDER
`
`Case 2:21-cv-00072-JRG-RSP Document 259 Filed 12/16/21 Page 1 of 5 PageID #: 11367
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`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
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`
`
`v.
`
`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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`§
`JURY TRIAL DEMANDED
`§
`
`§
`FILED UNDER SEAL
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`

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`Case 2:21-cv-00072-JRG-RSP Document 259 Filed 12/16/21 Page 2 of 5 PageID #: 11368
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`Plaintiff AGIS Software Development LLC (“AGIS”) hereby submits the following notice
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`of supplemental information to notify the Court of new information relevant to AGIS’s Objections
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`to the Court’s Claim Construction Order (Dkt. 237) (“Objections”). Attached to this notice are
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`Exhibit 1, which consists of relevant excerpts of the December 15, 2021 deposition of Defendant
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`Uber, Inc.’s (“Uber”) technical expert witness, Dr. Neil Siegel, and Exhibit 2, which consists of
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`the relevant portions of the technical expert report of Dr. Siegel referenced by Dr. Siegel in the
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`excerpts of the depositions transcript in Exhibit 1.
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`AGIS submitted in its Opening Claim Construction Brief that the term “using the IP
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`address previously” of claim 9 of the ’724 patent should be construed according to its plain and
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`ordinary meaning and that the claim term is not indefinite. Defendants’ argued that this claim term
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`is indefinite. In the Claim Construction Order, the Court found that this claim term is indefinite.
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`See Dkt. 213 at 28.
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`In its Objections, AGIS stated that a person of ordinary skill in the art would understand
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`that “using the IP address previously” refers to the previously-received IP address in the beginning
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`of the limitation. AGIS submitted that the Order was based on a clear error by rejecting AGIS’s
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`proposed construction and holding this claim term was indefinite, particularly where (a) the claims
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`and specification of the ’724 Patent disclose that claim 9 of the ’724 Patent recites two alternatives
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`for IP-based transmission, and (b) the record demonstrated that a person of ordinary skill in the art
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`would have understood the term with reasonable certainty and that no skilled artisan would have
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`understood the claim to use the IP address to transmit to plural recipients, as initially found by the
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`Court. See Dkt. 237 at 2. Uber’s expert testimony confirms these points.
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`During the December 15, 2021 deposition of Uber’s technical expert, Dr. Neil Siegel
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`testified that he had “no problem reading and understanding this limitation and understanding how
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`

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`Case 2:21-cv-00072-JRG-RSP Document 259 Filed 12/16/21 Page 3 of 5 PageID #: 11369
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`it is met by IP communication using digital messages.” See Exhibit 1, Siegel Rough Tr. 91:14-20
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`(“Yes, I understand this limitation.”) citing Exhibit 2. Dr. Siegel further testified that in order to
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`meet this claim limitation, “[y]ou have to exchange IP addresses using SMS or another digital
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`format, and I addressed both of these. Among network participant users, so that communication
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`between participants is established by IP. And I talked about that.” Id. at 90:15-21. Accordingly,
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`Dr. Siegel stated that it is his understanding that the claim limitation “is met by exchanging IP
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`addresses, using a digital message format, sending those IP addresses to the server, and
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`communicating on those IP addresses.” Id. at 91:21-92:4. Dr. Siegel testified that “using the IP
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`address previously,” refers to the “client’s IP address” that was “previously provided to the server
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`over the digital message.” Id. at 92:14-93:9; see also id. at 93:10-14 (“Q. And so you have no
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`problem reading that and understanding that limitation and explaining it to a jury. Is that what
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`you’re saying? A. Correct.”). This expert testimony is relevant to Plaintiff’s arguments that claim
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`9 sufficiently informs, with reasonable certainty, those skilled in the art about the scope of the
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`invention, particularly where Uber and Dr. Siegel have submitted that Dr. Siegel’s experience
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`enables him to speak with authority concerning what a person of ordinary skill in the art would
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`know and would be expected to know. See Exhibit 2.
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`Accordingly, AGIS submits that the above information is relevant to the Court’s
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`construction of the term “using the IP address previously” of claim 9 of the ’724 patent. AGIS
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`respectfully requests consideration of this information in the Court’s review of its Objections.
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`Dated: December 15, 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
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`
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`2
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`

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`Case 2:21-cv-00072-JRG-RSP Document 259 Filed 12/16/21 Page 4 of 5 PageID #: 11370
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`
`
`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
`Facsimile: (212) 257-5796
`
`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
`
`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
`
`
`3
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`

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`Case 2:21-cv-00072-JRG-RSP Document 259 Filed 12/16/21 Page 5 of 5 PageID #: 11371
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 15, 2021, a true and correct copy of the above and
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`foregoing document has been served by email on all counsel of record.
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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