Case 2:21-cv-00072-JRG-RSP Document 60-1 Filed 05/20/21 Page 1 of 6 PageID #: 1191
`Case 2:21-cv-00072-JRG-RSP Document 60-1 Filed 05/20/21 Page 1 of 6 PageID #: 1191
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 2:21-cv-00072-JRG-RSP Document 60-1 Filed 05/20/21 Page 2 of 6 PageID #: 1192
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`Harry L. “Gil” Gillam, Jr.
`gil@gillamsmithlaw.com
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`Andrew T. “Tom” Gorham
`tom@gillamsmithlaw.com
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` Melissa Richards Smith
` melissa@gillamsmithlaw.com
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` J. Travis Underwood
` travis@gillamsmithlaw.com
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`303 South Washington Avenue, Marshall, Texas 75670 P 903.934.8450 | F 903.934.9257 gillamsmithlaw.com
`102 North College, Suite 800, Tyler, Texas 75702
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`May 20, 2021
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`
`VIA CM/ECF
`The Honorable Rodney Gilstrap
`Sam B. Hall, Jr. Federal Building and United States Courthouse
`100 East Houston Street
`Marshall, TX 75670
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`Re: AGIS Software Development LLC v. T-Mobile USA, INC. and T-Mobile US, Inc.,
`No. 2:21-cv-00072-JRG
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`Dear Judge Gilstrap:
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`Plaintiff AGIS Software Development LLC (“AGIS”) and Defendants T-Mobile USA,
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`INC. and T-Mobile US, Inc. (“T-Mobile”) submit this joint letter under the Court’s Standing
`Order Regarding Motions Under 35 U.S.C. § 101, regarding T-Mobile’s Motion to Dismiss
`AGIS’s counts related to U.S. Patent No. 7,031,728 (Count VI).
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`Case 2:21-cv-00072-JRG-RSP Document 60-1 Filed 05/20/21 Page 3 of 6 PageID #: 1193
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`I.
`AGIS’s Position: Claim Construction Is Necessary To Inform The Court’s § 101
`Analysis
`Defendants T-Mobile USA, INC. and T-Mobile US, Inc. (“T-Mobile”) allege that the
`U.S. Patent No. 7,031,728 (the “’728 Patent”) is directed to patent ineligible subject matter, and
`accordingly seeks to forego claim construction for all the Patents-in-Suit.1 This Court has
`undergone claim construction for some of the Patents-in-Suit in two separate cases.2 T-Mobile
`has not stated that it agrees to be bound by the prior constructions, merely that it seeks no claim
`construction on one of the six Patents-in-Suit. However, based on T-Mobile’s arguments, claim
`construction is necessary in determining whether the ’728 Patent is directed towards patent
`eligible subject matter.3 Claim construction will assist the Court in determining the scope of the
`claimed inventions of the Patents-in-Suit and the Patents-in-Suit themselves. See Autumn Cloud
`LLC v. TripAdvisor, Inc., 2017 WL 1856232, at *1 (E.D. Tex. Apr. 3, 2017).4
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`T-Mobile’s Motion is premature and unsupported, particularly where there are numerous
`factual disputes. In Alice Corp. Pty. Ltd. v. CLS Bank Intern., the Federal Circuit set forth a two-
`step framework for analyzing whether the claims at issue claim patent-eligible subject matter: (1)
`are the claims directed to a patent-ineligible concept; and (2) if so, whether the elements of each
`claim both individually and as an ordered combination, transform the nature of the claim into a
`patent-eligible application. Analysis of the ’728 Patent on a claim-by-claim and element-by-
`element basis would allow the Court to develop a fuller record from which to determine the
`scope of the invention.
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`T-Mobile’s Motion incorrectly submits that the invention of the ’728 Patent is directed to
`routine, well-understood, and conventional elements. However, “[t]he inventive concept inquire
`requires more than recognizing that each claim element, by itself, was known in the art.” See
`Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
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`1 The Patents-in-Suit include U.S. Patent Nos. 7,031,728; 7,630,724; 9,408,055; 9,445,251; 9,467,838; and
`9,749,829.
`2 See AGIS Software Dev. LLC v. Huawei Device USA, Inc., Dkt. 204 (E.D. Tex. Oct. 10, 2018) (Lead Case); AGIS
`Software Dev. LLC v. Google LLC, Dkt. 147 (E.D. Tex. Dec. 20, 2020) (Lead Case).
`3 See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[Claim
`construction] will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a §
`101 analysis, for the determination of patent eligible requires a full understanding of the basic character of the
`claimed subject matter.”).
`4 “Courts often choose to deny motions seeking dismissal on the pleadings to obtain a more complete understanding
`of the claimed invention, because in many cases, it is not only more efficient to postpone patent eligibility
`determinations until after claim construction but, because the process will give the Court a fuller understanding of
`the patent, it is also more likely to lead the Court to the correct outcome with correct analysis.” Id. Courts in this
`District have routinely denied Rule 12 motions made on § 101 grounds as premature. See, e.g., Phoenix Licensing,
`LLC et al. v. Advance Am. Cash Advance Centers, Inc., No. 2:15-cv-01375-JRG-RSP, Dkt. 25 (E.D. Tex. Sept. 30,
`2016); Dynamic Applet Techs., LLC v. Mattress Firm, Inc., 2018 WL 5306647, at *7 (E.D. Tex. Aug. 29, 2018);
`Ectolink, LLC v. Elavon, Inc., 2016 WL 7670060, at *4 (E.D. Tex. Sept. 7, 2016). The Federal Circuit has also
`stated in certain cases “claim construction is helpful to resolve the question of patentability under § 101.” McRO,
`Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016) (finding claims were not directed to
`an abstract idea and instead to “claimed process[es] us[ing] a combined order of specific rules” that improved on
`existing technological processes in the field of computer animation.”).
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`2016).5 T-Mobile’s piecemeal analysis of isolated elements oversimplifies the ’728 Patent.
`The ’728 Patent states that the field of invention “relates generally to an integrated
`communication system using a plurality of cellular PDA/GPS phones for the management of a
`group of people through use of a communications network and, specifically, provide each user
`with a cellular phone that has features that permit all the users to know each other’s location and
`status, rapidly call and communicate data among the users by touching display screen symbols,
`and enable users to easily access data concerning other users and other database
`information.” ’728 Patent, 1:6-15. The ’728 Patent recognized the “cumbersome process”
`embodied by prior art and identified the benefits of the invention including (1) the ability to
`report location information and display that information on a map display; (2) the ability to
`exchange other entities of interest information; (3) the ability to make rapid voice and data calls;
`(4) the ability to make rapid conference calls; and (5) the ability to remotely control the cellular
`phone/PDA/GPS systems. Id., 2:18-52. The specification further describes specific
`implementations of solutions to technical problems in the field of command-and-control systems.
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`T-Mobile ignores the inventive concepts of the ’728 Patent, ignores numerous
`limitations, and reduces the invention to “known” concepts.6 In its effort to oversimplify the
`claims for its Motion, T-Mobile itself raises claim construction issues. In claim element 7a, T-
`Mobile reads out the limitation on the symbols element, which further requires “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 screen display.” In reading out this limitation, T-Mobile fails to address
`the construction of the claim element “free and operator selected text messages.” Dkt. 24 at 18,
`23; Dkt. 46 at 1. In claim element 7b, T-Mobile reads out the “providing” limitation from the
`method element b in order to reduce the claim to “storing” alone. Dkt. 24 at 18 (“Step [b]
`requires storing telephone numbers…”) and 23; Dkt. 46 at 1. In limitation 7d, T-Mobile also
`fails to address the claim construction of the claim element “geographical location chart.” Dkt.
`24 at 18, 24; Dkt. 46 at 1. Each of these limitations presents underlying factual issues that are
`inappropriate for resolution at this time without claim construction argument and expert
`testimony.
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`Claim construction is necessary to provide meaning to the terms and obtain a proper
`understanding of the ’728 Patent as well as the other Patents-in-Suit. Through claim
`construction, the Court may have the opportunity to obtain a fuller understanding of the Patents-
`in-Suit, the patented inventions, including the context of relevant intrinsic and extrinsic evidence
`which was outside the scope of T-Mobile’s Motion.7 Accordingly, AGIS respectfully requests
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`5 As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of
`known, conventional pieces.” Id.
`6 See DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509, 527 (E.D. Tex. 2013) (“[I]nventions with
`specific applications or improvements to technologies in the marketplace are not likely to be so abstract” as to be
`ineligible for patent protection). The Federal Circuit has cautioned that “describing the claims at such a high level
`of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow
`the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
`7 See, e.g., Autumn Cloud, 2017 WL 1856232, at *1 (E.D. Tex. Apr. 3, 2017); Secured Structures, LLC v. Alarm
`Sec. Grp., LLC, 2016 WL 1253688, at *4 (E.D. Tex. Mar. 10, 2016) (“[W]here the parties dispute the scope and
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`that the Court defer a decision on T-Mobile’s Motion until it is permitted to undergo the claim
`construction process.
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`II.
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`T-Mobile’s Position: Claim Construction Will Not Alter the Court’s § 101 Analysis.
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`Claim construction is not necessary to resolve the § 101 inquiry and the ’728 patent may
`be disposed of at the pleading stage. The claim language and the specification make clear that
`the claims are directed to the abstract idea of storing and organizing information about
`participants to be called and displaying the location of the participants on a digital map from
`which the user can place a call.
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`The Federal Circuit, and this Court, have both confirmed that claim construction is not a
`prerequisite to a § 101 analysis. See, e.g., Cleveland Clinic Found. v. True Health Diagnostics
`LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (affirming district court’s § 101 determination in
`motion to dismiss prior to claim construction); Voxathon LLC v. Alpine Elecs. of Am., Inc., 2016
`WL 260350, at *2 (E.D. Tex. Jan. 20, 2016) (holding claim construction unnecessary to resolve
`Rule 12(b)(6) motions to dismiss under § 101). Here, in light of the prior litigation involving the
`same asserted claim of the ’728 Patent (claim 7), and AGIS’s position throughout that
`litigation—including both trial and appeal—that plain and ordinary meaning applied, AGIS has
`no basis to assert that claim construction is now necessary.
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`In any event, AGIS has now had three opportunities to identify terms in the ’728 patent
`that need construction to resolve the section 101 inquiry: the parties’ meet and confer, AGIS’s
`opposition brief, and this letter. AGIS still has not identified a single term that needs
`construction; much less a construction that would affect the section 101 analysis. For this letter,
`the Court’s standing order states that AGIS should identify “any claim terms that the respondent
`believes need to be construed, why such is needed, and what intrinsic references support such
`position.” AGIS’s failure to identify terms in light of the Court’s order prove that no
`constructions are needed to resolve T-Mobile’s motion.
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`Instead of actually identifying terms that need construction, AGIS makes two ancillary
`arguments, each of which should be rejected. First, AGIS argues that T-Mobile oversimplified
`certain limitations in its brief. For example, AGIS alleges that T-Mobile read out the limitation
`on “symbols,” including the claim element “free and operator selected text messages.” AGIS
`also insists that, while T-Mobile discusses “storing” phone numbers in step (b), it does not
`address the predicate act of “providing” phone numbers, and AGIS accuses T-Mobile of failing
`to address the “geographical location chart” limitation. What is missing from AGIS’s letter is
`any argument that any of these terms actually require construction, what AGIS’s proposed
`constructions would be, or how any differences in construction could possibly change the section
`101 analysis.
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`AGIS tries to characterize the alleged oversimplification of these terms as a claim
`construction issue. It is not. T-Mobile’s brief focused on the direction of the claims, as a whole,
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`meaning of the asserted claims, as they do here, application of the principles governing a § 101 analysis is not a
`straightforward exercise.”).
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`which is part of the section 101 analysis. No possible construction of the admittedly
`conventional “free and operator selected text messages” or “geographical location chart”
`elements could possibly inform the section 101 analysis, and AGIS never articulates an argument
`to the contrary. Instead, AGIS makes the conclusory and erroneous argument that these
`limitations “present factual issues.” This is irrelevant to the issue of whether claim construction
`is necessary, which is the purpose of the letter.
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`Second, AGIS argues that T-Mobile is asking the court to forego claim construction on
`all six patents in suit. This is simply not true. T-Mobile has only said that claim construction is
`not necessary to resolve the ineligibility of one of the six patents—the ’728 patent. AGIS also
`complains that T-Mobile has not agreed to be bound by prior constructions. This is beside the
`point. For the asserted ’728 Patent claims, there were no prior constructions for T-Mobile to be
`bound to. That is T-Mobile’s point—AGIS litigated asserted claim 7 through trial without any
`party proposing a construction of any term. T-Mobile’s position is that there are no
`constructions necessary to resolve the section 101 dispute, and, as if to help T-Mobile’s point,
`AGIS still has not identified any potential construction that would alter the section 101 analysis.
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`In light of AGIS’s consistent failure to identify any claim construction issues that would
`affect the section 101 analysis, T-Mobile respectfully asks the Court to rule on its motion to
`dismiss prior to claim construction.
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