`7524
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`EXHIBIT B
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`
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 2 of 59 PageID #:
`7525
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`v.
`
` Civil Action No. 2:22-cv-00263-JRG-RSP
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
` JURY TRIAL DEMANDED
`
`Defendants.
`
`DEFENDANTS’ AMENDED ANSWER, DEFENSES AND COUNTERCLAIMS TO
`PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Defendant Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America,
`
`Inc. (“SEA”) (collectively, “Samsung” or “Defendants”) hereby submit their Answer, Defenses
`
`and Counterclaims to the Second Amended Complaint for Patent Infringement (“Complaint”) of
`
`Plaintiff AGIS Software Development, LLC (“AGIS” or “Plaintiff”). Samsung denies each and
`
`every allegation and characterization set forth in the Complaint unless expressly admitted herein.
`
`Samsung responds to each paragraph of the Complaint, as follows:
`
`THE PARTIES
`
`1.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 1, and therefore denies them.
`
`2.
`
`Samsung admits that SEC is a corporation organized and existing under the laws
`
`of the Republic of Korea. Its principal place of business is at 129, Samsung-ro, Yeongtong-gu,
`
`Suwon-si, Gyeonggi-do, 443-742, Republic of Korea. SEA admits that it does business in the
`
`1
`
`
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 3 of 59 PageID #:
`7526
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`State of Texas and in the Eastern District of Texas. Except as expressly admitted, Samsung
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`denies all remaining allegations in paragraph 2.
`
`3.
`
`Samsung admits that SEA is a New York Corporation and has a principal place of
`
`business at 85 Challenger Rd., Ridgefield Park, NJ 07660. Samsung denies that SEA has
`
`corporate offices at 2601 Preston Road, #1214, Frisco, Texas 75023, 1303 East Lookout Drive,
`
`Richardson, Texas 75082 and 2800 Technology Drive, Suite 200, Plano, Texas 75074. Samsung
`
`admits that SEA has corporate offices at 6225 Excellence Way, Plano, Texas 75023. Except as
`
`expressly admitted, Samsung denies all remaining allegations in paragraph 3.
`
`4.
`
`Samsung admits that Samsung-branded products are sold in the State of Texas,
`
`including the Eastern District of Texas. Samsung is without knowledge or information sufficient
`
`to form a belief as to the truth of the remaining allegations of paragraph 4, and therefore denies
`
`them.
`
`JURISDICTION AND VENUE
`
`5.
`
`Samsung admits that Plaintiff’s Complaint purports to state an action under the
`
`patent laws of the United States and that this Court has subject matter jurisdiction over such
`
`claims under 28 U.S.C. §§ 1331 and 1338. Except as expressly admitted, Samsung denies all
`
`remaining allegations in paragraph 5.
`
`6.
`
`Samsung denies that it has committed any acts of infringement within the Eastern
`
`District of Texas, or any other district. Samsung, for purposes of this action only, does not
`
`challenge this Court’s personal jurisdiction over Samsung. Except as expressly admitted,
`
`Samsung denies all remaining allegations in paragraph 6.
`
`7.
`
`Samsung admits that SEA has offices in this district and that for purposes of this
`
`action only, and without waiving any defense of improper venue in connection with any other
`
`2
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 4 of 59 PageID #:
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`cause of action or claim, Samsung admits that the Complaint’s alleged venue as to SEA is proper
`
`under 28 U.S.C. §§ 1400(b) and 1391(b)-(c). Samsung admits that SEC is a foreign corporation
`
`and that for purposes of this action only, and without waiving any defense of improper venue in
`
`connection with any other cause of action or claim, Samsung admits that the Complaint’s alleged
`
`venue as to SEC is proper under 28 U.S.C. §§ 1400(b) and 1391(b)-(c). Samsung reserves the
`
`right to argue that venue is improper pursuant to the Supreme Court’s decision in TC Heartland
`
`v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017). Samsung denies that this District is a
`
`convenient venue for adjudicating AGIS’s claims against Samsung. Samsung specifically denies
`
`that this District is the most convenient venue for adjudicating any proposed allegations by AGIS
`
`against the Google Find My Device in this action, in view of the Federal Circuit’s decision in In
`
`re Google LLC et al., Nos. 2022-140, -141, -142, 2022 WL 1613192 (Fed. Cir. May 23, 2022),
`
`granting mandamus relief and ordering transfer of AGIS’s allegations against Samsung and
`
`based on Google Find My Device from this District to the Northern District of California.
`
`Samsung denies that it has committed any acts of infringement in this District. Except as
`
`expressly admitted, Samsung denies all remaining allegations in paragraph 7.
`
`PATENTS-IN-SUIT
`
`8.
`
`Samsung admits that the cover page of U.S. Patent No. 8,213,970 (the “’970
`
`Patent”) states that its title is “Method of Utilizing Forced Alerts for Interactive Remote
`
`Communications” and that it issued on July 3, 2012. Samsung admits that Exhibit A to
`
`Plaintiff’s Complaint purports to be a copy of the ’970 Patent including the September 1, 2021
`
`Inter Partes Review Certificate and the December 9, 2021 Ex Parte Reexamination Certificate.
`
`Except as expressly admitted, Samsung denies all remaining allegations in paragraph 8.
`
`3
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 5 of 59 PageID #:
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`9.
`
`Samsung admits that the cover page of U.S. Patent No. 9,467,838 (the “’838
`
`Patent”) states that its title is “Method to Provide Ad Hoc and Password Protected Digital and
`
`Voice Networks” and that it issued on October 11, 2016. Samsung admits that Exhibit B to
`
`Plaintiff’s Complaint purports to be a copy of the ’838 Patent including the May 27, 2021 Ex
`
`Parte Reexamination Certificate. Except as expressly admitted, Samsung denies all remaining
`
`allegations in paragraph 9.
`
`10.
`
`Samsung admits that the cover page of U.S. Patent No. 9,749,829 (the “’829
`
`Patent”) states that its title is “Method to Provide Ad Hoc and Password Protected Digital and
`
`Voice Networks” and that it issued on August 29, 2017. Samsung admits that Exhibit C to
`
`Plaintiff’s Complaint purports to be a copy of the ’829 Patent including the August 16, 2021 Ex
`
`Parte Reexamination Certificate. Except as expressly admitted, Samsung denies all remaining
`
`allegations in paragraph 10.
`
`11.
`
`Samsung admits that the cover page of U.S. Patent No. 9,820,123 (the “’123
`
`Patent”) states that its title is “Method to Provide Ad Hoc and Password Protected Digital and
`
`Voice Networks” and that it issued on November 14, 2017. Samsung admits that Exhibit D to
`
`Plaintiff’s Complaint purports to be a copy of the ’123 Patent including the September 24, 2021
`
`Ex Parte Reexamination Certificate. Except as expressly admitted, Samsung denies all
`
`remaining allegations in paragraph 11.
`
`12.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 12, and therefore denies them.
`
`FACTUAL ALLEGATIONS
`
`13.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 13, and therefore denies them.
`
`4
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 6 of 59 PageID #:
`7529
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`14.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 14, and therefore denies them.
`
`15.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 15, and therefore denies them.
`
`16.
`
`Samsung admits that it licenses the Android operating system for use on or in
`
`conjunction with Samsung’s Android-based devices. Except as expressly admitted, Samsung
`
`denies all remaining allegations in paragraph 16.
`
`17.
`
`Samsung admits that paragraph 17 purports to identify Samsung applications and
`
`products which AGIS alleges Samsung manufactures, uses, sells, offers for sale, and/or imports
`
`into the United States. Except as expressly admitted, Samsung denies all remaining allegations in
`
`paragraph 17, and Samsung specifically denies that any of the identified products or components
`
`infringe any of the Patents-in-Suit, either directly or indirectly.
`
`18.
`
`Samsung admits that Find My Device is a third-party application and can be used
`
`on certain Samsung devices with Android operating systems. Samsung denies that the Find My
`
`Device application is provided on all Samsung devices and all of the “Accused Products”
`
`identified by AGIS at the time when they are imported into, or sold in the United States.
`
`Samsung denies that the Find My Device application can be located on each Samsung
`
`Android-based device by navigating to Settings > Google > Security > Find My Device.
`
`Samsung denies that Find My Device is configured to interact with the Samsung Defendants’
`
`servers. Except as expressly admitted, Samsung denies all remaining allegations in paragraph 18,
`
`and Samsung specifically denies that it infringes or has infringed any of the Patents-in-Suit,
`
`either directly or indirectly.
`
`5
`
`
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 7 of 59 PageID #:
`7530
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`19.
`
`Samsung denies all allegations of paragraph 19, and Samsung specifically denies
`
`that it infringes or has infringed any of the Patents-in-Suit, either directly or indirectly.
`
`COUNT I: [ALLEGED] INFRINGEMENT OF THE ’970 PATENT
`
`20.
`
`Samsung incorporates by reference its responses to paragraphs 1-19 of Plaintiff’s
`
`Second Amended Complaint.
`
`21.
`
`Samsung admits that based on its investigation to date, it does not have a license
`
`under the ’970 Patent from Plaintiff. Except as expressly admitted, Samsung denies all remaining
`
`allegations in Paragraph 21.
`
`22.
`
`Samsung denies all allegations in paragraph 22, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`23.
`
`Samsung denies all allegations in paragraph 23, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`24.
`
`Samsung denies all allegations in paragraph 24, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`25.
`
`Samsung denies all allegations in paragraph 25, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`26.
`
`Samsung denies all allegations in paragraph 26, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`27.
`
`Samsung denies all allegations in paragraph 27, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`28.
`
`Samsung denies all allegations in paragraph 28, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`6
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`
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 8 of 59 PageID #:
`7531
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`29.
`
`Samsung denies all allegations in paragraph 29, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`30.
`
`Samsung denies all allegations in paragraph 30, and specifically denies that it
`
`infringes or has infringed the ’970 Patent, either directly or indirectly.
`
`COUNT II: [ALLEGED] INFRINGEMENT OF THE ’838 PATENT
`
`31.
`
`Samsung incorporates by reference its responses to paragraphs 1-19 of Plaintiff’s
`
`Second Amended Complaint.
`
`32.
`
`Samsung admits that based on its investigation to date, it does not have a license
`
`under the ’838 Patent from Plaintiff. Except as expressly admitted, Samsung denies all remaining
`
`allegations in Paragraph 32.
`
`33.
`
`Samsung denies all allegations in paragraph 33, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`34.
`
`Samsung denies all allegations in paragraph 34, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`35.
`
`Samsung denies all allegations in paragraph 35, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`36.
`
`Samsung denies all allegations in paragraph 36, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`37.
`
`Samsung denies all allegations in paragraph 37, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`38.
`
`Samsung denies all allegations in paragraph 38, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`7
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 9 of 59 PageID #:
`7532
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`39.
`
`Samsung denies all allegations in paragraph 39, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`40.
`
`Samsung denies all allegations in paragraph 40, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`41.
`
`Samsung denies all allegations in paragraph 41, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`42.
`
`Samsung denies all allegations in paragraph 42, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`43.
`
`Samsung denies all allegations in paragraph 43, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`44.
`
`Samsung denies all allegations in paragraph 44, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`45.
`
`Samsung denies all allegations in paragraph 45, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`46.
`
`Samsung denies all allegations in paragraph 46, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`47.
`
`Samsung denies all allegations in paragraph 47, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`48.
`
`Samsung denies all allegations in paragraph 48, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`49.
`
`Samsung denies all allegations in paragraph 49, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`8
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 10 of 59 PageID #:
`7533
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`50.
`
`Samsung denies all allegations in paragraph 50, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`51.
`
`Samsung denies all allegations in paragraph 51, and specifically denies that it
`
`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`COUNT III: [ALLEGED] INFRINGEMENT OF THE ’829 PATENT
`
`52.
`
`Samsung incorporates by reference its responses to paragraphs 1-19 of Plaintiff’s
`
`Second Amended Complaint.
`
`53.
`
`Samsung admits that based on its investigation to date, it does not have a license
`
`under the ’829 Patent from Plaintiff. Except as expressly admitted, Samsung denies all remaining
`
`allegations in Paragraph 53.
`
`54.
`
`Samsung denies all allegations in paragraph 54, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`55.
`
`Samsung denies all allegations in paragraph 55, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`56.
`
`Samsung denies all allegations in paragraph 56, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`57.
`
`Samsung denies all allegations in paragraph 57, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`58.
`
`Samsung denies all allegations in paragraph 58, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`59.
`
`Samsung denies all allegations in paragraph 59, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`9
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 11 of 59 PageID #:
`7534
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`60.
`
`Samsung denies all allegations in paragraph 60, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`61.
`
`Samsung denies all allegations in paragraph 61, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`62.
`
`Samsung denies all allegations in paragraph 62, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`63.
`
`Samsung denies all allegations in paragraph 63, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`64.
`
`Samsung denies all allegations in paragraph 64, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`65.
`
`Samsung denies all allegations in paragraph 65, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`66.
`
`Samsung denies all allegations in paragraph 66, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`COUNT IV: [ALLEGED] INFRINGEMENT OF THE ’123 PATENT
`
`67.
`
`Samsung incorporates by reference its responses to paragraphs 1-19 of Plaintiff’s
`
`Second Amended Complaint.
`
`68.
`
`Samsung admits that based on its investigation to date, it does not have a license
`
`under the ’123 Patent from Plaintiff. Except as expressly admitted, Samsung denies all remaining
`
`allegations in Paragraph 68.
`
`69.
`
`Samsung denies all allegations in paragraph 69, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`10
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 12 of 59 PageID #:
`7535
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`70.
`
`Samsung denies all allegations in paragraph 70, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`71.
`
`Samsung denies all allegations in paragraph 71, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`72.
`
`Samsung denies all allegations in paragraph 72, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`73.
`
`Samsung denies all allegations in paragraph 73, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`74.
`
`Samsung denies all allegations in paragraph 74, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`75.
`
`Samsung denies all allegations in paragraph 75, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`76.
`
`Samsung denies all allegations in paragraph 76, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`77.
`
`Samsung denies all allegations in paragraph 77, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`78.
`
`Samsung denies all allegations in paragraph 78, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`79.
`
`Samsung denies all allegations in paragraph 79, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`80.
`
`Samsung denies all allegations in paragraph 80, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`11
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 13 of 59 PageID #:
`7536
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`81.
`
`Samsung denies all allegations in paragraph 81, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`RESPONSE TO DEMAND FOR JURY TRIAL
`
`82.
`
`Plaintiff’s demand for a trial by jury for all issues triable to a jury does not state
`
`any allegation, and Samsung is not required to respond. To the extent that any allegations are
`
`included in the demand, Samsung denies these allegations.
`
`RESPONSE TO PRAYER FOR RELIEF
`
`83.
`
`Plaintiff’s prayer for relief contains no allegations, and Samsung there is not
`
`required to respond. To the extent a responsive pleading is deemed to be required, Samsung
`
`denies all allegations in Plaintiff’s prayer for relief and specifically denies that Plaintiff is
`
`entitled to any relief.
`
`DEFENSES
`
`84.
`
`Subject to the responses above, Samsung alleges and asserts the following
`
`defenses in response to the allegations, undertaking the burden of proof only as to those defenses
`
`deemed affirmative defenses by law, regardless of how such defenses are denominated herein. In
`
`addition to the defenses described below, subject to its responses above, Samsung specifically
`
`reserves all rights to allege additional defenses that become known through the course of
`
`discovery.
`
`First Defense – No Patent Infringement
`
`85.
`
`Samsung does not infringe and has not infringed (not directly, contributorily, or
`
`by inducement), either literally or under the doctrine of equivalents, and is not liable for
`
`infringement of any valid and enforceable claim of the Patents-in-Suit.
`
`Second Defense – Patent Invalidity
`
`12
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`7537
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`86.
`
`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
`
`§ 101 because the claims are directed to abstract ideas or other non-statutory subject matter.
`
`87.
`
`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
`
`§ 102 because the claims lack novelty, and are taught and suggested by the prior art.
`
`88.
`
`The claims of the Patents-in-Suit are invalid and unenforceable under 35 U.S.C.
`
`§ 103 because the claims are obvious in view of the prior art.
`
`89.
`
`The claims of the Patents-in-Suit are invalid and unenforceable for failure satisfy
`
`the conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of
`
`enablement, and claim indefiniteness.
`
`90.
`
`The claims of the Patents-in-Suit are invalid and unenforceable for failure to
`
`satisfy the conditions set forth in 35 U.S.C. § 116, including the omission of one or more
`
`inventors and/or the naming of persons who are not inventors.
`
`91.
`
`One or more claims of the Patents-in-Suit are invalid due to obviousness-type
`
`double patenting.
`
`Third Defense – Limitation on Patent Damages
`
`92.
`
`Plaintiff’s claim for damages, if any, against Samsung for alleged infringement of
`
`the Patents-in-Suit are limited by 35 U.S.C. §§ 286, 287 and/or 288.
`
`Fourth Defense – Substantial Non-Infringing Uses
`
`93.
`
`Any and all products or actions accused of infringement have substantial uses that
`
`do not infringe and do not induce or contribute to the alleged infringement of the claims of the
`
`Fifth Defense – Failure to State a Claim
`
`Patents-in-Suit.
`
`13
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`7538
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`94.
`
`Plaintiff’s Complaint fails to state a claim upon which relief can be granted,
`
`including, but not limited to, failure of Plaintiff’s Complaint to meet the standard for pleading set
`
`by the Supreme Court in Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) and Bell Atlantic Corp. v.
`
`Twombly, 550 U.S. 544 (2007).
`
`Sixth Defense – Patent Unenforceability Inequitable Conduct
`
`95.
`
`The claims of the Patents-in-Suit are unenforceable, in whole or in part, due to
`
`unclean hands or inequitable conduct.
`
`96.
`
`For example, at least the ’970 patent is unenforceable because of inequitable
`
`conduct committed during reexamination of the ’970 patent and in particular AGIS’s withholding
`
`of information regarding an earlier litigation in which a district court determined and the Federal
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`Circuit affirmed that claims of AGIS’s earlier U.S. Patent No. 7,031,728 (“the ’728 patent,”
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`attached hereto as Exhibit A) were invalid as indefinite because the claim term “symbol generator”
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`invoked means-plus-function claiming under 35 U.S.C. § 112, ¶ 6, but the specification of the ’728
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`patent failed to disclose adequate structure corresponding to the “symbol generator” claim term.
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`Notwithstanding this determination, AGIS amended independent claim 2 of the ’970 patent during
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`reexamination to incorporate a comparable means-plus-function term (i.e., “means for presenting a
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`recipient symbol on the geographical map corresponding to a correct geographical location of the
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`recipient PDA/cell phone”) and cited the ’728 patent as providing support for this amendment
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`because the ’728 patent is incorporated by reference in the ’970 patent. AGIS representatives
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`involved in the reexamination had personal knowledge of the ’728 patent’s litigation history as a
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`result of having entered appearances in the district court litigation and/or on appeal to the Federal
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`Circuit following the district court’s determination that claims incorporating the term “symbol
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`generator” were indefinite. Had the AGIS representatives disclosed the ’728 patent’s litigation
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`14
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 16 of 59 PageID #:
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`history during reexamination of the ’970 patent, the Patent Office would not have issued a
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`reexamination certificate including amended claim 2 with the phrase “means for presenting a
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`recipient symbol on the geographical map corresponding to a correct geographical location of the
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`recipient PDA/cell phone” corresponding to the “symbol generator” language previously found to
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`be indefinite for lack of supporting structure. By failing to disclose the ’728 patent’s litigation
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`history during reexamination of the ’970 patent, the AGIS representatives breached their duty of
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`candor. The single most reasonable inference from the failure of the AGIS representatives to
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`disclose the ’728 patent’s litigation history—despite having identified the ’728 patent as providing
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`support for the proposed amended—is that the AGIS representatives intended to deceive the Patent
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`Office into issuing a claim they knew to be unpatentable as indefinite in view of the earlier
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`determinations by the district court and the Federal Circuit that the analogous “symbol generator”
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`term was likewise indefinite for lack of supporting structure.
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`97.
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`On May 15, 2020, Google LLC (“Google”) filed a reexamination request (later
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`assigned the 90/014,507 control number) concerning claims 2 and 10-13 of the ’970 patent.
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`Google’s reexamination request detailed why (1) claims 2 and 10-13 were not entitled to an
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`effective filing date before the actual November 26, 2008 filing date of the ’970 patent, such that
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`the Kubala, Hammond, Johnson, and Pepe references all constituted prior art to the ’970 patent;
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`(2) the combination of the Kubala and Hammond prior art references presented a substantial new
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`question of patentability as to claims 2 and 10-13; and (3) the combination of the Hammond,
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`Johnson, and Pepe prior art references presented a second substantial new question of
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`patentability as to those claims. Excerpts of the reexamination history are attached hereto as
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`Exhibit B.
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`15
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`98.
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`On or about July 27, 2020, the Patent Office granted Google’s reexamination
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`request. The examiners assigned to the request (including the primary examiner as well as two
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`additional conferees) “agree[d] with the contentions and evidentiary support in [Google’s]
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`request...that none of the earlier-filed applications provide sufficient written description support
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`for at least a forced-message alert software-application program,” as all of the independent
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`claims of the ’970 patent required.” Accordingly, the examiners agreed with Google’s
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`explanation that the ’970 patent was only “entitled to a priority date of November 26, 2008.” The
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`examiners also agreed with Google that “a substantial new question of patentability as to claims
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`2 and 10-13 of the ’970 patent [was] raised by Kubala and Hammond” and likewise that a
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`separate “substantial new question of patentability as to claims 2 and 10-13 of the ’970 patent
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`[was] raised by Hammond, Johnson, and Pepe.” Ex. B at pp. 1669 & 1671.
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`99.
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`Subsequently, on or about March 3, 2021, the examiners issued an office action
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`rejecting claims 2 and 10-13. The examiners again agreed with Google’s explanation that the ’970
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`patent was only “entitled to a priority date of November 26, 2008.” The examiners in turn rejected
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`claims 2 and 10-13 under pre-AIA § 103(a) as unpatentable over Kubala and Hammond, and
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`likewise as unpatentable over Hammond, Johnson, and Pepe. Ex. B at pp. 1689, 1693-94 & 1713.
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`100.
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`Following the office action, attorneys for AGIS—including Vincent Rubino,
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`Enrique Iturralde, and Jialin Zhong—conducted an interview with the PTO examiners on or
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`about May 17, 2021. As reflected in the reexamination interview summary included in the
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`reexamination file history, AGIS’s representatives and the PTO examiners discussed but did not
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`reach agreement concerning claim 2. AGIS’s representatives and the examiners also discussed
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`proposed new claims 14-16, including claims 15 and 16. Proposed claim 15 depended from
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`claim 2 while including additional limitations including “means for presenting a recipient
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`16
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`Case 2:22-cv-00263-JRG-RSP Document 101-3 Filed 08/11/23 Page 18 of 59 PageID #:
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`symbol on the geographical map corresponding to a correct geographical location of the recipient
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`PDA/cell phone.” AGIS’s representatives “indicated that the corresponding disclosure” for this
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`limitation was “found in the ’728 patent, incorporated by reference into the ’970 patent
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`disclosure.” Ex. B at pp. 1766-68.
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`101.
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`Later, on or about June 3, 2021, AGIS’s representatives responded to the office
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`action and traversed the obviousness rejections while also introducing dependent claim 14
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`(depending from claim 2) and dependent claim 15 (depending from claim 10). Aside from the
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`renumbering, claims 14 and 15 corresponded exactly to proposed claims 15 and 16 as discussed
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`during the above-noted interview during which AGIS’s representatives “indicated that the
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`corresponding structure” for the new claims was “found in the ’728 patent, incorporated by
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`reference into the ’970 patent disclosure.” As part of the June 2021 response, AGIS’s
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`representatives asserted that “new claims 14 and 15 do not add new matter and are supported by
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`the original disclosure of the patent,” which included the ’728 patent incorporated by reference.
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`Ex. B at p. 1791.
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`102. On or about August 19, 2021, the examiners issued a final office action that
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`maintained the rejections concerning original claims 2 and 10-13 of the ’970 patent. The
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`examiners also concluded that AGIS’s proposed claims 14 and 15 were patentable over the prior
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`art cited in Google’s request, which had been directed to the original claims 2 and 10-13 rather
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`than AGIS’s subsequently-proposed claims 14 and 15. In particular, as to claim 14 (depending
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`from claim 2), the examiners concluded that:
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`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
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`17
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`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 parent claim
`2.
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`Ex. B at p. 1893 (emphasis added).
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`103.
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`Following the final office action, representatives for AGIS—including Enrique
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`Iturralde and Jialin Zhong—conducted an addi