Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 1 of 49 PageID #: 4637
`
`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’ 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 State
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`1
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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 2 of 49 PageID #: 4638
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`of Texas and in the Eastern District of Texas. Except as expressly admitted, Samsung denies all
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`remaining allegations in paragraph 2.
`
`3.
`
`Samsung admits that SEA is a New York Corporation and has a principal place of
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`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
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`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,
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`including the Eastern District of Texas. Samsung is without knowledge or information sufficient
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`to form a belief as to the truth of the remaining allegations of paragraph 4, and therefore denies
`
`them.
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`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
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`denies all remaining allegations in paragraph 6.
`
`7.
`
`Samsung admits that SEA has offices in this district and that for purposes of this action
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`only, and without waiving any defense of improper venue in connection with any other cause of
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`action or claim, Samsung admits that the Complaint’s alleged venue as to SEA is proper under 28
`2
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`

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`U.S.C. §§ 1400(b) and 1391(b)-(c). Samsung admits that SEC is a foreign corporation and that for
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`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
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`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
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`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
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`expressly admitted, Samsung denies all remaining allegations in paragraph 8.
`
`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
`3
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 4 of 49 PageID #: 4640
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`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.
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`FACTUAL ALLEGATIONS
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`13.
`
`Samsung is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 13, and therefore denies them.
`
`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
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`truth of the allegations of paragraph 15, and therefore denies them.
`4
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`

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`16.
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`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
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`denies all remaining allegations in paragraph 16.
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`17.
`
`Samsung admits that paragraph 17 purports to identify Samsung applications and
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`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
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`Device application is provided on all Samsung devices and all of the “Accused Products” identified
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`by AGIS at the time when they are imported into, or sold in the United States. Samsung denies
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`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
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`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.
`
`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.
`
`5
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 6 of 49 PageID #: 4642
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`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.
`
`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.
`
`6
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 7 of 49 PageID #: 4643
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`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.
`
`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.
`
`7
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 8 of 49 PageID #: 4644
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`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
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`infringes or has infringed the ’838 Patent, either directly or indirectly.
`
`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.
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`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
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`allegations in Paragraph 53.
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`8
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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 9 of 49 PageID #: 4645
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`54.
`
`Samsung denies all allegations in paragraph 54, and specifically denies that it
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
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`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
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
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`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
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`60.
`
`Samsung denies all allegations in paragraph 60, and specifically denies that it
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`61.
`
`Samsung denies all allegations in paragraph 61, and specifically denies that it
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`62.
`
`Samsung denies all allegations in paragraph 62, and specifically denies that it
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
`
`63.
`
`Samsung denies all allegations in paragraph 63, and specifically denies that it
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`infringes or has infringed the ’829 Patent, either directly or indirectly.
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`64.
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`Samsung denies all allegations in paragraph 64, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
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`9
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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 10 of 49 PageID #: 4646
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`65.
`
`Samsung denies all allegations in paragraph 65, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
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`66.
`
`Samsung denies all allegations in paragraph 66, and specifically denies that it
`
`infringes or has infringed the ’829 Patent, either directly or indirectly.
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`COUNT IV: [ALLEGED] INFRINGEMENT OF THE ’123 PATENT
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`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.
`
`70.
`
`Samsung denies all allegations in paragraph 70, and specifically denies that it
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`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
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`73.
`
`Samsung denies all allegations in paragraph 73, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`74.
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`Samsung denies all allegations in paragraph 74, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`10
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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 11 of 49 PageID #: 4647
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`75.
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`Samsung denies all allegations in paragraph 75, and specifically denies that it
`
`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`76.
`
`Samsung denies all allegations in paragraph 76, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
`
`77.
`
`Samsung denies all allegations in paragraph 77, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`78.
`
`Samsung denies all allegations in paragraph 78, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`79.
`
`Samsung denies all allegations in paragraph 79, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`80.
`
`Samsung denies all allegations in paragraph 80, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`81.
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`Samsung denies all allegations in paragraph 81, and specifically denies that it
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`infringes or has infringed the ’123 Patent, either directly or indirectly.
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`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
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`allegation, and Samsung is not required to respond. To the extent that any allegations are included
`
`in the demand, Samsung denies these allegations.
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`RESPONSE TO PRAYER FOR RELIEF
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`83.
`
`Plaintiff’s prayer for relief contains no allegations, and Samsung there is not
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`required to respond. To the extent a responsive pleading is deemed to be required, Samsung denies
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`all allegations in Plaintiff’s prayer for relief and specifically denies that Plaintiff is entitled to any
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`relief.
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`11
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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 12 of 49 PageID #: 4648
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`DEFENSES
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`84.
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`Subject to the responses above, Samsung alleges and asserts the following
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`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
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`addition to the defenses described below, subject to its responses above, Samsung specifically
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`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
`
`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.
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`§ 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
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`the conditions set forth in 35 U.S.C. § 112, including failure of written description, lack of
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`enablement, and claim indefiniteness.
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`12
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`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
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`the naming of persons who are not inventors.
`
`91.
`
`One or more claims of the Patents-in-Suit are invalid due to obviousness-type
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`double patenting.
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`Third Defense – Limitation on Patent Damages
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`92.
`
`Plaintiff’s claim for damages, if any, against Samsung for alleged infringement of
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`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
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`Patents-in-Suit.
`
`Fifth Defense – Failure to State a Claim
`
`94.
`
`Plaintiff’s Complaint fails to state a claim upon which relief can be granted,
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`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.
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`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 Circuit
`
`13
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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 14 of 49 PageID #: 4650
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`affirmed that claims of AGIS’s earlier U.S. Patent No. 7,031,728 (“the ’728 patent,” attached hereto
`
`as Exhibit A) were invalid as indefinite because the claim term “symbol generator” invoked means-
`
`plus-function claiming under 35 U.S.C. § 112, ¶ 6, but the specification of the ’728 patent failed to
`
`disclose adequate structure corresponding to the “symbol generator” claim term. Notwithstanding
`
`this determination, AGIS amended independent claim 2 of the ’970 patent during reexamination to
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`incorporate a comparable means-plus-function term (i.e., “means for presenting a recipient symbol
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`on the geographical map corresponding to a correct geographical location of the recipient PDA/cell
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`phone”) and cited the ’728 patent as providing support for this amendment because the ’728 patent
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`is incorporated by reference in the ’970 patent. AGIS representatives involved in the reexamination
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`had personal knowledge of the ’728 patent’s litigation history as a result of having entered
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`appearances in the district court litigation and/or on appeal to the Federal Circuit following the
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`district court’s determination that claims incorporating the term “symbol generator” were indefinite.
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`Had the AGIS representatives disclosed the ’728 patent’s litigation history during reexamination of
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`the ’970 patent, the Patent Office would not have issued a reexamination certificate including
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`amended claim 2 with the phrase “means for presenting a recipient symbol on the geographical map
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`corresponding to a correct geographical location of the recipient PDA/cell phone” corresponding to
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`the “symbol generator” language previously found to be indefinite for lack of supporting structure.
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`By failing to disclose the ’728 patent’s litigation history during reexamination of the ’970 patent, the
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`AGIS representatives breached their duty of candor. The single most reasonable inference from the
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`failure of the AGIS representatives to disclose the ’728 patent’s litigation history—despite having
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`identified the ’728 patent as providing support for the proposed amended—is that the AGIS
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`representatives intended to deceive the Patent Office into issuing a claim they knew to be
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`unpatentable as indefinite in view of the earlier determinations by the district court and the Federal
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`14
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 15 of 49 PageID #: 4651
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`Circuit that the analogous “symbol generator” term was likewise indefinite for lack of supporting
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`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 patentability
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`as to those claims. Excerpts of the reexamination history are attached hereto as Exhibit B.
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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 for
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`at least a forced-message alert software-application program,” as all of the independent claims of
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`the ’970 patent required.” Accordingly, the examiners agreed with Google’s explanation that the
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`’970 patent was only “entitled to a priority date of November 26, 2008.” The examiners also agreed
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`with Google that “a substantial new question of patentability as to claims 2 and 10-13 of the ’970
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`patent [was] raised by Kubala and Hammond” and likewise that a separate “substantial new
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`question of patentability as to claims 2 and 10-13 of the ’970 patent [was] raised by Hammond,
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`Johnson, and Pepe.” Ex. B at pp. 1669 & 1671.
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`15
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 16 of 49 PageID #: 4652
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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 about
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`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 claim
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`2 while including additional limitations including “means for presenting a recipient symbol on
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`the geographical map corresponding to a correct geographical location of the recipient PDA/cell
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`phone.” AGIS’s representatives “indicated that the corresponding disclosure” for this limitation
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`was “found in the ’728 patent, incorporated by reference into the ’970 patent disclosure.” Ex. B
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`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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`16
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`

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`Case 2:22-cv-00263-JRG-RSP Document 80 Filed 06/30/23 Page 17 of 49 PageID #: 4653
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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 examiners
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`also concluded that AGIS’s proposed claims 14 and 15 were patentable over the prior art cited in
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`Google’s request, which had been directed to the original claims 2 and 10-13 rather than AGIS’s
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`subsequently-proposed claims 14 and 15. In particular, as to claim 14 (depending from claim 2),
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`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
`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)