Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/04/23 Page 1 of 167 PageID #:
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`Exhibit 7
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`

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`Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/04/23 Page 2 of 167 PageID #:
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF 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.
`
`DECLARATION OF TIM A. WILLIAMS, PH.D. REGARDING CLAIM
`CONSTRUCTION
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/04/23 Page 3 of 167 PageID #:
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION AND ENGAGEMENT ........................................................................ 1
`
`BACKGROUND AND QUALIFICATIONS .................................................................... 1
`
`LEGAL PRINCIPLES ........................................................................................................ 3
`
`A.
`
`B.
`
`C.
`
`Claim Construction ................................................................................................. 3
`
`Means-Plus-Function Claims .................................................................................. 5
`
`Indefiniteness .......................................................................................................... 5
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 7
`
`SUBJECT MATTER AND PROSECUTION OF THE ’970 PATENT ............................ 7
`
`A.
`
`B.
`
`C.
`
`Summary of ‘970 Patent ......................................................................................... 7
`
`Disclosure of the ‘970 Patent .................................................................................. 8
`
`Reexamination Proceedings .................................................................................... 9
`
`VI.
`
`CONSTRUCTION OF CLAIM TERMS ......................................................................... 10
`
`A.
`
`B.
`
`’970 Patent: “status data” (claims 2, 10) ............................................................... 10
`
`‘970 Patent: “means for presenting a recipient symbol on the geographical map
`corresponding to a correct geographical location of the recipient PDA/cell phone”
`(claim 2) ................................................................................................................ 15
`
`VII.
`
`CONCLUSION ................................................................................................................. 20
`
`i
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`I.
`
`INTRODUCTION AND ENGAGEMENT
`
`1.
`
`I have been retained as a technical expert in the above-captioned cases by
`
`Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Samsung”).
`
`I understand AGIS Software Development LLC (“AGIS”) asserts that Samsung infringes certain
`
`claims of U.S. Patent No. 8,213,970 (“the ’970 Patent”), U.S. Patent No. 9,467,838 (“the ’838
`
`Patent”), U.S. Patent No. 9,749,829 (“the ’829 Patent”), and U.S. Patent No. 9,820,123 (“the ’123
`
`Patent”) (collectively the “Patents-in-Suit”).
`
`2.
`
`I have been asked to analyze and provide opinions on the scope and meaning that a
`
`person of ordinary skill in the art (“POSA”) would have given to certain terms and phrases in the
`
`claims of the Patents-in-Suit at the time of the alleged invention, a process that is referred to as
`
`claim construction.
`
`3.
`
`The opinions that I provide herein relate to the ’970 patent. In rendering my
`
`opinions, I have reviewed the claims and specifications of the ’970 patent, its prosecution history,
`
`claim constructions provided by Samsung and AGIS, AGIS’s P.R. 3-1 Infringement Contentions
`
`and Samsung’s P.R. 3-3 Invalidity Contentions of the ’970 patent. My opinions are based on my
`
`years of education, training, teaching, and experience in the relevant art.
`
`4.
`
`I am being compensated at a rate of $895 per hour for my work on this case. My
`
`compensation is not dependent upon my opinions or testimony, or the outcome of this case.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`5.
`
`My background and qualifications as a technical expert for this matter are
`
`summarized below. A copy of my CV is attached as Exhibit A.
`
`6.
`
`I hold degrees from Michigan Technological University (Bachelor of Science in
`
`Electrical Engineering, 1976) and the University of Texas at Austin (Master of Science in
`
`1
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`Electrical Engineering, 1982; Ph.D. in Electrical Engineering, 1985; and Master of Business
`
`Administration, 1991). I have also been a Registered Patent Agent with the U.S. Patent and
`
`Trademark Office (“the USPTO”) since 2002.
`
`7.
`
`I am an industry professional with over 45 years of experience in wireless
`
`communications, computer networking and telecommunications technology.
`
`8.
`
`I am currently active as Chief Executive Officer at Beach Technologies, LLC
`
`(Danville, CA), a company related to intellectual property consulting.
`
`9.
`
`I am also currently active as a Member at Calumet Venture Management (Madison,
`
`WI), a company related to the investment into start-up companies.
`
`10.
`
`Beginning in 2004, I was the Founder and Chairman at DoceoTech Inc. (Danville,
`
`CA), which provides training for engineers in wireless, computer networking, and telephony
`
`technologies.
`
`11.
`
`From 2008 to 2010, I was a Founder and Board Member of BitRail Networks, Inc
`
`(Miami, FL). This company designed and produced computer networking equipment. One market
`
`the company served was edge devices for residential and community access.
`
`12.
`
`From 2006 to 2015, I was a Founder and Board Member of BEEcube, Inc.
`
`(Freemont, CA). This company built high-speed computing and computer networking equipment.
`
`One market the company served was networking equipment for backhaul networks used in 5G
`
`cellular networks.
`
`13.
`
`From 2004 to 2008, I was the Founder and CEO of SiBEAM, Inc. This company
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`designed and produced wireless networking IC and equipment.
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`2
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`14.
`
`From 1999 to 2000, I was Interim CEO and Advisory Board Member of Atheros
`
`Communications, Inc. (Palo Alto, CA). This company designed and produced wireless networking
`
`IC and equipment.
`
`15.
`
`From 1998 to 2000, I was CTO of Picazo Communications, Inc. (San Jose, CA).
`
`This company-built computer networking equipment that provided VoIP PBX functionality.
`
`16.
`
`From 1991 to 1998, I was Co-Founder, CTO, and VP Engineering of Wireless
`
`Access, Inc. (Santa Clara, CA). This company developed over-the-air communication protocols
`
`for communication between the subscriber device and the network.
`
`17.
`
`From 1979 to 1991, I was a Member of the Technical Staff at Motorola, Inc.
`
`(Schaumberg, IL and Austin, TX). In IL, I designed protocols for Digital voice communications.
`
`In TX, I designed ICs for communications, including Telecom, Wireless, Cellular and Computer
`
`Networking.
`
`18.
`
`I believe that I am qualified to provide reliable opinions in the field of the ’970
`
`patent, including the scope and meaning that a POSA would have given to the claim terms and
`
`phrases discussed herein as of the earliest claimed priority date of September 21, 2004. If it is
`
`determined that a later priority date, for example the November 26, 2008 application filing date,
`
`is appropriate, that would not change my opinions. A POSA’s understanding of the claim terms
`
`and phrases discussed herein would not have varied between September 2004 and November 2008,
`
`in my opinion.
`
`III.
`
`LEGAL PRINCIPLES
`
`19.
`
`For purposes of my opinion, I have applied legal principles that have been provided
`
`to me, which I summarize below.
`
`A.
`
`Claim Construction
`
`3
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`20.
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`Terms in a patent claim are generally given the ordinary and customary meaning
`
`that a person of skill in the art (“POSA”), at the time of the invention, would understand them to
`
`have.
`
`21.
`
`The meaning of a claim term as would have been understood to a POSA is obtained
`
`by consideration of the intrinsic evidence of the patent (i.e., patent claim language, specification,
`
`and prosecution history). The ordinary meaning of a claim term is its meaning to a POSA after
`
`reading the entire patent, including the claim having the term to be construed and other claims, as
`
`well as the specification. The ordinary and customary meaning of a term in a claim is sometimes
`
`readily apparent to a POSA. When the meaning of a term is clear, no construction is necessary.
`
`22.
`
`The claims themselves provide substantial guidance as to the meaning of a term.
`
`In particular, the meaning of a term can be understood based on the context in which the term
`
`appears in a claim. Since claim terms are usually used consistently throughout the patent, the use
`
`of a term in one claim can often inform the meaning of the same term in other claims.
`
`23.
`
`The specification is often the best guide to the meaning of a term. However, the
`
`scope of a claim generally should not be limited to the examples or embodiments that appear in
`
`the patent’s specification, even when the specification describes very specific embodiments or
`
`only one embodiment.
`
`24.
`
`The prosecution history can also provide guidance as to the meaning of a term in a
`
`claim because it may demonstrate the interpretation that should be given certain terms and phrases
`
`in a claim. The scope of a claim can also be limited if there is clear and unmistakable disclaimer
`
`of a feature in the specification and/or the prosecution history.
`
`25.
`
`Extrinsic evidence, such as dictionaries and scientific treaties, can be useful in
`
`claim construction when considered with the intrinsic evidence. However, such extrinsic evidence
`
`4
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`should not depart from the plain and ordinary meanings of a term as would be understood based
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`on the intrinsic evidence.
`
`B.
`
`26.
`
`Means-Plus-Function Claims
`
`I have been informed that under 35 U.S.C. § 112, sixth paragraph (pre-America
`
`Invents Act), a claim can “be expressed as a means or step for performing a specified function
`
`without the recital of structure, material, or acts in support thereof, and such claim shall be
`
`construed to cover the corresponding structure, material, or acts described in the specification and
`
`equivalents thereof.”
`
`27.
`
`Claims governed by 35 U.S.C. § 112, sixth paragraph are called “means-plus-
`
`function claims.”
`
`28.
`
`The presence of the term “means for” in a claim creates a presumption that the
`
`claim is governed by § 112, sixth paragraph. Conversely, the absence of the term “means for” in
`
`a claim provides a presumption that the claim is not governed by § 112, sixth paragraph. The latter
`
`presumption is rebutted if the challenger can show that the claim term fails to recite sufficiently
`
`definite structure, or else recites function without reciting sufficient structure for performing that
`
`function.
`
`29.
`
`Construing a means-plus-function claim term is a two-step process: first, the
`
`claimed function is identified, and second, the corresponding structure in the specification that
`
`performs the function is identified. A corresponding structure exists if the specification or the
`
`prosecution history clearly links or associates that structure to the function recited in the claim.
`
`C.
`
`30.
`
`Indefiniteness
`
`I have been informed that the claims of a patent must particularly point out and
`
`distinctly claim the subject matter of the patented invention. A claim is indefinite if it does not
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`5
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`reasonably inform a POSA of the scope of the invention with reasonable certainty. The degree of
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`precision necessary for adequate claims depends on the nature of the subject matter.
`
`31.
`
`I understand that the issue of indefiniteness applies to the overall claim rather than
`
`to particular claim terms in isolation. That is, the question in an indefiniteness inquiry is whether
`
`the claims as a whole, not particular claim terms, read in light of the specification delineating the
`
`patent and the prosecution history fail to inform with reasonable certainty those skilled in the art
`
`about the scope of the invention.
`
`32. With respect to means-plus-function terms, the claim must be tied to a structure
`
`defined with sufficient particularity in the specification.
`
`33.
`
`If the specification does not contain an adequate disclosure of the structure that
`
`corresponds to the claimed function, the patentee will have failed to particularly point out and
`
`distinctly claim the features of the claim, which renders the claim invalid for indefiniteness.
`
`34.
`
`Further, if the specification recites only functional descriptions tied to nothing more
`
`than “a general purpose computer,” the claim will be found indefinite. A means-plus-function
`
`term is indefinite when the specification simply describes the function to be performed, not the
`
`algorithm by which it is performed.
`
`35.
`
`The preferred definition of an algorithm in the computer art is: a fixed step-by-step
`
`procedure for accomplishing a given result; usually a simplified procedure for solving a complex
`
`problem, also a full statement of a finite number of steps. In other words, the structure required
`
`for a computational means limitation must be an algorithm—a sequence of computational steps to
`
`follow—that must be found in the patent specification.
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`6
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`36.
`
`Precedent and practice permit a patentee to express that procedural algorithm in any
`
`understandable terms, including as a mathematical formula, in prose, or as a flow chart, or in any
`
`other manner that provides sufficient structure.
`
`IV.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`37.
`
`A person of ordinary skill in the art would have had at least a Bachelor of Science
`
`Degree in Electrical/Computer Engineering or Computer Science (or equivalent degree) and at
`
`least two years of experience working in the fields of human-computer interfaces, wireless/mobile
`
`location, computer communications programming, or related fields.
`
`V.
`
`SUBJECT MATTER AND PROSECUTION OF THE ’970 PATENT
`
`A.
`
`38.
`
`Summary of ‘970 Patent
`
`The ’970 patent, titled “Method of Utilizing Forced Alerts for Interactive Remote
`
`Communications,” relates to a specialized software application program that enables participants
`
`to use “forced message alerts.” See ’970 Patent at Abstract. “The heart of the invention lies in [a]
`
`forced message alert software application program provided in each PC or PDA/cell phone.” See
`
`’970 Patent at 4:47-49. The ’970 patent describes a “communication system and method that joins
`
`participants in a communications network using personal computers (‘PC’) and handheld cell
`
`phones having integrated personal digital assistant (‘PDA/cell phone’) with a forced message alert
`
`software application program that allows a participant to send a text or voice message ... and force
`
`an automatic acknowledgment of receipt and a manual response.” See ’970 Patent at 3:22-28.
`
`39.
`
`The ’970 patent was issued from an application filed on November 26, 2008. I
`
`understand that the ’970 patent purports to claim priority through a chain of continuation-in-part
`
`applications to U.S. Patent Application No. 10/711,490 (the “’490 application”), filed September
`
`21, 2004. See ’970 Patent, cover page. No issues in my declaration turn on the exact priority date.
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`7
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`40.
`
`The ’970 patent purports to incorporate by reference U.S. Patent No. 7,031,728
`
`(“the ’728 Patent”) (Exhibit B). See ’970 Patent at 1:44-47.
`
`B.
`
`41.
`
`Disclosure of the ’970 Patent
`
`The ’970 patent is directed to a specialized software application program that
`
`enables participants to use forced message alerts. See ’970 Patent at Abstract. Figure 1a shown
`
`below shows a PDA/cell phone from the patent installed with forced message alert software:
`
`42.
`
`Specifically, the forced message alert software application is described as being
`
`able to:
`
`(a) allow an operator to create and transmit a forced message alert from a sender
`PDA/cell phone to one or more recipient PCs and PDA/cell phones within the
`communication network;
`
`(b) automatically transmit an acknowledgement of receipt to the sender PDA cell
`phone upon the receipt of the forced message alert;
`
`(c) periodically resend the message to the recipient PCs and PDA/cell phones that
`have not sent an acknowledgement;
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`8
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`(d) provide an indication of which recipient PCs and PDA/cell phones have
`acknowledged the forced message alert;
`
`(e) provide a manual response list on the display of the recipient PC and PDA/cell
`phone’s display that can only be cleared by manually transmitting a response; and
`
`(f) provide an indication on the sender PDA/cell phone of the status and content the
`manual responses.
`
`’970 Patent at Abstract.
`
`43.
`
`The forced message alerts can be text or voice messages. See ’970 Patent at 2:11-
`
`13, 8:23-25. The ’970 Patent indicates that the forced message alerts are transmitted “via TCP/IP
`
`or another digital transmission means.” See ’970 Patent at 2:11-12. The ’970 Patent explains a
`
`user can send messages to the cell phones of a large group of people through Digital Smart
`
`Message Service (SMS) and TCP/IP messages. See ’970 Patent at 1:51-57.
`
`44.
`
`Accordingly, the purpose of the invention according to the ’970 Patent is to provide
`
`“a method in which by sending a forced text or voice message to a recipient or a group of recipients,
`
`a sender can compel an automatic acknowledgement of receipt from each recipient's PC or
`
`PDA/cell phone and require a manual response from the recipient via the recipient’s cell phone
`
`before the message can be cleared.” See ’970 Patent at 2:49-55.
`
`C.
`
`45.
`
`Reexamination Proceedings
`
`There was a reexamination proceeding for the ’970 Patent (Control No.
`
`90/014,507). In this proceeding, the USPTO instituted a reexamination of the ’970 Patent in which
`
`the examiner found reexamined claims 2 and 10-13 unpatentable as obvious over the prior art. See
`
`Exhibit C at 50-96, 213-253. To overcome the Examiner’s rejections, the applicant added new
`
`limitations to claim 2 and 10 to overcome the art. Specifically, for claim 2, the applicant added:
`
`[A](means for) displaying a geographical map with georeferenced entities on the display
`of the sender PDA/cell phone;
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`9
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`[B] (means for) obtaining location and status data associated with the recipient PDA/cell
`phone; and
`
`[C] (means for) presenting a recipient symbol on the geographical map corresponding to
`a correct geographical location of the recipient PDA/cell phone.
`
`Exhibit C at 5-6, 22-29.
`
`VI.
`
`CONSTRUCTION OF CLAIM TERMS
`
`46.
`
`I provide my opinions below on the following claim terms and phrases for which I
`
`understand that the parties dispute whether the terms are indefinite.
`
`A.
`
`’970 Patent: “status data” (claims 2, 10)
`
`Claim Term
`
`Claim
`
`AGIS’s Proposed
`Construction
`
`Samsung’s Proposed
`Construction
`
`“status data”
`
`’970 Patent
`Claims 2, 10
`
`Plain and ordinary
`meaning.
`
`Indefinite
`
`47.
`
`The phrase “status data”—added to both claims 2 and 10 of the ’970 Patent during
`
`reexamination (Exhibit C at 22-23, 26)—is indefinite because a person of ordinary skill in the art
`
`would not be able to determine the scope of the invention with reasonable certainty after looking
`
`at the specification and prosecution history.
`
`48.
`
`The question raised by the ’970 Patent is whether “status data” encompasses (1)
`
`information regarding actions taken by the actual user of the “recipient PDA/cellphone” (e.g.,
`
`whether the user has manually responded to a particular message) or, instead, (2) information
`
`regarding the device independent of what if anything the user has done with the message (e.g., the
`
`device’s battery level).
`
`10
`
`

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`49.
`
`On the one hand, certain portions of the ’970 Patent’s specification concern the
`
`“status” of users themselves and/or whether they have manually responded to messages. See the
`
`examples below:
`
`
`
`’970 Patent at Abstract (“status and content” regarding “the manual
`responses”)
`
`
`
`’970 Patent at Col. 2, lines 31-35 (“status [of] the manual response”)
`
`
`
`’970 Patent at Col. 3, lines 52-67 (“Network participant location, identity and
`status messages are sent to the server by each user.”)
`
`11
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`

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`50.
`
`However, in other instances, there are portions of the ’970 Patent that refer to some
`
`“other” status, which is not related to whether users have manually responded to messages or not.
`
`See the examples below:
`
`
`
`’970 Patent at Figure 1B (“EXCHANGE OF IDENTITY, LOCATION AND
`STATUS DATA BETWEEN THE PARTICIPANTS”);
`
`
`
`’970 Patent at Col. 4, lines 12-18 (“The small area 16a is the navigation bar
`that depicts the telephone, GPS and other status data and the active software.”)
`
`
`
`’970 Patent at Col. 5, lines 17-27 (“applicable status information”)
`
`
`
`’970 Patent at Col. 6, lines 38-42 (“status and latitude and longitude
`information concerning that symbol or location”).
`
`12
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`

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`51.
`
`Thus, reading the specification, it is not clear to me what the meaning of the term
`
`“status data” is or what the term refers to, nor do I believe it would have been clear to one of skill
`
`in the art as of November 2008 or as of the earlier-claimed priority date in September 2004. For
`
`example, it is not clear whether the status data refers to whether users have manually responded to
`
`messages or their identity, location, or something else.
`
`52.
`
`During the reexamination, AGIS indicated that the ’728 patent supported the term
`
`“status data”. See ’970 Patent Reexamination (Exhibit C) at 177-178. The ’728 patent provides:
`
`53.
`
`This disclosure provides that the PDA/GPS phones report positions and “status
`
`information” to all users in the communications net, and then later makes a distinction between
`
`the “location,” “status,” and “other” information, but does not provide guidance as to what is status
`
`13
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`information or how that is different than the “location information” or “other information.” Thus,
`
`it is unclear from the ’728 patent what is meant by the term “status data.”
`
`54.
`
`If anything the ’728 patent confirms that certain types of data, even aside from
`
`location data, would not qualify as “status data” as there is some type of “other” data. But it is not
`
`possible to tell with reasonable certainty the dividing line between “status data” and “other” data.
`
`Notwithstanding, claims 2 and 10 as amended, both require “location and status data.”
`
`55. Moreover, during reexamination, in the examiners’ statement of reasons for
`
`patentability, the examiners seemed to point to “the algorithm described in the ’970 Patent at col.
`
`3, lines 52-67” as alleged examples of support from the specification for the limitation. ’970
`
`Reexamination (Exhibit C) at 11, 97. Specifically, the ’970 Patent provides:
`
`56.
`
`But this passage simply describes how “status messages are sent to the server by
`
`each user,” and further that “such data is of interest to all the network participants” and is
`
`therefore forwarded by the server “from one of the participants to all other participants, thus
`
`providing the information necessary for all network participants to know the identity, location and
`
`status of all other network participants.” But it is not clear from this passage what status data is.
`
`14
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`Moreover, it is not clear what information would be “of interest to all network participants,” which
`
`is, at best, a subjective analysis. What would be of interest to one user could be quite different
`
`than what is of interest to another user.
`
`57.
`
`Accordingly, the ’970 Patent fails to provide reasonable certainty concerning the
`
`meaning of “status data,” which is, therefore, indefinite.
`
`’970 Patent: “means for presenting a recipient symbol on the geographical map
`B.
`corresponding to a correct geographical location of the recipient PDA/cell phone” (claim 2)
`
`Claim Term
`
`Claim
`
`AGIS’s Proposed
`Construction
`
`Samsung’s Proposed
`Construction
`
`’970 Patent
`Claim 2
`
`“means for
`presenting a
`recipient symbol
`on the
`geographical
`map
`corresponding to
`a correct
`geographical
`location of the
`recipient
`PDA/cell phone”
`
`Governed by 35 U.S.C. §
`112(6)
`Function: presenting a
`recipient symbol on the
`geographical map
`corresponding to a correct
`geographical location of the
`recipient PDA/cell phone
`
`Structure: insufficiently
`disclosed and therefore
`indefinite
`
`Governed by 35 U.S.C.
`§ 112(6).
`Function: presenting
`a recipient symbol
`on the geographical
`map corresponding
`to a correct
`geographical
`location of the
`recipient PDA/cell
`phone
`
`Structure: PDA/cell
`phone hardware
`including display 16
`and a wireless receiver
`and/or transreceiver;
`and equivalents thereof
`
`Alternatively:
`Function: presenting
`a recipient symbol
`on the geographical
`map corresponding
`to a correct
`geographical
`location of the
`recipient PDA/cell
`phone
`
`15
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/04/23 Page 19 of 167 PageID #:
`7252
`
`Structure: a PC or
`PDA/cell phone
`configured to implement
`the algorithm disclosed in
`the’970 Patent at 6:25-27,
`6:33-37, and equivalents
`thereof
`
`58.
`
`I understand that the parties agree that this term should be construed as a means-
`
`plus-function term, and agree to the function of this term, but disagree as to its structure.
`
`59.
`
`The agreed function for this term is “presenting a recipient symbol on the
`
`geographical map corresponding to a correct geographical location of the recipient PDA/cell
`
`phone.”
`
`60.
`
`It is my opinion that the ’970 Patent does not provide adequate structure
`
`corresponding to this function. That is, the ’970 Patent fails to disclose any steps for performing
`
`the recited function—presenting a symbol at the correct geographical location.
`
`61.
`
`The ’970 Patent periodically refers to the “latitude and longitude” of users’
`
`PDAs/cell phones as well as “x and y coordinates” on other users’ screens. See ’970 Patent at 5:37-
`
`44. However, the specification never discloses “how” latitude and longitude are correlated with
`
`coordinates on users’ screens to present a symbol with the correct geographical location of the
`
`recipient.
`
`62.
`
`The ’970 Patent does not provide any sequence of computational steps that one
`
`could follow to take the input (latitude and longitude) and convert it into an output (i.e., x and y
`
`coordinates on screen) to achieve the disclosed result.
`
`63.
`
`Any geographical location necessarily will have a latitude and longitude, and thus,
`
`the specification’s references to “latitude and longitude” do not impose any boundaries at all. Any
`
`screen will have x and y coordinates, and the “x” and “y” locations on the screen impose no limits.
`
`16
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/04/23 Page 20 of 167 PageID #:
`7253
`
`64.
`
`As shown in the chart above, AGIS proposes two different structures for this term.
`
`I do not agree with either structure.
`
`65.
`
`First, AGIS’s first structure focuses on hardware: “PDA/cell phone hardware
`
`including display 16 and a wireless receiver and/or transceiver; and equivalents thereof.”
`
`However, this structure does not address the full function which requires physically displaying the
`
`symbol and also displaying a symbol in the correct place. (Agreed to function: presenting a
`
`recipient symbol on the geographical map corresponding to a correct geographical location of the
`
`recipient PDA/cell phone). There is no mention in the proposed structure of how the phone hardware
`
`would present a symbol at the correct geographical location.
`
`66.
`
`Second, AGIS’s other proposal focuses on a software-based algorithm (“a PC or
`
`PDA/cell phone configured to implement the algorithm disclosed in the ’970 Patent at 6:25-27,
`
`6:33-37 and equivalents thereof”).
`
`67.
`
`6:25-27, 6:33-37 of the ‘970 Patent which AGIS relies one says:
`
`Each symbol is placed at the correct geographical location on the user display and
`is correlated with the map on the display . . . . The map, fixed entities, events and
`PDA/cell phone device communication net participants’ latitude and longitude
`information is related to the “x” and “y” location on the touch screen display map
`by a mathematical correlation algorithm.
`
`’970 Patent at 6:25-27, 6:33-37.
`
`68.
`
`As shown from the passage above, the passage uses the term “algorithm.”
`
`However, it does nothing more than use that term. It does not provide any disclosure for what the
`
`algorithm is or how it would work. This part of the specification does not describe “how” the
`
`purported algorithm correlates users’ “latitude and longitude information” with “‘x’ and ‘y’
`
`location on the touch screen.” Indeed, nowhere in the specification is this correlation found. The
`
`17
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/04/23 Page 21 of 167 PageID #:
`7254
`
`specification never discloses any sequence of computational steps for converting the input into an
`
`output.
`
`69.
`
`AGIS’s cited passage of the ’970 Patent does not provide any structure for
`
`performing that function. Rather, it merely describes the function to be performed—presenting a
`
`recipient symbol on the geographical map corresponding to a correct geographical location of the
`
`recipient PDA/cell phone.
`
`70.
`
`During the reexamination of the ’970 Patent, in the examiners’ statement of reasons
`
`for patentability, the examiners cited col. 5, lines 28-44 as an example of an algorithm that related
`
`to “corresponding to a correct geographical location of the recipient PDA/cell phone” that was
`
`described in the ’970 specification. ’970 Reexamination (Exhibit C) at 11, 97.
`
`71.
`
`Col. 5, lines 28-44 of the ’970 Patent says:
`
`Also shown on the display screen 16, specifically the geographical display 16b, is
`a pair of different looking symbols 30 and 34, a small triangle and a small square,
`which are not labeled. These symbols 30 and 34 can represent communication net
`participants having cellular phones in the displayed geographical area that are part
`of the overall cellular phone communications net, each participant having the same
`device 10 used. The latitude and longitude of symbol 30 is associated within a
`database with a specific cell phone number and, if available, its IP address and
`Email address. The screen display 16b, which is a touch screen, provides x and y
`coordinates of the screen 16b to the CPU's software from a map in a geographical
`database. The software has an algorithm that relates the x and y coordinates to
`latitude and longitude and can access a communications net participant’s symbol
`or a fixed or movable entity's symbol as being the one closest to that point.
`
`’970 Patent at 5:28-44.
`
`72.
`
`Similar to the passage from the ’970 Patent that that was recited by AGIS, this
`
`passage also does not disclose any sequence of computational steps to follow to take the input
`
`(latitude and longitude) and convert it into an output (i.e., x and y coordinates on screen).
`
`73.
`
`Further, to the extent that AGIS argues this term is supported by the ’728 Patent
`
`(which is purportedly incorporated by reference), there is no support for this term in that patent
`
`18
`
`

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`Case 2:22-cv-00263-JRG-RSP Document 97-7 Filed 08/