Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 1 of 10 PageID #: 3354
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:21-cv-00072-JRG
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`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S SUR-REPLY
`IN OPPOSITION TO INTERVENORS SMITH MICRO SOFTWARE, INC.
`AND SMITH MICRO SOFTWARE, LLC’S MOTION TO INTERVENE AND
`MOTION TO STAY PROCEEDINGS AS TO ITS ACCUSED TECHNOLOGY,
`PENDING ADJUDICATION OF THEIR PENDING DECLARATORY JUDGMENT
`ACTION AGAINST AGIS SOFTWARE DEVELOPMENT LLC (DKT. 114)
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`Defendants.
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 2 of 10 PageID #: 3355
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`TABLE OF CONTENTS
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`Page(s)
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`I.
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`II.
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`III.
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`INTRODUCTION .............................................................................................................. 1
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`A STAY IS NOT WARRANTED BASED ON THE CUSTOMER-SUIT
`EXCEPTION ...................................................................................................................... 1
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`A STAY IS NOT APPROPRIATE UNDER THE GENERAL STAY
`FACTORS........................................................................................................................... 4
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`IV.
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`CONCLUSION ................................................................................................................... 5
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 3 of 10 PageID #: 3356
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Innovative Automation, LLC v. Audio Video & Video Labs, Inc.,
`No. 6:11-cv-234, 2012 WL 10816848 (E.D. Tex. May 30, 2012) ........................................3, 4
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`In re Nintendo of Am., Inc.,
`756 F.3d 1363 (Fed. Cir. 2014)..................................................................................................4
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`Parallel Networks Licensing, LLC v. Superior Turnkey Sol.’s Grp., Inc.,
`No. 4:19-cv-516, 2020 WL 2098203 (E.D. Tex. May 1, 2020) ............................................2, 3
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`Rembrandt Wireless Techs., LP v. Apple Inc.,
`No. 2:19-cv-00025-JRG, 2019 WL 6344471 (E.D. Tex. Nov. 27, 2019) .............................3, 4
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`ii
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 4 of 10 PageID #: 3357
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
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`undersigned counsel, hereby submits this sur-reply in opposition to Intervenors Smith Micro
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`Software, Inc. (“SMSI”) and Smith Micro Software, LLC’s (“SMSL”) (collectively,
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`“Intervenors”) Motion to Intervene and Motion to Stay Proceedings as to its Accused Technology
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`Pending Adjudication of Their Pending Declaratory Judgment Action Against AGIS Software
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`Development LLC (Dkt. 114) (the “Motion”).
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`I.
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`INTRODUCTION
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`Intervenors’ Motion to Stay Proceedings should be denied. Contrary to Intervenors’
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`assertions, the customer-suit exception and the factors addressing whether a motion to stay is
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`warranted both weigh against granting a stay here.
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`For the first time on reply, Intervenors suggest that this case should be severed because it
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`is “bright-line easy and efficient.” Intervenors, nor Defendants T-Mobile USA, Inc. and T-Mobile
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`US, Inc., have moved for severance of this case. Nonetheless, Intervenors cannot dispute that the
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`same patents, same infringement issues, and same validity issues exist such that staying the present
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`case in favor of Intervenors’ later-filed declaratory judgment action would result in a duplication
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`of efforts, particularly where parties have already begun claim construction. Given the number of
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`pending cases in this District, the guiding principles in the customer-suit exception cases of
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`“efficiency” and “judicial economy” would be best served by denying Intervenor’s motion to stay.
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`II.
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`A STAY IS NOT WARRANTED BASED ON THE CUSTOMER-SUIT
`EXCEPTION
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`It is undisputed that Intervenors’ action for declaratory judgment was filed after the
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`complaint was filed in the present case. See Resp. at 6. Accordingly, the first-to-file rule applies.
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`Staying the present action and permitting the NDCA Case to proceed would not resolve all
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`issues with regard to the T-Mobile defendants. The NDCA Case does not address the T-Mobile
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`1
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 5 of 10 PageID #: 3358
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`Fleet Management Solutions applications, systems, and servers, SyncUp FLEET, SyncUP DRIVE,
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`SyncUP TRACKER, Geotab Drive, Geotab G08, Geotab G09, and MyGeotab which have been
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`accused here.
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`Moreover, Courts have “declined to apply the customer-suit exception to cases when the
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`manufacturer is charged with indirect infringement and the reseller is charged with direct
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`infringement of a method patent because the two claims are not dispositive of each other—the
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`outcome of the indirect infringement suit involving the manufacturer may not dispose entirely of
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`all the claims in the direct infringement suit involving the customer.” Parallel Networks Licensing,
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`LLC v. Superior Turnkey Sol.’s Grp., Inc., No. 4:19-cv-516, 2020 WL 2098203, at *2 (E.D. Tex.
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`May 1, 2020) (citation omitted). The NDCA Case does not address, for example, claims of the
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`’829 Patent, which includes limitations such as “performing, by one or more server devices” and
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`“wherein the one or more server devices receive the first location information using an Internet
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`Protocol.” Ex. 1, ’829 Patent at claims 1, 16. Moreover, the ’728 and ’724 Patents disclose “[a]
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`method of establishing a cellular phone communication network for designated participating users
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`. . . .” Ex. 2, ’728 Patent at claim 7; Ex. 3, ’724 Patent at claim 9. Accordingly, Intervenors’
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`allegation that the NDCA Case would resolve “all issues as to the Family Products” (Reply at 2) is
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`incorrect. T-Mobile is not merely a reseller of Intervenors’ products, but rather, has directly
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`infringed the method claims of the Asserted Patents. See Parallel Networks, 2020 WL 2098203,
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`at *3 (“And Parallel Networks provided some evidence that Superior Turnkey directly infringed
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`the method claims of the patents-in-suit by using, or providing and causing to be used, Citrix
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`products.”).
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`Based on publicly available information, “T-Mobile’s primary location and parental
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`controls platform was developed by Circle Media Labs.” See Ex. 4, SMSI Coverage. Intervenors
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`2
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 6 of 10 PageID #: 3359
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`acquired the “operator business of Circle Media Labs.” The FamilyMode and FamilyWhere
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`products are offered only by T-Mobile, whereas Smith Micro offers its own white-label software
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`platform, SafePath. See Ex. 5, Fierce Wireless (“Smith Micro acquired a perpetual source code
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`license to Circle Media Labs’s market-leading parental controls software as part of the transaction,
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`which has enabled the company to add key functionality to its SafePath platform.”). T-Mobile
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`owns the trademarks for both FamilyMode and FamilyWhere. See Ex. 6 and 7. Accordingly,
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`Intervenors’ SafePath products are not the same as T-Mobile’s FamilyMode and FamilyWhere
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`products, and T-Mobile is not merely a reseller of Intervenors’ products. See Ex. 8, WillowDale
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`Partners (“Unlike most application developers who releases their apps directly to consumers, SMSI
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`white labels their products to carriers and MSOs. Carriers & MSOs then rebrand SMSI’s products
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`as their own, and sells these apps [to] their own retail customers.”). Notably, in its complaint in
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`the NDCA Case, Intervenors have alleged non-infringement by the FamilyMode and FamilyWhere
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`products, not the remaining Smith Micro products or the underlying technology. Accordingly, all
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`issues would not be resolved by the NDCA Case. This factor weighs against applying the
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`customer-suit exception. See Innovative Automation, LLC v. Audio Video & Video Labs, Inc., No.
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`6:11-cv-234, 2012 WL 10816848, at *10 (E.D. Tex. May 30, 2012).
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`In addition, Intervenors do not address whether T-Mobile has agreed to be bound by the
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`NDCA Case brought by Intervenors. Accordingly, this factor weighs against application of the
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`customer-suit exception. Accordingly, the NDCA Case “would not be dispositive of the matter
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`before this Court.” Parallel Networks, 2020 WL 2098203, at *3. “While the resolution of the
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`[NDCA Case] may resolve some issues in this case, the resolution of the [NDCA Case] would not
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`be dispositive or resolve major issues of the case.” Id. Accordingly, AGIS will be “forced to
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`litigate in multiple forums.” See Rembrandt Wireless Techs., LP v. Apple Inc., No. 2:19-cv-00025-
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`3
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 7 of 10 PageID #: 3360
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`JRG, 2019 WL 6344471, at *2 (E.D. Tex. Nov. 27, 2019). Intervenors argue that Rembrandt does
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`not apply here because “T-Mobile did not develop or contribute to the development of the
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`technology in the Family products.” Reply at 5. However, publicly available information shows
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`that “T-Mobile FamilyMode is developed by the Un-carrier [T-Mobile] together with Circle
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`Media Labs, Inc..” Ex. 9, BusinessWire (emphasis added). As previously stated, Smith Micro
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`acquired the operator business of Circle Media Labs, and white-lists T-Mobile’s FamilyMode and
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`FamilyWhere products.
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`Intervenors rely on the In re Nintendo of Am., Inc., 756 F.3d 1363, 1365 (Fed. Cir. 2014),
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`case in support of its argument that this case should be stayed. Reply at 3. However, AGIS notes
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`that in that case, the plaintiff brought a case against Nintendo and eleven retailer defendants. In
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`contrast, T-Mobile is the only customer of Smith Micro here.
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`“[T]he guiding principles in the customer-suit exception cases are efficiency and judicial
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`economy,” and these principles would not be served by staying the present action. See Innovative,
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`2012 WL 10816848, at *11. Judicial economy is best served by moving forward with the entirety
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`of the consolidated cases, particularly where parties have already begun claim construction. This
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`Court will “be asked to construe the disputed terms of the [Asserted Patents] and determine [their]
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`validity whether or not” Intervenors are present in this litigation. Id. In addition, T-Mobile will
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`be forced to proceed in the present litigation regardless of whether Intervenors’ request to stay is
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`granted or not. Accordingly, staying the action against T-Mobile would not promote judicial
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`economy and the customer-suit exception should not apply here. See id.
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`III. A STAY IS NOT APPROPRIATE UNDER THE GENERAL STAY
`FACTORS
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`Contrary to Intervenors’ arguments, the general stay factors weigh against granting a stay.
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`Intervenors incorrectly assert that resolution of the NDCA Case would relieve the burdens
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`4
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 8 of 10 PageID #: 3361
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`of litigation from T-Mobile. However, T-Mobile would be required to undergo claim construction
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`regardless of whether the NDCA Case proceeds or not. Moreover, Intervenors cannot dispute that
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`T-Mobile will be forced to proceed with its invalidity claims regardless of whether the NDCA Case
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`proceeds as well. Accordingly, staying the present case with respect to only the FamilyMode and
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`FamilyWhere products would result in duplicative efforts.
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`Accordingly, a stay would not simplify the issues for trial, where T-Mobile has joined the
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`other defendants with respect to invalidity contentions, subject matter eligibility contentions, and
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`the retention of expert(s). T-Mobile and AGIS would still be obligated to litigate issues of
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`infringement and invalidity with respect to certain claims of the Asserted Patents for the
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`FamilyMode and FamilyWhere products and the Fleet Management Solutions applications,
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`systems, and servers.
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`Discovery is ongoing in this case, depositions in this case have been noticed, parties have
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`begun claim construction, and the claim construction hearing is set for October 26, 2021. A trial
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`date has been set for March 7, 2022 and fact discovery is set to close in two months. See T-Mobile
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`Case, Dkt. 118 (E.D. Tex. Aug. 11, 2021). In contrast, AGIS has filed a motion to dismiss in the
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`NDCA Case for lack of personal jurisdiction, where the date of the hearing has been amended to
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`January 27, 2022 based on the Court’s calendar. See NDCA Case, Dkt. 32 (N.D. Cal. Aug. 30,
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`2021). On balance, the factors demonstrate that a stay is not warranted.
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`IV. CONCLUSION
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`For the foregoing reasons, none of the factors weigh in favor of a stay and AGIS
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`respectfully requests that the Court deny Intervenors’ Motion to Intervene and Motion to Stay
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`Proceedings as to Their Accused Technology Pending Adjudication of Their Pending Declaratory
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`Judgment Action Against AGIS Software Development LLC (Dkt. 114).
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 9 of 10 PageID #: 3362
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`Dated: September 7, 2021
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`Respectfully submitted,
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` /s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:21-cv-00072-JRG-RSP Document 143 Filed 09/07/21 Page 10 of 10 PageID #: 3363
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on September 7, 2021, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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