Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 1 of 23 PageID #: 7439
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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-263-JRG
`(LEAD CASE)
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`JURY TRIAL DEMANDED
`
`Defendants.
`
`
`
`SAMSUNG’S MOTION FOR LEAVE TO AMEND ANSWER TO ADD CLAIM
`PRECLUSION AND KESSLER DOCTRINE AFFIRMATIVE DEFENSES
`
`
`
`

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`Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 2 of 23 PageID #: 7440
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`
`TABLE OF CONTENTS
`
`
`Page
`
`I.
`
`FACTUAL BACKGROUND ............................................................................................ 2
`
`A.
`
`Procedural History ................................................................................................. 2
`
`1.
`
`2.
`
`AGIS’s Past Lawsuits Asserting The ’970 Patent Against FMD
`And The First Dismissal Following Its Reexamination Claim
`Amendments .............................................................................................. 2
`
`AGIS Dismisses Second Action Asserting ’970 Patent Against
`FMD ........................................................................................................... 4
`
`3.
`
`AGIS Seeks To Add FMD To This Case A Year After It Was Filed ........ 4
`
`B.
`
`Samsung’s Defenses Based On Kessler Doctrine And Claim Preclusion ............. 5
`
`II.
`
`LEGAL STANDARDS ..................................................................................................... 6
`
`III.
`
`ARGUMENT ..................................................................................................................... 7
`
`A.
`
`Each Good-Cause Factor Favors Granting Samsung Leave To Amend ................ 7
`
`1.
`
`2.
`
`3.
`
`Samsung Has Timely Moved To Amend Its Answer In This Case ........... 7
`
`Samsung’s Preclusion Defenses Are Important As They Could
`Narrow The Issues And Could Be Waived If Not Raised Now ................ 8
`
`Samsung’s Amendment Does Not Result In Any Prejudice Or
`Necessitate a Continuance Because It Does Not Require Discovery ...... 10
`
`B.
`
`The Rule 15(a) Factors Also Weigh In Favor Of Granting Leave ...................... 10
`
`1.
`
`2.
`
`The Kessler Doctrine Preclusion Defense Is Not Futile .......................... 11
`
`Samsung’s Claim Preclusion Defense Is Not Futile ................................ 13
`
`IV.
`
`CONCLUSION ................................................................................................................ 15
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 3 of 23 PageID #: 7441
`
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`CASES
`
`Adaptix, Inc. v. AT&T Mobility LLC,
`No. 6:12-CV-120, 2015 WL 12696204 (E.D. Tex. May 12, 2015) ....................................... 15
`
`Adrain v. Vigilant Video, Inc.,
`No. 2:10-CV-173-JRG, 2013 WL 1984369 (E.D. Tex. May 13, 2013) ................................... 8
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012)............................................................................................... 12
`
`Blonder-Tongue Lab’ys, Inc. v. Univ. of Ill. Found.,
`402 U.S. 313 (1971) ................................................................................................................ 13
`
`Bloom Eng’g Co. v. N. Am. Mfg. Co.,
`29 F.3d 1247 (Fed. Cir. 1997)................................................................................................. 12
`
`Brain Life, LLC v. Elekta Inc.,
`746 F.3d 1045 (Fed. Cir. 2014)............................................................................................... 11
`
`Cellular Commc’ns Equip. LLC v. AT&T Inc.,
`No. 2:15-CV-00576, 2017 WL 2267296 (E.D. Tex. May 24, 2017) ....................................... 9
`
`Estech Sys., Inc. v. Target Corp.,
`No. 2:20-CV-00122-JRG-RSP, 2021 WL 2187978 (E.D. Tex. May 28, 2021) ............. 6, 7, 11
`
`GREE, Inc. v. Supercell Oy,
`No. 2:19-CV-00310-JRG-RSP, 2021 WL 1626740 (E.D. Tex. Apr. 26, 2021) ....................... 8
`
`In re Google LLC,
`Nos. 2022-140 to -142, 2022 WL 1613192 (Fed. Cir. May 23, 2022) ..................................... 4
`
`Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,
`719 F.3d 1367 (Fed. Cir. 2013)............................................................................................... 10
`
`Mars Inc. v. Nippon Conlux Kabushiki-Kaisha,
`58 F.3d 616 (Fed. Cir. 1995)................................................................................................... 14
`
`Martinez v. Nueces Cnty.,
`71 F.4th 385 (5th Cir. 2023) ..................................................................................................... 7
`
`Mass Engineered Design, Inc. v. Ergotron, Inc.,
`No. 2:06 CV 272, 2008 WL 1930299 (E.D. Tex. Apr. 30, 2008) .......................................... 10
`
`Mozingo v. Correct Mfg. Corp.,
`752 F.2d 168 (5th Cir. 1985) .................................................................................................... 9
`
`ii
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`Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 4 of 23 PageID #: 7442
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`R+L Carriers, Inc. v. Qualcomm, Inc.,
`801 F.3d 1346 (Fed. Cir. 2015)............................................................................................... 12
`
`Realtime Adaptive Streaming LLC v. Netflix, Inc.,
`No. CV 19-6359-GW-JCx, 2020 WL 7889048 (C.D. Cal. Nov. 23, 2020),
`aff’d, 41 F.4th 1372 (Fed. Cir. 2022) ...................................................................................... 13
`
`Realtime Data LLC v. EchoStar Corp.,
`No. 6:17-CV-00084-JDL, 2018 WL 7283282 (E.D. Tex. July 17, 2018) .............................. 10
`
`Rothschild Connected Devices Innovations, LLC v. ADS Sec., L.P.,
`No. 2:15-CV-01431-JRG-RSP, 2019 WL 6002198 (E.D. Tex. Mar. 11, 2019) ...................... 6
`
`Senju Pharm. Co. v. Apotex Inc.,
`746 F.3d 1344 (Fed. Cir. 2014)......................................................................................... 11, 15
`
`Seven Networks, LLC v. Google LLC,
`No. 2:17-CV-00442-JRG, 2018 WL 3327927 (E.D. Tex. July 6, 2018) .......................... 10, 14
`
`Seven Networks, LLC v. Motorola Mobility LLC,
`No. 3:21-CV-01036-N, 2022 WL 426589 (N.D. Tex. Feb. 10, 2022) ................................... 14
`
`Simple Air, Inc. v. Google Inc.,
`204 F. Supp. 3d 908 (E.D. Tex. 2016) ...................................................................................... 9
`
`SimpleAir, Inc. v. Google LLC,
`884 F.3d 1160 (Fed. Cir. 2018)........................................................................................... 6, 13
`
`SpeedTrack, Inc. v. Off. Depot, Inc.,
`791 F.3d 1317 (Fed. Cir. 2015)........................................................................................... 5, 11
`
`Trs. of Bos. Univ. v. Kingbright Elec. Co.,
`427 F. Supp. 3d 246 (D. Mass. 2019) ............................................................................... 14, 15
`
`Uniloc 2017, LLC v. Ubisoft, Inc.,
`No. SA CV 19-01150-DOC-KES, 2021 WL 1255605 (C.D. Cal. Mar. 18,
`2021) ................................................................................................................................. 14, 15
`
`Wi-LAN, Inc. v. HTC Corp.,
`No. 2:11-CV-68-JRG, 2013 WL 1222302 (E.D. Tex. Mar. 25, 2013) ..................................... 9
`
`Xiaohua Huang v. Huawei Techs. Co.,
`No. 2:16-CV-00947-JRG-RSP, 2019 WL 1246260 (E.D. Tex. Feb. 12), report
`and recommendation adopted, No. 2:16-CV-00947-JRG-RSP, 2019 WL
`1239433 (E.D. Tex. Mar. 18), aff’d, 787 F. App’x 723 (Fed. Cir. 2019) ................................. 9
`
`iii
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`Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 5 of 23 PageID #: 7443
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`
`RULES
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`Fed. R. Civ. P. 15(a) ............................................................................................................. 2, 7, 11
`
`Fed. R. Civ. P. 16(b)(4)................................................................................................................... 6
`
`Fed. R. Civ. P. 41(a)(1)(B) .................................................................................................... passim
`
`
`
`iv
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`

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`Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 6 of 23 PageID #: 7444
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`Samsung moves to amend its Answer to AGIS’s Second Amended Complaint (“SAC”) to
`
`add preclusion defenses based on AGIS’s dismissals of nearly identical allegations in two separate
`
`cases against Google in the Northern District of California (“NDCA”) and the Western District of
`
`Texas (“WDTX”). In particular, the Kessler doctrine and claim preclusion each independently
`
`bars AGIS’s claim that Samsung infringes U.S. 8,213,970 (“’970 Patent”) based on the Find My
`
`Device (“FMD”) application developed by Google.1
`
`Since 2017, AGIS has filed serial litigations asserting the ’970 Patent against FMD.
`
`Among those cases, in 2019, AGIS first sued Google for infringement in this Court. The ’970
`
`Patent was then reexamined, and its claims were amended, while the district court case against
`
`Google was transferred to the NDCA. In March 2023, AGIS filed a second case against Google,
`
`in the WDTX, again asserting the ’970 Patent against FMD. AGIS then dismissed the ’970 Patent
`
`from the NDCA action with prejudice. And just three weeks ago, AGIS dismissed its WDTX
`
`action. Although AGIS’s second dismissal purported to be “without prejudice,” Fed. R. Civ. P.
`
`41(a)(1)(B) provides that “if the plaintiff previously dismissed any federal- or state-court action
`
`based on or including the same claim, a notice of dismissal operates as an adjudication on the
`
`merits.” (Emphasis added.) Each of AGIS’s dismissals triggers the preclusion defenses that
`
`Samsung now seeks leave to add. And these defenses respond to the FMD allegations that AGIS
`
`recently added to its SAC and has moved opposed to add to this case in its Contentions Motion.
`
`See Dkts. 69, 72, 85, 86, 91.
`
`Each of the four good-cause factors weighs in favor of granting Samsung leave to add these
`
`defenses: (1) Samsung has expeditiously moved for leave to amend, before the Court has decided
`
`
`1 Samsung’s request for leave, as set forth in this motion, is contingent on the Court granting
`AGIS’s pending motion for leave to add allegations against FMD to its infringement contentions
`(Dkt. 72, hereinafter “Contentions Motion”), which is set for hearing on August 22.
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`1
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`
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`AGIS’s motion to add FMD to this case and within three weeks of the recent dismissal of the
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`WDTX action; (2) the defenses are important because they could dispose of AGIS’s claims of
`
`infringement of the ’970 Patent based on FMD; (3) amendment does not result in any prejudice to
`
`AGIS because the preclusion defenses present legal questions that do not require any additional
`
`discovery to address; and (4) a continuance is not necessary to cure any prejudice.
`
`There is also no reason under Fed. R. Civ. P. 15(a) to deny leave. Samsung promptly
`
`moved to add its preclusion defenses, so it has not acted with undue delay, bad faith, or dilatory
`
`motive. And the defenses are not futile, as each of the requirements for the Kessler doctrine and
`
`claim preclusion are met, as fully pled in Samsung’s proposed Amended Answer, attached hereto
`
`as Exhibit A (see Seventeenth and Eighteenth Affirmative Defenses in paragraphs 166-91; see also
`
`Exhibit B, Redline of Samsung’s proposed Amended Answer against its Answer filed on June 30,
`
`2023). Thus, if the Court grants AGIS’s pending Contentions Motion, leave should be granted for
`
`Samsung to add its preclusion defenses.
`
`I.
`
`FACTUAL BACKGROUND
`
`A.
`
`Procedural History
`
`1.
`
`AGIS’s Past Lawsuits Asserting The ’970 Patent Against FMD And
`The First Dismissal Following Its Reexamination Claim Amendments
`
`AGIS first began asserting its patents against Google’s FMD software six years ago. FMD
`
`is a Google-developed software application that can be installed on devices that run Google’s
`
`Android operating system. Ex. C, About FMD Application Webpage. In 2017, AGIS sued ZTE,
`
`LG, HTC, and Huawei for alleged infringement of the ’970 Patent, among other patents, based on
`
`those companies selling devices that could run FMD. Ex. D, ZTE Complaint ¶¶ 1, 7-10; Ex. E,
`
`LG Complaint ¶¶ 1, 6-9; Ex. F, HTC Complaint ¶¶ 1, 6-9; Ex. G, Huawei Complaint ¶¶ 1, 8-11.
`
`In late 2019, AGIS first sued Samsung and Google in the EDTX (collectively, “AGIS I”).
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`2
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`Ex. H, Google I Complaint; Ex. I, Samsung I Complaint. In its case against Google (“Google I”),
`
`AGIS asserted the ’970 Patent, among others, and alleged infringement based on FMD. Ex. H,
`
`Google I Complaint ¶¶ 1, 92-93. In its case against Samsung, AGIS alleged that Samsung devices
`
`running Google’s FMD software infringed U.S. 9,749,829 (“’829 Patent”), which is related to the
`
`’970 Patent. Ex. I, Samsung I Complaint ¶¶ 1, 21, 35-36.
`
`In May 2020, Google filed an ex parte reexamination (“EPR”) request challenging the ’970
`
`Patent’s asserted claims 2 and 10-13. Ex. J, EPR Request. During the reexamination, AGIS added
`
`limitations to claims 2 and 10 to overcome the prior art. Ex. K, October 2021 EPR Office Action
`
`Response. For claim 2, AGIS amended the claim to incorporate all limitations from original,
`
`independent claim 1, plus additional elements pertaining to receiving location and status
`
`information from a recipient PDA/cell phone and using a symbol to display that information on a
`
`map. As excerpted in part below, amended claim 2 includes eighteen total claim elements, three
`
`of which are the new elements added through the amendment, underlined below:
`
`2. A communication system for transmitting, receiving, confirming receipt, and
`responding to an electronic message, comprising:. . .
`
`means for displaying a geographic map with georeferenced entities on the
`display of the sender PDA/cell phone;
`
`means for obtaining location and status data associated with the recipient
`PDA/cell phone; and
`
`means for presenting a recipient symbol on the geographical map
`corresponding to a correct geographical location of the recipient PDA/cell
`phone, . . .
`
`Id. at 3-4. AGIS also amended claim 10, which now has nine total claim elements, to add the same
`
`three elements. Id. at 6-7. The USPTO allowed the amended claims over the prior art and issued
`
`a Reexamination Certificate in December 2021. Ex. L, Reexamination Certificate.
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`After the EPR concluded, Google moved to dismiss the ’970 Patent from Google I for lack
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`3
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`
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`of subject matter jurisdiction because of the claim amendments that AGIS made during the
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`pendency of the litigation. Ex. M, First Motion to Dismiss ’970 Patent. In May 2022, before this
`
`Court ruled on that motion, Google I was transferred to the NDCA. In re Google LLC, Nos. 2022-
`
`140 to -142, 2022 WL 1613192, at *1 (Fed. Cir. May 23, 2022).
`
`In the NDCA, Google re-filed its motion to dismiss the ’970 Patent for lack of subject
`
`matter jurisdiction. Ex. N, Second Motion to Dismiss ’970 Patent. Before the motion was decided,
`
`AGIS agreed to a stipulation dismissing the ’970 Patent with prejudice, which the NDCA court
`
`entered on April 10, 2023. Ex. O, Stipulation to Dismiss ’970 Patent from Google I; Ex. P, Order
`
`Dismissing ’970 Patent From Google I. The stipulation and order state that the dismissal is with
`
`respect to the original, pre-amendment claims of the ’970 Patent, not the amended claims. Id.
`
`2.
`
`AGIS Dismisses Second Action Asserting ’970 Patent Against FMD
`
`In March 2023, AGIS filed a second action against Google (“Google II”), this time in the
`
`Western District of Texas (“WDTX”), alleging infringement of the ’970 Patent’s amended claims
`
`based on FMD. Ex. Q, Google II Complaint. On July 20, 2023, AGIS voluntarily dismissed that
`
`case without prejudice. Ex. R, AGIS Dismissal of WDTX Case.2
`
`3.
`
`AGIS Seeks To Add FMD To This Case A Year After It Was Filed
`
`AGIS filed this case against Samsung over a year ago, in July 2022, asserting the ’970
`
`Patent, along with three other patents, and alleging infringement based on Samsung devices
`
`running the TAK, ATAK, and CivTAK software applications developed by the U.S. government.
`
`Dkt. 1 ¶ 16. AGIS later amended to add allegations against Samsung’s Knox software. Dkt. 29
`
`¶ 16. Neither complaint accuses FMD or any Google-developed software. To the contrary, in
`
`
`2 On July 21, 2023, Google filed a declaratory judgment action in the NDCA against AGIS (and
`its affiliates) that seeks a judgment that AGIS’s claims for infringement of the ’970 Patent based
`on FMD are barred by the Kessler doctrine and claim preclusion. Ex. S, DJ Compl.
`
`4
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`

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`
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`opposing Samsung’s motion to dismiss and motion to stay pending a parallel International Trade
`
`Commission (“ITC”) action (where AGIS also asserted the ’970 Patent based on FMD against
`
`Google, Samsung, and others), AGIS twice represented to this Court and Samsung that it was not
`
`accusing any Google software, such as FMD, in this case. Dkt. 41 at 2 (“The accused products for
`
`the instant AGIS-Samsung II case do not concern the Google applications.”); Dkt. 42 at 17 (“The
`
`present action alleges infringement . . . by a . . . set of non-Google applications.”).
`
`But after moving to terminate its ITC action on June 15, 2023, AGIS reversed course and
`
`reneged on its prior representations. The very next day, AGIS filed its SAC asserting, for the first
`
`time in this case, that Samsung infringes the ’970 Patent because its devices can be installed with
`
`the FMD software developed by Google. Dkt. 69, ¶¶ 25, 36. AGIS then moved to amend its
`
`infringement contentions to add allegations against FMD, which Samsung opposed. Dkts. 72, 91.
`
`That motion is pending, fully briefed, and set for hearing on August 22.
`
`B.
`
`Samsung’s Defenses Based On Kessler Doctrine And Claim Preclusion
`
`Based on each of AGIS’s two dismissals of Google I and Google II of its allegations
`
`asserting the ’970 Patent against FMD, Samsung requests leave to plead two preclusion defenses:
`
`(1) preclusion under the Kessler doctrine, and (2) claim preclusion.
`
`“The Kessler doctrine bars a patent infringement action against a customer of a seller who
`
`has previously prevailed against the patentee because of invalidity or noninfringement of the
`
`patent.” SpeedTrack, Inc. v. Off. Depot, Inc., 791 F.3d 1317, 1323 (Fed. Cir. 2015) (citation
`
`omitted). These requirements are met here, as pled in Samsung’s proposed Amended Answer.
`
`Samsung is a customer of Google with respect to FMD, which can be installed on Samsung’s
`
`devices. Ex. A, Amended Answer, ¶ 175. AGIS has twice dismissed claims for infringement of
`
`the ’970 Patent based on FMD, where the first in Google I was with prejudice and the second in
`
`Google II “operates as an adjudication on the merits” that FMD does not infringe the ’970 Patent
`
`5
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`under Fed. R. Civ. P. 41(a)(1)(B). Id. ¶¶ 168-72, 189-90. Therefore, FMD has acquired the status
`
`of a non-infringing product with respect to the ’970 Patent, and the Kessler doctrine bars AGIS’s
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`claims based on the ’970 Patent and Samsung’s alleged use of FMD. Id. ¶ 191.
`
`Claim preclusion applies where “(1) the parties in the later action are identical to, or in
`
`privity with, the parties in the earlier action; (2) the judgment in the earlier case was rendered by
`
`a court with proper jurisdiction; (3) there has been a final judgment on the merits; and (4) the
`
`earlier case and later case involve the same cause of action.” SimpleAir, Inc. v. Google LLC, 884
`
`F.3d 1160, 1165 (Fed. Cir. 2018) (5th Circuit law). Each of the four elements is met as pled in the
`
`proposed Amended Answer. Ex. A, Amended Answer, ¶¶ 166-85. First, mutuality or privity is
`
`not strictly required where, as here, Samsung is applying the prior judgment from Google II
`
`defensively against AGIS, and further, FMD is a product developed and supplied by Google to
`
`Samsung. Id. ¶¶ 174-79. Second and third, AGIS’s dismissals of its claims of infringement of the
`
`’970 Patent in Google I and Google II each operates as a final judgment on the merits. Id. ¶¶ 167-
`
`72, 180-81. Fourth, both suits involve the same claim for relief because AGIS asserts the same
`
`’970 Patent against the same FMD software application in this case, as it did in its prior cases
`
`against Google. Id. ¶¶ 182-84.
`
`II.
`
`LEGAL STANDARDS
`
`“After a Docket Control Order has been entered, Fed. R. Civ. P. 16(b) governs the decision
`
`whether to permit a post-deadline amendment.” Estech Sys., Inc. v. Target Corp., No. 2:20-CV-
`
`00122-JRG-RSP, 2021 WL 2187978, at *2 (E.D. Tex. May 28, 2021). “Rule 16 provides that a
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`scheduling order ‘may be modified only for good cause and with the judge’s consent.’” Rothschild
`
`Connected Devices Innovations, LLC v. ADS Sec., L.P., No. 2:15-CV-01431-JRG-RSP, 2019 WL
`
`6002198, at *1 (E.D. Tex. Mar. 11, 2019) (quoting Fed. R. Civ. P. 16(b)(4)). When considering
`
`whether a party has good cause for not meeting a deadline, courts consider four factors: “(1) the
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`6
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`
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`explanation for the party’s failure to [timely move for leave to amend]; (2) the importance of the
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`[amendment]; (3) potential prejudice in allowing the [amendment]; and (4) the availability of a
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`continuance to cure such prejudice.” Estech, 2021 WL 2187978, at *2 (citation omitted).
`
`A court’s “discretion [when considering whether to extend a deadline in a Docket Control
`
`Order], however, is limited by Rule 15(a), [which] states that leave to amend must be ‘freely given
`
`when justice so requires.’” Id. (quoting Fed. R. Civ. P. 15(a)). Rule 15(a) “evinces a bias in favor
`
`of granting leave to amend,” and “[u]nless there is a substantial reason to deny leave to amend, the
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`discretion of the district court is not broad enough to permit denial.” Id. “In deciding whether to
`
`grant leave to file an amended pleading, the district court may consider such factors as undue
`
`delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies
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`by amendments previously allowed, undue prejudice to the opposing party, and futility of
`
`amendment.” Id. (citation omitted). If an added claim “would be subject to dismissal, then [it] is
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`futile.” Martinez v. Nueces Cnty., 71 F.4th 385, 391 (5th Cir. 2023).
`
`III. ARGUMENT
`
`Each of the four good-cause factors favors granting Samsung leave to amend its answer to
`
`add Kessler doctrine and claim preclusion affirmative defenses if AGIS’s Contentions Motion is
`
`granted. Samsung moved for leave promptly, before the Court has decided AGIS’s motion for
`
`leave to add FMD to the case and only a few weeks after AGIS’s dismissal of Google II. Granting
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`leave would not result in any prejudice to AGIS because no discovery is required to develop these
`
`legal defenses. Additionally, under Rule 15(a), Samsung should be granted leave to amend for the
`
`same reasons, and because the Kessler doctrine and claim preclusion defenses are not futile.
`
`A.
`
`Each Good-Cause Factor Favors Granting Samsung Leave To Amend
`
`1.
`
`Samsung Has Timely Moved To Amend Its Answer In This Case
`
`The timeliness factor favors leave here because Samsung has promptly moved to amend
`
`7
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`Case 2:22-cv-00263-JRG-RSP Document 101 Filed 08/11/23 Page 13 of 23 PageID #: 7451
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`
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`its answer. This Court and others in this District have found that a motion for leave is timely when
`
`filed up to two months after the factual development or court ruling that forms the basis for the
`
`motion. See, e.g., Adrain v. Vigilant Video, Inc., No. 2:10-CV-173-JRG, 2013 WL 1984369, at *1
`
`(E.D. Tex. May 13, 2013) (“[T]he Court does not find that the two month interval amounts to an
`
`unreasonable delay.”) (emphasis added); GREE, Inc. v. Supercell Oy, No. 2:19-CV-00310-JRG-
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`RSP, 2021 WL 1626740, at *5 (E.D. Tex. Apr. 26, 2021) (finding no undue delay where a
`
`defendant served supplemental invalidity and noninfringement expert reports and invalidity
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`contentions within three weeks of the court granting a plaintiff leave to amend its infringement
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`contentions).
`
`Here, Samsung is moving for leave before the relevant development—i.e., the addition to
`
`FMD to the scope of this case—has even occurred. Specifically, AGIS’s Contentions Motion
`
`seeking to add FMD to its infringement contentions, and thus, the scope of this case, remains
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`pending and is set for hearing in two weeks on August 22. Moreover, Samsung is moving within
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`less than two months of AGIS filing its SAC on June 16, 2023, adding allegations against FMD.
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`Samsung’s motion is also timely as to the preclusion defenses that rely on AGIS’s second
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`dismissal in Google II which occurred on July 20, 2023, and Fed. R. Civ. P. 41(a)(1)(B), which
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`provides that a plaintiff’s second “notice of dismissal operates as an adjudication on the merits”
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`even if it purports to be without prejudice. Ex. R, AGIS Dismissal of WDTX Case. The July 20
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`dismissal thus occurred after Samsung filed its Answer to the SAC on June 30. Dkt. 80. And
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`Samsung provided notice to AGIS of its intention to seek leave two weeks later on August 4, 2023,
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`and then filed this motion a week after that. This factor thus weighs in favor of granting leave.
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`2.
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`Samsung’s Preclusion Defenses Are Important As They Could
`Narrow The Issues And Could Be Waived If Not Raised Now
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`The affirmative defenses that Samsung seeks leave to add—i.e., defenses based on the
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`Kessler doctrine and claim preclusion—are important because they could narrow the issues in this
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`case and may be waived if not raised now. This Court has held that “judicial efficiency is
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`(1) important, and (2) a basis upon which amendments are allowed in cases.” Cellular Commc’ns
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`Equip. LLC v. AT&T Inc., No. 2:15-CV-00576, 2017 WL 2267296, at *2 (E.D. Tex. May 24,
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`2017). Samsung’s preclusion defenses may dispose of AGIS’s allegations asserting the ’970
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`Patent against FMD, which would promote judicial efficiency by narrowing the issues.
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`Indeed, this District has barred infringement claims under the Kessler doctrine and claim
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`preclusion where, as here, a patent owner filed serial litigations asserting the same patents against
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`similar or identical accused products, as such repeat litigations are wasteful of the court and parties’
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`judicial resources. See, e.g., Simple Air, Inc. v. Google Inc., 204 F. Supp. 3d 908, 915 (E.D. Tex.
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`2016) (“A litigant’s strategic decisions have consequences, and judicial decisions must have
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`finality.”); Wi-LAN, Inc. v. HTC Corp., No. 2:11-CV-68-JRG, 2013 WL 1222302 (E.D. Tex. Mar.
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`25, 2013); Xiaohua Huang v. Huawei Techs. Co., No. 2:16-CV-00947-JRG-RSP, 2019 WL
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`1246260 (E.D. Tex. Feb. 12), report and recommendation adopted, No. 2:16-CV-00947-JRG-
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`RSP, 2019 WL 1239433 (E.D. Tex. Mar. 18), aff’d, 787 F. App’x 723 (Fed. Cir. 2019). AGIS has
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`asserted the ’970 Patent against FMD in at least a dozen litigations, including three against Google
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`(Google I, Google II, and the ITC) and two against Samsung (this case and the ITC). Samsung’s
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`preclusion defenses would promote judicial efficiency by preventing AGIS from asserting the ’970
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`Patent against FMD in yet another case, after dismissing two prior cases with the same claim.
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`Samsung’s requested amendment is also important because, absent leave to plead these
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`defenses in its answer, Samsung may be unable to raise the defenses later in this case. The Fifth
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`Circuit has held that “[u]nder F.R.C.P. 8(c), res judicata[] . . . is an affirmative defense which if
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`not pled is considered waived.” Mozingo v. Correct Mfg. Corp., 752 F.2d 168, 172 (5th Cir. 1985).
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`And this District has held that an amendment is important if, without the amendment, one of the
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`parties would not be able to assert certain claims. See Mass Engineered Design, Inc. v. Ergotron,
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`Inc., No. 2:06 CV 272, 2008 WL 1930299, at *3 (E.D. Tex. Apr. 30, 2008). Thus, the importance
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`factor weighs in favor of granting Samsung leave to amend.
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`3.
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`Samsung’s Amendment Does Not Result In Any Prejudice Or
`Necessitate a Continuance Because It Does Not Require Discovery
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`The prejudice and continuance factors weigh in favor of granting leave because there would
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`be no, or de minimis, prejudice to AGIS. The prejudice factor does not weigh against granting
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`leave when allowing an amendment would require minimal additional discovery, or there is
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`sufficient time to address any such additional discovery. See, e.g., Realtime Data LLC v. EchoStar
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`Corp., No. 6:17-CV-00084-JDL, 2018 WL 7283282, at *2 (E.D. Tex. July 17, 2018); Seven
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`Networks, LLC v. Google LLC, No. 2:17-CV-00442-JRG, 2018 WL 3327927, at *3 (E.D. Tex.
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`July 6, 2018) (finding prejudice to be minimal and finding good cause for an amendment that
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`sought to add a prior art reference that was already known and considered by the patent owner).
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`Here, Samsung’s preclusion defenses do not require any additional discovery, nor do the
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`defenses require any additional proceedings or briefing that are not already part of the case
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`schedule. The preclusion defenses present “issue[s] of law,” Levi Strauss & Co. v. Abercrombie
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`& Fitch Trading Co., 719 F.3d 1367, 1371 (Fed. Cir. 2013), and the factual bases for the legal
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`defenses are already in the public record—i.e., AGIS’s two prior dismissals of the ’970 Patent and
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`FMD allegations in Google I and Google II. See Ex. A, Amended Answer, ¶¶ 166-91.
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`Because granting Samsung’s motion for leave will not result in any prejudice or require
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`any additional discovery, a continuance is not necessary.
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`B.
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`The Rule 15(a) Factors Also Weigh In Favor Of Granting Leave
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`The Rule 15(a) factors that courts also consider in deciding motions to grant leave to amend
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`pleadings similarly favor granting Samsung’s motion. As discussed with respect to the good-cause
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`factors, Samsung has moved expeditiously to amend its answer to add its preclusion defenses.
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`Thus, Samsung has not acted with undue delay, bad faith, or dilatory motive in asserting its
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`preclusion defenses. The remaining Rule 15(a) consideration—futility of the amendment, see
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`Estech, 2021 WL 2187978, at *2—does not weigh against granting leave because the legal
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`requirements for the Kessler doctrine and claim preclusion defenses are met here.
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`1.
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`The Kessler Doctrine Preclusion Defense Is Not Futile
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`“The Kessler doctrine bars a patent infringement action against a customer of a seller who
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`has previously prevailed against the patentee because of invalidity or noninfringement of the
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`patent.” SpeedTrack, 791 F.3d at 1323 (citation omitted). The doctrine can be invoked by
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`customers “as a defense to infringement claims.” Id. at 1326. A voluntary dismissal of claims
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`against a product can trigger the application of the Kessler doctrine. See Brain Life, LLC v. Elekta
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`Inc., 746 F.3d 1045, 1050 (Fed. Cir. 2014).
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`As pled in the Amended Answer, each of AGIS’s dismissals in Google I and Google II of
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`its claims for infringement of the ’970 Patent based on FMD constitutes a final determination that
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`FMD does not infringe the ’970 Patent. Ex. A, Amended Answer, ¶¶ 168-72, 180-81, 189-90.
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`And Samsung is a customer of Google with respect to FMD software. Id. ¶ 191. Thus, the Kessler
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`doctrine applies to preclude AGIS from asserting the ’970 Patent against FMD for Samsung.
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`That the Google I dismissal pertained to the original claims of the ’970 Patent, whereas
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`this case and Google II pertain to the amended claims of that patent, do