Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 1 of 9 PageID #: 7888
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`v.
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`Plaintiff,
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:22-cv-00263-JRG-RSP
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S REPLY
`IN SUPPORT OF ITS MOTION TO DISMISS DEFENDANTS
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.’S NINTH COUNTERCLAIM AND
`TO STRIKE DEFENDANTS’ SIXTH AND
`SIXTEENTH AFFIRMATIVE DEFENSES (DKT. 89)
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`SAMSUNG ELECTRONICS CO., LTD.,
`ET AL.,
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`Defendants.
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 2 of 9 PageID #: 7889
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`TABLE OF CONTENTS
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`Page(s)
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`AGIS’S MOTION IS TIMELY ...........................................................................................1
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`DEFENDANTS’ HAVE FAILED TO SUFFICIENTLY PLEAD
`MATERIALITY OF THE LIFE360 LITIGATION ............................................................2
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`DEFENDANTS HAVE FAILED TO SUFFICIENTLY PLEAD UNCLEAN
`HANDS ................................................................................................................................4
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 3 of 9 PageID #: 7890
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`Defendants have failed to establish the materiality of the “symbol generator” term from a
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`patent that is not asserted in this case and have failed to show that AGIS’s litigation attorneys
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`violated the protective order in the AGIS I Case. Defendants’ attempt to contend that AGIS had
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`an obligation to disclose to the USPTO the litigation history of a different patent with different
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`claims and a different claim term that is not found in the ’970 Patent is without merit. Defendants
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`attempt to argue that AGIS’s litigation attorneys allegedly violated the protective order is belied
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`by the very language of the protective order that Defendants cite to expressly permitting
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`participation in USPTO proceedings, such as reexamination and inter partes review. In addition,
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`AGIS’s Motion is timely, where AGIS has submitted its Motion within the twenty-one days of
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`Defendants’ Answer, Defenses, and Counterclaims. See Dkt. 80. Accordingly, AGIS’s Motion to
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`dismiss Defendants’ Ninth Counterclaim and Strike Defendants’ Sixth and Sixteenth Affirmative
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`Defenses should be granted.
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`AGIS’S MOTION IS TIMELY
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`AGIS has timely filed its Motion to dismiss and strike Defendants’ inequitable conduct and
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`unclean hands defenses and counterclaims. AGIS’s Motion was filed within twenty-one days of
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`Defendants’ Answer to the Second Amended Complaint. Compare Dkt. 80 (filed June 30, 2023)
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`with Dkt. 89 (filed July 21, 2023).
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`In addition, Defendants’ Answer to the First Amended Complaint was filed on May 31,
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`2023. See Dkt. 64. In order to be considered timely filed, AGIS’s Motion to dismiss the
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`inequitable conduct defense and motion to strike would have been filed within twenty-one days of
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`May 31, 2023—June 16, 2023. However, AGIS filed its Second Amended Complaint by June 16,
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`2023. AGIS did not file a motion to dismiss in response to Defendants’ Answer prior to this date,
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`and accordingly, did not waive its right to file the instant Motion.
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 4 of 9 PageID #: 7891
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`For example, in Mullenix v. Univ. of Texas at Austin, the defendant had already filed a
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`motion to dismiss claims for lack of subject matter jurisdiction and the retaliation claim for failure
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`to state a claim but did not move to dismiss the Equal Pay Act retaliation claim. No. 1:19-cv-
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`1203-LY, 2021 WL 2172835, at *2 (W.D. Tex. Mar. 30, 2021). The defendant then filed a second
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`motion to dismiss in response to an amended complaint, seeking to dismiss the Equal Pay Act
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`retaliation claim for failure to state a claim, despite the fact that it was “‘then available to the
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`[University]’ in its first motion to dismiss.” Id. The same applies to Defendants’ reliance on
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`Feitshans and Diem. See Feitshans v. Kahn, No. 06 CIV. 2125, 2007 WL 998400, at *2 (S.D.N.Y.
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`Apr. 2, 2007) (citing to Fed. R. Civ. P. 12(f) which states that “[u]pon motion made by a party
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`before responding to a pleading or, if no responsive pleading is permitted by these rules, upon
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`motion made by a party within 20 days after the service of the pleading upon the party or upon the
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`court’s own initiative at any time, the court may order stricken from any pleading any insufficient
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`defense or any redundant, immaterial, impertinent, or scandalous matter.”); see also Diem LLC v.
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`BigCommerce, Inc, No. 6:17-cv-186-JRG-JDL, 2017 WL 4693511, at *3 (E.D. Tex. July 6, 2017)
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`(“Further, BigCommerce had already proceeded to argue the merits of the case in bringing its first
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`Motion to Dismiss under Rule 12(b)(6). As the Fifth Circuit has noted, ‘[i]f a defendant proceeds
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`first on the merits, as by a motion to dismiss for failure to state a claim . . . and thereafter attempts
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`to challenge jurisdiction over his person or improper venue, the challenge should fail.”) (emphasis
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`added). Accordingly, AGIS’s Motion was timely filed.
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`DEFENDANTS’ HAVE FAILED TO SUFFICIENTLY PLEAD MATERIALITY
`OF THE LIFE360 LITIGATION
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`Defendants have failed to sufficiently plead the materiality of the Life360 Litigation. As
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`Defendants concede, the ’728 Patent is not at issue in this case and the “symbol generator” term
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`is not found in the ’970 Patent. See Dkt. 98 at 7-8.
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`2
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 5 of 9 PageID #: 7892
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`Defendants have not shown that the “means for presenting a recipient symbol . . .” term in
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`the ’970 Patent is analogous to the “symbol generator” term in the ’728 Patent, particularly where
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`the function of “means for presenting a recipient symbol . . .” does not involve “generating a
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`symbol.” Dkt. 89 at 7. While Defendants attempt to rely on statements made by AGIS during the
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`Life360 Litigation, these arguments were rejected by the court who held the relevant function of
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`“symbol generator” or “generating a symbol.” In addition, the Examiner in the reexamination of
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`the ’970 Patent found the corresponding structure for “presenting a symbol on a geographic map”
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`was the LCD display of the sender PDA/cell phone and the algorithm for displaying the symbol
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`on the correct location on a geographic map. Dkt. 89 at 7.
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`Defendants rely on two cases to argue that “previous litigation can be material to
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`patentability” even where a mere allegation of invalidity as to the related patents is pled. See Dkt.
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`98 at 8. However, in Natera, Inc. v. Genosity Inc., while the Delaware District Court denied
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`Archer’s 12(c) motion regarding the subject matter eligibility of “methods ‘closely related’” to the
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`asserted patent, that the motion for judgment on the pleadings is not final and may be reviewed on
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`appeal. No. 20-1352, 2022 WL 767602, at *3 (D. Del. Mar. 14, 2022). With regard to the § 103
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`allegations, the Court found disclosure of individual references cited in the Archer documents does
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`not preclude a finding that the Archer documents themselves are also material to patentability of
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`the asserted patent. Id. at *4. Similarly, in Cutsforth, Inc. v. LEMM Liquidating Co., LLC, the
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`plaintiff was provided with invalidity charts regarding some of the patents-in-suit that the
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`defendants alleged plaintiff failed to disclose in prosecution of additional patents-in-suit. No. 12-
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`cv-1200, 2013 WL 2455979, at *7 (D. Minn. June 6, 2013). However, it was pled that the same
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`prior art references disclosed in the invalidity charts were disclosed to the PTO during prosecution,
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`but plaintiff did not disclose the prior litigation nor the claim charts. Id. Natera and Cutsforth are
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`3
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 6 of 9 PageID #: 7893
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`inapposite because the alleged materiality of the “symbol generator” term in the ’728 Patent, as
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`the basis for Defendants’ inequitable conduct allegations, are not the same as the subject matter
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`eligibility or prior art disclosure allegations made in those cases. Defendants have failed to meet
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`the heightened pleading standard of establishing inequitable conduct. Accordingly, AGIS
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`respectfully requests that Defendants’ inequitable conduct defense, counterclaim, and paragraphs
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`95-147 of Defendants’ Answer to the Second Amended Complaint be dismissed and stricken.
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` DEFENDANTS HAVE FAILED TO SUFFICIENTLY PLEAD UNCLEAN HANDS
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`Defendants’ speculation that AGIS’s litigation attorneys used “highly confidential
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`information about Google’s FMD product to craft the amended claims of the ’970 Paten to read
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`on FMD” are not supported by any evidence. As shown, Mr. Zhong alone submitted the
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`amendments to the PTO and he alone argued for the allowance of the amended claims to the
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`Examiners. Dkt. 89 at 9. AGIS’s litigation attorneys, while present at the interviews, did not
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`participate in the drafting of the amendments.
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`Defendants argue that it is “undisputed” that “Messrs. Rubino and Iturralde participated
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`in the ’970 Patent reexamination.” However, it is undisputed that the terms of the Protective Order
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`state that the “prohibitions in this Paragraph are not intended to and shall not preclude counsel
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`who obtains, receives or otherwise learns of, in whole or in part, the other Party’s HIGHLY
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`SENSITIVE MATERIAL . . . from participating directly or indirectly in reexamination.” Dkt.
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`89 at 10 (citing Dkt. 80-10, ¶ 11) (emphasis added). Rather, the terms of the Protective Order
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`provide that such counsel may not “directly or indirectly, advise, consult or participate in the
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`drafting of amended or substitute claims in the proceeding.” Id. (emphasis added). Additionally,
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`Defendants’ misreading of the Protective Order to argue that any participation in the reexamination
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`is a violation of such Protective Order is incorrect and expands the language of the prosecution bar
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`beyond the express terms, as agreed by parties and entered by this Court.
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 7 of 9 PageID #: 7894
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`Defendants’ reliance on Raytheon Co. v. Indigo Sys. Corp. is unpersuasive. Dkt. 98 at 14.
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`In Raytheon, where plaintiff sought to strike certain affirmative defenses including the defense of
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`unclean hands, the Court noted that “each of these defenses have been in play since at least
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`December of 2007, and Raytheon has not complained of any shortcomings. Raytheon was able to
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`both proceed through fact discovery with notice of the defenses and specifically deny each in its
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`September 19, 2008 Answer.” No. 4:07-cv-109, 2008 WL 5422874, at *2 (E.D. Tex. Dec. 29,
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`2008) (emphasis added). In Yeti Coolers, LLC v. RTIC Coolers, LLC, the Court noted that “RTIC
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`. . . explains that they relate to YETI’s sales for over a year prior to filings its provisional
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`application for a patent; such sales should have barred the grant of the patent application, but RTIC
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`argues YETI made false representation to the Patent and Trademark Office to circumvent the on
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`sale bar.” No. 1:15-CV-00597-RP, 2016 WL 5956081, at *8 (W.D. Tex. Aug. 1, 2016). In
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`contrast, AGIS has moved to dismiss and strike Defendants’ unclean hands affirmative defense
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`and counterclaims in response to Defendants’ Answer to AGIS’s Second Amended Complaint.
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`Further, Defendants added its unclean hands affirmative defense and counterclaims to its Answer
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`to the Second Amended Complaint. See Dkt. 80. Merely pleading “specific facts spanning more
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`than five pages” is insufficient where Defendants’ allegations are in direct contrast to the language
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`of the Protective Order.
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`In view of Defendants mischaracterization and impermissible overextension of the
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`Protective Order, Defendants have failed to present any plausible facts suggesting AGIS’s
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`litigation attorneys committed any violation and thus, failed to establish unclean hands by clear
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`and convincing evidence.
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`Accordingly, Defendants’ Sixteenth Defense should be stricken and the Counterclaim for
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`unclean hands should be dismissed.
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 8 of 9 PageID #: 7895
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`Dated: August 14, 2023
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`Respectfully submitted,
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`/s/ Alfred R. Fabricant
`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
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`Samuel F. Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`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 2:22-cv-00263-JRG-RSP Document 104 Filed 08/14/23 Page 9 of 9 PageID #: 7896
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on August 14, 2023, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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