Case 2:22-cv-00263-JRG-RSP Document 108 Filed 08/21/23 Page 1 of 5 PageID #: 8046
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT
`LLC,
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` Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO.,
`LTD., ET AL.,
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` Defendants.
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`CIVIL ACTION NO. 2:22-CV-00263-JRG-RSP
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`MEMORANDUM ORDER
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`Before the Court, Defendants Samsung Electronics Co., Ltd. and Samsung Electronics
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`America, Inc. (“Samsung”) move to stay the above captioned case pending resolution of an
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`International Trade Commission Investigation. Dkt. No. 40. For the following reasons, the motion
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`is DENIED.
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`I. BACKGROUND
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`Plaintiff AGIS Software Development, LLC filed suit against Samsung alleging
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`infringement of US Patent Nos. 8,213,970 (“the ’970 patent”); 9,467,838 (“the ’838 patent”);
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`9,749,829 (“the ’829 patent”); and 9,820,123 (“the ’123 patent”) (collectively “the Asserted
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`Patents”). The ’970 patent is generally directed to communication networks for forced message
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`alerts. Id. (Abstract). The remaining patents are continuations claiming priority to the same parent,
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`sharing the same specification, and generally directed to ad hoc communication networks.
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`Compare ’123 patent (Related U.S. Application Data), with ’838 patent and ’829 patent; ’123
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`patent (Abstract).
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`AGIS subsequently filed an amended complaint, which accuses Samsung of the
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`Case 2:22-cv-00263-JRG-RSP Document 108 Filed 08/21/23 Page 2 of 5 PageID #: 8047
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`… manufacture, use, sell, offer for sale, and/or import into the United States the
`Samsung Tactical, TAK, ATAK, and CivTAK, applications, products, and
`solutions, which also include related servers and services for supporting Samsung
`Tactical, TAK, ATAK, and CivTAK and Samsung Knox (collectively, the
`“Accused Products”). Further, Defendants manufacture, use, sell, offer for sale,
`and/or import into the United States electronic devices, all of which are configured
`and/or adapted with certain map-based communication applications, products, and
`solutions such as Samsung Tactical, TAK, ATAK, and CivTAK and Samsung
`Knox …
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`Dkt. No. 29 ¶ 16. The complaint proceeds to list many Samsung mobile devices. Id. AGIS’s
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`Second Amended Complaint maintains the same assertions. Dkt. No. 69.
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`Relevant to this Motion, the parties are engaged in a separate dispute involving the Asserted
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`Patents. See AGIS Software Development LLC v. Samsung Electronics Co., LTD et al, Case No.
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`5:22-cv-04825 (NDCA) (hereinafter “AGIS I”). Additionally, the basis for this Motion is that
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`AGIS filed an ITC action alleging infringement of the Asserted Patents and naming Samsung as a
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`respondent. Motion at 4; Response at 10 (“AGIS does not dispute that Samsung is a respondent in
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`the ITC Proceeding”); see Certain Location-Sharing Systems, Related Software, Components
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`Thereof, and Products Containing the Same, Inv. No. 337-TA-3655 (Nov. 16, 2022) (hereinafter
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`“the ITC Investigation”).
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`Samsung’s Motion is fully briefed, Dkt. Nos. 41 (“Response”), 44 (“Reply”), and 46 (“Sur-
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`reply”). Additionally, a hearing on the Motion was held March 30, 2023. Dkt. No. 50.
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`II. LEGAL STANDARD
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`“In a civil action involving parties that are also parties to a proceeding before the United
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`States International Trade Commission under section 337 of the Tariff Act of 1930, at the request
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`of a party to the civil action that is also a respondent in the proceeding before the Commission, the
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`district court chall stay . . . the civil action with respect to any claim that involves the same issues
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`involved in the proceeding before the Commission . . .” 28 U.S.C. § 1659(a) (emphasis added).
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`Case 2:22-cv-00263-JRG-RSP Document 108 Filed 08/21/23 Page 3 of 5 PageID #: 8048
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`The same issues includes “questions of validity, infringement, and any defenses that might be
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`raised in both proceedings.” Saxon Innovations, LLC v. Palm, Inc., 2009 WL 3755041 at *1 (E.D.
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`Tex. Nov. 4, 2009) (Love, J.) (citing H.R. REP. NO. 103–826(I) at 141). Further, the same issues
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`arise where the result is “identical parallel claims.” Id. (citing SanDisk Corp. v. Phison Elec.
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`Corp., 538 F.Supp.2d 1060, 1065 (W.D. Wisc. 2008)); In re Princo Corp., 486 F.3d 1365, 1368
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`(Fed. Cir. 2007) (“The purpose of § 1659(a) was to prevent infringement proceedings from
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`occurring “in two forums at the same time . . . In the case of § 1659, the purpose of the statute is
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`to avoid duplicative proceedings.”).
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`Absent a cause for a mandatory stay, “[t]he district court has the inherent power to control
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`its own docket, including the power to stay proceedings.” Soverain Software LLC v. Amazon.com,
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`Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex. 2005) (citing Landis v. N. Am. Co., 299 U.S. 248, 254
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`(1936)); see also Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (“Courts have
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`inherent power to manage their dockets and stay proceedings . . .”). How to best manage the Court's
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`docket “calls for the exercise of judgment, which must weigh competing interests and maintain an
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`even balance.” Landis, 299 U.S. at 254–55.
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`In deciding whether to stay litigation pending reexamination, this Court considers: “(1)
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`whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving
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`party, (2) whether a stay will simplify the issues in question and trial of the case, and (3) whether
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`discovery is complete and whether a trial date has been set.” AGIS Software Dev. LLC v. Google
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`LLC, No. 2:19-CV-00359-JRG, 2021 WL 465424, at *2 (E.D. Tex. Feb. 9, 2021) (citing Soverain,
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`356 F. Supp. 2d at 662).
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`Case 2:22-cv-00263-JRG-RSP Document 108 Filed 08/21/23 Page 4 of 5 PageID #: 8049
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`III. ANALYSIS
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`Samsung’s Motion asserts two bases for relief: a mandatory stay pursuant to § 1659(a) or
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`a discretionary stay.
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`A. A stay is not mandatory pursuant to § 1659(a) as the actions do not involve the
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`same issues.
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`The parties have narrowed their dispute as to the appropriateness of a mandatory stay to
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`one point of the analysis: whether the ITC Investigation involves the same issues as the instant
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`case. Motion at 4; Response at 10. Samsung asserts that the issues are the same since both actions
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`involve the same four patents and the same products. Motion at 4. Samsung further contends, and
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`argued at hearing, that the scope of the ITC Investigation, while not explicitly delineating the
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`accused applications in this case, encompasses AGIS’s claims through exemplary claim charts.
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`Motion at 8-9; Reply at 5. AGIS responds that the same issues are not present since the ITC
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`Investigation is focused on Google applications not accused in this action and involves an
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`additional patent. Response at 5-6, 9-11.
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`The Court finds that the two actions do not involve the same issues. As indicated by
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`precedent, the key consideration is whether the ITC Investigation will involve duplicative
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`proceedings of identical parallel claims. See Saxon, 2009 WL 3755041 at *1; see also In re Princo
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`Corp., 486 F.3d at 1368. It is undisputed that the AGIS I and the ITC Investigation involve Google
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`applications not accused in the instant case. Rather, the remaining question is whether the charts
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`filed in the ITC Investigation encompass the features accused in this action. The Court is
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`unpersuaded by the briefing and argument at the hearing that the case before this Court involves
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`identical claims as the ITC Investigation due to exemplary charting alone. Further, the parties agree
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`that the AGIS I case was stayed due to similarity in issues with the ITC Investigation, further
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`Case 2:22-cv-00263-JRG-RSP Document 108 Filed 08/21/23 Page 5 of 5 PageID #: 8050
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`supporting that the current case involves distinct issues from the other asserted actions. Therefore,
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`lacking the same issues between the two actions, a mandatory stay pursuant to § 1659(a) is not
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`required.
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`B. A discretionary stay is not necessary for an ITC action on different issues.
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`First, since the ITC Investigation and this case involve different issues, the risk of prejudice
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`in delaying Plaintiff’s action weighs against a discretionary stay. Second, while the ITC
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`Investigation could involve similar facts as the instant case, it is unlikely that the results of the
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`investigation will simplify the work before the Court due to difference in issues. Finally, fact
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`discovery will complete on October 12, 2023, and trial has been set for March 4, 2024. See Dkt.
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`No. 66. Given that claim construction and the fact discovery deadlines are imminent, the final
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`factor weighs against a stay. Therefore, a discretionary stay is not supported by the factors and is
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`denied.
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`IV. CONCLUSION
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`For these reasons, Defendants Motion to Stay is DENIED.
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 21st day of August, 2023.
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