Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 1 of 17 PageID #: 9446
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`Case No. 2:22-cv-00263-JRG-RSP
`
`JURY TRIAL DEMANDED
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`SAMSUNG’S MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS
`UNDER P.R. 3-6(b)
`
`
`
`v.
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS, AMERICA,
`INC.,
`
`
`Defendants.
`
`
`
`
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 2 of 17 PageID #: 9447
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................ 2
`
`A.
`
`B.
`
`C.
`
`Procedural History Of This Case And AGIS’s ITC Action ................................... 2
`
`Asserted ’970 Patent and FMD Contentions ......................................................... 3
`
`Proposed Haney and Beyer References ................................................................. 5
`
`III.
`
`LEGAL STANDARDS ..................................................................................................... 5
`
`IV. ARGUMENT ..................................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`Samsung Was Diligent In Identifying And Disclosing The Additional
`References. ............................................................................................................. 6
`
`The Amendment Is Important To Samsung’s Case. .............................................. 7
`
`AGIS Is Not Prejudiced By The Amendment........................................................ 7
`
`A Continuance Has Already Been Granted To Cure Any Prejudice To
`AGIS. ................................................................................................................... 10
`
`V.
`
`CONCLUSION ................................................................................................................ 10
`
`
`
`
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 3 of 17 PageID #: 9448
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Adrain v. Vigilant Video, Inc.,
`No. 2:10-CV-173-JRG, 2013 WL 1984369 (E.D. Tex. May 13, 2013) ..................................... 6
`
`Alcatel USA Resources, Inc. v. Microsoft Corp.,
`No. 6:06-CV-500, 2008 WL 11348444 (E.D. Tex. Oct. 3, 2008) .............................................. 7
`
`Alexsam, Inc. v. IDT Corp.,
`No. 2:07-CV-420-CE, 2011 WL 108725 (E.D. Tex. Jan. 12, 2011) .......................................... 7
`
`Computer Acceleration Corp. v. Microsoft Corp.,
`F. Supp. 2d 620 (E.D. Tex. 2007) ............................................................................................... 8
`
`Estech Sys., Inc. v. Target Corp.,
`No. 2:20-CV-00122-JRG-RSP, 2021 WL 2187978, (E.D. Tex. May 28, 2021) ....................... 9
`
`Finesse Wireless LLC v. AT&T Mobility LLC,
`No. 2:21-CV-00316-JRG-RSP, 2022 WL 16636930 (E.D. Tex. Nov. 2, 2022) ........................ 5
`
`GREE, Inc. v. Supercell Oy,
`No. 2:19-CV-00310-JRG-RSP, 2021 WL 1626740 (E.D. Tex. Apr. 26, 2021) ......................... 6
`
`Kroy IP Holdings, LLC v. AutoZone, Inc.,
`No. 2:13-CV-888-WCB, 2014 WL 7463099 (E.D. Tex. Dec. 30, 2014) ............................. 7, 10
`
`S & E Enters., LLC v. SouthTrust Bank of Ala., NA,
`315 F.3d 533 (5th Cir. 2003) ...................................................................................................... 5
`
`Seven Networks, LLC v. Google LLC,
`No. 2:17-CV-00442-JRG, 2018 WL 3327927 (E.D. Tex. July 6, 2018) .................................... 8
`
`Uniloc 2017 LLC v. Google LLC,
`No. 2:18-CV-00493-JRG-RSP, 2019 WL 6465318, (E.D. Tex. Dec. 2, 2019) ......................... 9
`
`Uniloc 2017 LLC v. Google LLC,
`No. 2:18-CV-00503-JRG-RSP (E.D. Tex. Feb. 10, 2020) ......................................................... 7
`
`RULES
`
`Local Rule CV-7(h) ...................................................................................................................... 12
`
`
`
`ii
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 4 of 17 PageID #: 9449
`
`TABLE OF EXHIBITS
`
`B
`
`C
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`D
`
`E
`F
`G
`H
`
`Document
`Ex. Number
`Defendants’ Exhibits Filed With Defendants’ Opening Brief
`A
`AGIS’s 2022 ITC Complaint against Google, Samsung, and 11 Other
`Respondents
`Initial Determination on AGIS’s June 15, 2023 Motion to Terminate ITC
`Investigation
`Samsung’s Invalidity Contention claim chart for U.S. Patent No. 9,467,838
`(“’838 Patent”) asserting U.S. Patent No. 7,353,034
`Samsung’s Invalidity Contention claim chart for the ’838 Patent asserting
`U.S. Patent No. 7,630,724
`U.S. Patent Publication No. 2006/0223518 (“Haney”)
`U.S. Patent Publication No. 2006/0199612 (“Beyer ’612”)
`U.S. Patent No. 7,031,728 (“Beyer ’728”)
`Respondents’ Invalidity Contentions claim chart for Haney, served in ITC
`Inv. No. 337-TA-1347 on May 18, 2023
`Respondents’ Invalidity Contentions claim chart for Beyer ’612 served in
`ITC Inv. No. 337-TA-1347 on May 18, 2023
`Respondents’ Invalidity Contentions claim chart for the Beyer ’728 prior art
`reference, served in ITC Inv. No. 337-TA-1347 on May 18, 2023
`February 2, 2023 procedural schedule in ITC Inv. No. 337-TA-1347
`Samsung’s proposed supplemental invalidity contentions claim chart for
`Haney with respect to U.S. Patent No. 8,213,970 (the “’970 Patent”)
`
`I
`
`J
`
`K
`L
`
`M
`
`N
`
`O
`
`P
`
`
`
`
`Samsung’s proposed supplemental invalidity contentions claim chart for
`Beyer ’612 with respect to the ’970 Patent
`Samsung’s proposed supplemental invalidity contentions claim chart for
`Beyer ’728 with respect to the ’970 Patent
`Samsung’s proposed supplement to the Invalidity Contentions Cover
`Pleading, originally served on February 23, 2023
`Redline comparison of Samsung’s proposed supplement to the Invalidity
`Contentions Cover Pleading against the Cover Pleading originally served on
`February 23, 2023
`
`iii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 5 of 17 PageID #: 9450
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`I.
`
`INTRODUCTION
`
`
`
`Samsung moves for leave to amend its invalidity contentions in response to the recent
`
`addition of Google’s Find My Device (“FMD”) application into the case. Less than two weeks
`
`ago, the Court granted AGIS’s motion for leave to amend its contentions to add infringement
`
`allegations against FMD, based on U.S. Patent Nos. 8,213,970 (“’970 Patent”) and 9,467,838
`
`(“’838 Patent”). Dkt. 115. AGIS moved for leave to add FMD, even though the case had been
`
`pending for a year and AGIS had repeatedly insisted that this case was not about any Google
`
`software, such as FMD. With FMD now being allowed into the case, basic fairness and the four
`
`good cause factors warrant permitting Samsung to respond to AGIS’s new allegations with
`
`supplemental invalidity contentions comprising three additional prior art references asserted
`
`against the ’970 Patent.
`
`First, the proposed supplement is timely, as it responds to AGIS’s addition of FMD to the
`
`case just two weeks ago. Second, the supplement is important because it could render invalid the
`
`asserted claims of the ’970 Patent. Third, the supplement will not cause any prejudice to AGIS,
`
`particularly given that (1) Samsung has already asserted the disclosures in two of these references
`
`against other asserted patents in this case and (2) the respondents in AGIS’s recently dismissed
`
`International Trade Commission action asserted these same three references against the ’970
`
`Patent in that action, and in response, AGIS served detailed rebuttal invalidity analysis for those
`
`very references and related obviousness combinations. AGIS is represented by the same counsel
`
`here as it was in the ITC action, and thus has been on notice for months of these references and
`
`invalidity theories. And because the three references are all patents, their addition will not require
`
`extensive discovery—indeed, two of the patents name the same inventor as the asserted ’970 and
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`’838 Patents, Mr. Beyer, who will be deposed in this action even without the supplement and the
`
`third reference has the same inventor, Mr. Haney, as another prior art reference in Samsung’s
`
`1
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 6 of 17 PageID #: 9451
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`
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`original contentions. So the supplemental references will not require additional depositions.
`
`Fourth, the Court’s recently granted four-month continuance of the trial date in this case to address
`
`FMD’s addition to the case cures any putative prejudice. Because each of the four good-cause
`
`factors weighs in favor of granting Samsung leave to add additional prior art for the ’970 Patent,
`
`the Court should grant Samsung’s motion.
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`Procedural History Of This Case And AGIS’s ITC Action
`
`On July 14, 2022, AGIS filed this case against Samsung, asserting the ’970 and ’838
`
`Patents along with two other patents. Dkt. 1. AGIS’s initial Complaint accused only U.S.
`
`government and Samsung software and did not assert any claims against FMD or any other
`
`Google-developed software. See id. In fact, AGIS insisted repeatedly it was not accusing any
`
`Google software of infringement. See Dkts. 41-4 at 4; 42 at 17; 42-14 at 4. Samsung served its
`
`invalidity contentions on February 23, 2023, identifying 20 prior art references against the ’970
`
`Patent. Samsung’s contentions for the ’838 Patent included invalidity claim charts for U.S. Patent
`
`Nos. 7,353,034 and 7,630,724, which are the issued patents for two of the three proposed
`
`supplemental references—U.S. Patent Publication No. 2006/0223518 (“Haney”) and U.S. Patent
`
`Publication No. 2006/0199612 (“Beyer ’612”), respectively. See Exs. C, D. The disclosures in
`
`the charted, issued patents are identical to those in the proposed supplemental references.
`
`In parallel with this case, in November 2022, AGIS filed an ITC action against Google,
`
`Samsung, and eleven other respondents. Ex. A, ITC Complaint. Against all respondents,
`
`including Samsung, AGIS alleged infringement of five patents, including the ’838 and ’970
`
`Patents, and asserted the ’970 Patent against FMD. Id. ¶¶ 3. On May 18, 2023, the ITC
`
`respondents served invalidity contentions, identifying Haney, Beyer ’612, and U.S. Patent No.
`
`7,031,728 (“Beyer ’728”) as prior art references for the ’970 Patent. See Exs. G–J. On June 6,
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`
`
`2
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 7 of 17 PageID #: 9452
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`
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`2023, AGIS served rebuttal contentions on invalidity, which included thirteen pages expressly
`
`addressing the Haney, Beyer ’612, and Beyer ’728 references and related obviousness
`
`combinations and rationales. Ex. K at 2.1 On June 15, 2023, AGIS moved to terminate its ITC
`
`investigation. Ex. B, Initial Determination on AGIS Motion to Terminate ITC Investigation. The
`
`same counsel representing AGIS in this case also represented AGIS before the ITC.
`
`On June 16, just one day after moving to terminate its ITC investigation, AGIS filed its
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`Second Amended Complaint, asserting for the first time in this case, infringement allegations
`
`against FMD as to the ’970 Patent. Dkt. 69, ¶ 18. And on June 28, AGIS filed a motion for leave
`
`to amend its infringement contentions. Dkt. 72. The Court granted the motion for leave and
`
`ordered a two-month continuance of the Markman date to November 3 and four-month
`
`continuance of the trial date to July 8, 2024. Dkt. 115 at 2. The Court recently entered an amended
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`docket control order setting dates of: January 30, 2024 to reduce asserted claims to 16 total (up to
`
`5 per patent) and February 13, 2024 to reduce prior art references to 20 total (up to 6 per patent);2
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`February 6, 2024 for the close of fact discovery; and February 13, 2024 for opening expert reports
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`(including on invalidity). Dkt. 121.
`
`B.
`
`Asserted ’970 Patent and FMD Contentions
`
`The ’970 Patent relates to forced alert messaging, where a sender mobile device sends a
`
`“forced message alert” to a recipient mobile device, and the recipient must respond with both an
`
`automatic acknowledgment and a manually selected response, causing its location to be displayed
`
`
`1 AGIS’s rebuttal contentions were marked as containing “Confidential Business Information,” so
`out of an abundance of caution, Samsung has instead attached the ITC schedule showing AGIS
`was ordered to serve rebuttal contentions by June 6, 2023. See Ex. K. Samsung represents that
`AGIS did in fact serve rebuttal contentions by this deadline.
`2 The parties exchanged claim and prior art elections in April 2023, where Samsung was limited
`to 12 references per patent. If this motion for leave is granted, Samsung will serve within 7 days
`an amended election of 12 references for the ’970 Patent.
`
`
`
`3
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 8 of 17 PageID #: 9453
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`
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`on a map on the sender’s screen. Dkt. 1-1 at 2, Abstract. All asserted claims of the ’970 Patent
`
`require transmitting a “selected response” or “manual response” from a response list from the
`
`device receiving a forced message alert to the sender device. Id. at 13–14. The parties agree that
`
`“selected response” and “manual response” mean a “recipient-selectable response message.” Dkt.
`
`67-1 at 2.
`
`AGIS’s amended contentions as to FMD contain new theories not previously disclosed for
`
`the completely different government and Samsung software that AGIS originally accused. For
`
`example, as shown in the screenshot below, AGIS alleges that FMD’s “Emergency Call” icon,
`
`“Call Owner” button, and “unlock option” provide a “selected response” or a “manual response”:
`
`Dkt. 72-6 at 16–22.
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`
`
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`4
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 9 of 17 PageID #: 9454
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`
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`C.
`
`Proposed Haney and Beyer References
`
`The proposed supplemental references are directly relevant to AGIS’s new FMD
`
`allegations as to the claims of the ’970 Patent. Each reference discloses systems and methods for
`
`cellular phone users to monitor others’ locations and check a recipient’s status in the event of an
`
`emergency by eliciting a response. Beyer ’728, for example, discloses “actuat[ing] a remote
`
`cellular phone to annunciate an audio message to alert the remote user that there is an emergency
`
`(or for another reason) and that the calling cellular phone should be called immediately.” Ex.
`
`G, 2:6–9 (emphasis added). Beyer ’612 also describes methods of allowing “a remote cellular
`
`phone to display and optionally announce emergency and other messages and to optionally elicit
`
`a response from the remote cellular phone.” Ex. F, [0037] (emphasis added). Haney describes
`
`a similar emergency feature where the remote user “must enter their secret code to confirm that all
`
`is OK. The phone prompts them to enter this code, and a certain number of prompts can be ignored
`
`before the system raises any alarms.” Ex. E, [0134].
`
`III. LEGAL STANDARDS
`
`Under the Local Patent Rules, leave to supplement invalidity contentions “may be made
`
`only by order of the court, which shall be entered only upon a showing of good cause.” P.R. 3-
`
`6(b). The Court has “broad discretion” to determine whether good cause exists. S & E Enters.,
`
`LLC v. SouthTrust Bank of Ala., NA, 315 F.3d 533, 535 (5th Cir. 2003). Courts in this District
`
`consider four factors to determine whether good cause exists: “(1) the explanation for failure to
`
`meet the deadline; (2) the importance of the thing that would be excluded; (3) potential prejudice
`
`in allowing the thing that would be excluded; and (4) the availability of a continuance to cure such
`
`prejudice.” Finesse Wireless LLC v. AT&T Mobility LLC, No. 2:21-CV-00316-JRG-RSP, 2022
`
`WL 16636930, at *3 (E.D. Tex. Nov. 2, 2022).
`
`
`
`5
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 10 of 17 PageID #: 9455
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`
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`IV. ARGUMENT
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`Samsung has good cause, as required under P.R. 3-6(b), to supplement its invalidity
`
`contentions to add this additional prior art.3
`
`A.
`
`Samsung Was Diligent In Identifying And Disclosing The Additional
`References.
`
`Samsung has been diligent both in identifying the additional references and in disclosing
`
`them to AGIS. Although this case has been pending since July 2022, Google’s FMD has been
`
`accused for less than two weeks. Following the Court’s August 24 Order allowing FMD into the
`
`case, Samsung moved promptly to investigate the FMD contentions, reassess its invalidity
`
`positions in light of these allegations, and provide notice to AGIS of the proposed supplemental
`
`contentions—all within a week of the Court’s August 24 Order. See Dkts. 71, 73–79.
`
`The passage of time since Samsung served its original contentions in February 2023 has
`
`no bearing on the diligence issue because the amended contentions and three supplemental
`
`references respond to AGIS’s new allegations as to FMD, which only became part of the case two
`
`weeks ago. 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.”); GREE, Inc. v. Supercell Oy, No. 2:19-CV-00310-JRG-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 contentions within three
`
`weeks of the court granting a plaintiff leave to amend its infringement contentions).
`
`
`3 Attached hereto as Exhibits L–P are the proposed supplemental charts and revisions to the
`Invalidity Contentions Cover Pleading identifying the supplemental references and related
`obviousness combinations.
`
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`
`6
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 11 of 17 PageID #: 9456
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`
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`B.
`
`The Amendment Is Important To Samsung’s Case.
`
`The amendment is important because the additional references—Haney, Beyer ’728, and
`
`Beyer ’612—render obvious the asserted claims of the ’970 Patent. See Alcatel USA Resources,
`
`Inc. v. Microsoft Corp., No. 6:06-CV-500, 2008 WL 11348444, at *2 (E.D. Tex. Oct. 3, 2008)
`
`(“Prior art references potentially rendering a patent invalid are important.”). Indeed, the new
`
`references provide disclosures mirroring AGIS’s new allegations as to FMD. See supra Section
`
`II.B–C. Specifically, the additional references disclose features that are directly comparable to
`
`AGIS’s allegations that FMD’s “Emergency Call” icon, “Call Owner” button, and “unlock option”
`
`provide a “selected response” or a “manual response,” as required by the asserted claims of the
`
`’970 Patent. See id. Thus, the proposed supplement is targeted directly to the new infringement
`
`allegations, and not merely cumulative of the previous references. Uniloc 2017 LLC v. Google
`
`LLC, No. 2:18-CV-00503-JRG-RSP, at *5 (E.D. Tex. Feb. 10, 2020) (“[I]n the context of prior
`
`art, the importance of a given reference rises in proportion to the uniqueness of its substantive
`
`disclosures relative to other, previously-disclosed prior art.”). Courts routinely permit amendment
`
`of invalidity contentions that, as here, respond to amended infringement contentions. See, e.g.,
`
`Alexsam, Inc. v. IDT Corp., No. 2:07-CV-420-CE, 2011 WL 108725, at *2 (E.D. Tex. Jan. 12,
`
`2011); Kroy IP Holdings, LLC v. AutoZone, Inc., No. 2:13-CV-888-WCB, 2014 WL 7463099, *2–
`
`3 (E.D. Tex. Dec. 30, 2014).
`
`C.
`
`AGIS Is Not Prejudiced By The Amendment.
`
`AGIS would not suffer any prejudice from allowing Samsung’s proposed supplementation.
`
`Samsung timely informed AGIS of the proposed supplemental prior art by providing detailed
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`invalidity charts on August 31, within one week of FMD’s addition to the case. And, given the
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`recent four-month continuance, substantial time remains in the schedule for AGIS to consider and
`
`account for the three proposed references. Indeed, the deadline for AGIS’s next election of
`
`
`
`7
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`

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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 12 of 17 PageID #: 9457
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`
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`asserted claims is more than four months away. See Dkt. 121 at 4. Fact depositions have yet to
`
`take place, and fact discovery will not end until February 6, 2024—nearly five months after
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`Samsung’s disclosure. Id. at 3. Opening expert reports are not due until February 13, 2024, and
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`rebuttal expert reports—when AGIS’s expert must address the prior art—are not due until March
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`4, 2024. Id. AGIS thus has ample time to conduct fact and expert discovery and to address any
`
`issues raised by the additional prior art. See Computer Acceleration Corp. v. Microsoft Corp., 481
`
`F. Supp. 2d 620, 624–26 (E.D. Tex. 2007) (finding no prejudice and granting motion to amend
`
`invalidity contentions where four months remained in fact discovery).
`
`Further, AGIS does not need any extended time to consider the new references because
`
`they are not new at all to AGIS. The Beyer ’728 and Beyer ’612 references were both originally
`
`assigned to AGIS. And because AGIS was represented by the same counsel in the ITC action as
`
`in this case, AGIS as well as its counsel have had notice since at least May 18—when respondents
`
`served invalidity contentions in the ITC—that Haney, Beyer ’728, and Beyer ’612 are relevant to
`
`invalidity of the ’970 Patent. Exs. H–J. Indeed, AGIS has had far more than just notice: on June
`
`6, 2023, AGIS served its rebuttal invalidity contentions in the ITC action, where AGIS provided
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`thirteen pages of analysis and argument in response to each of these three references. Ex. K at 2.
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`Thus, AGIS has already formulated its rebuttal analysis to these same references and the
`
`obviousness grounds in which they could be used, and it can reuse that analysis in this case.
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`In addition, Samsung disclosed the issued versions of the Haney and Beyer ’728 references
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`on February 23, 2023, with its initial invalidity contentions in this case. Exs. C, D. Thus, AGIS
`
`cannot claim surprise from the additional references. See Seven Networks, LLC v. Google LLC,
`
`No. 2:17-CV-00442-JRG, 2018 WL 3327927, at *3 (E.D. Tex. July 6, 2018) (finding prejudice to
`
`be minimal and finding good cause for an amendment that sought to add a prior art reference that
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`8
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 13 of 17 PageID #: 9458
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`
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`was already known by the patent owner); Uniloc 2017 LLC v. Google LLC, No. 2:18-CV-00493-
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`JRG-RSP, 2019 WL 6465318, at *2 (E.D. Tex. Dec. 2, 2019) (granting leave to amend contentions
`
`where plaintiff had “been on notice of the supplemental disclosures for months”).
`
`Nor would the addition of the three supplemental references necessitate extensive,
`
`additional fact discovery. The patents that issued from the Haney and Beyer ’612 references are
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`already asserted with respect to other asserted patents, and Beyer ’728 and Beyer ’612 share the
`
`same named inventor, Malcolm Beyer, as all four asserted patents in this case, including the
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`asserted ’970 Patent. See Exs. C, D, F, G. As an inventor and likely Rule 30(b)(6) designee, Mr.
`
`Beyer will be deposed in this case regardless of the outcome of this motion. Thus, the proposed
`
`supplementation would result in minimal, if any, additional discovery in this case. See Estech Sys.,
`
`Inc. v. Target Corp., No. 2:20-CV-00122-JRG-RSP, 2021 WL 2187978, at *4 (E.D. Tex. May 28,
`
`2021) (allowing amendment of invalidity contentions based on finding of no “significant need (if
`
`any) for additional fact discovery or expert discovery”).
`
`Finally, AGIS cannot have it both ways by bringing FMD into the case while seeking to
`
`preclude Samsung from responding to the new allegations. When arguing for leave to add FMD,
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`AGIS claimed that adding an entirely new product (FMD) developed by a third party (Google)
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`would result in “no prejudice” to Samsung because FMD was previously accused in the ITC and
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`“[n]early three months remain[ed] in fact discovery.” Dkt. 86 at 3. At the hearing on its motion
`
`for leave, AGIS’s counsel went further, stating the addition of FMD would cause “no prejudice to
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`anyone, particularly Samsung . . . . the trial is scheduled for March of 2024. No depositions have
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`been taken in this case, as we sit here today . . . very little has happened in discovery in this case.
`
`The Markman hearing has not been held.” Dkt. 112 at 6:17-24. The impact of the proposed
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`supplemental prior art—three references among a dozen asserted against the ’970 Patent—pales
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 14 of 17 PageID #: 9459
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`in comparison to the addition of FMD, which will require producing hundreds of technical
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`documents, voluminous source code, and at least one additional deposition, all coming from non-
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`party Google. And since that hearing, the Markman hearing has been extended by two months
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`while the trial date and other case deadlines have all been extended by another four. Thus, AGIS
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`cannot credibly claim any prejudice from this amendment.
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`D.
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`A Continuance Has Already Been Granted To Cure Any Prejudice To AGIS.
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`With trial nearly ten months away, this factor weighs strongly in favor of permitting
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`Samsung’s supplementation. Indeed, any prejudice was preemptively cured when the Court
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`granted a four-month continuance to address the prejudice to Samsung from the addition of FMD
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`to the case. Dkt. 115; see Kroy, No. 2:13-cv-888, 2014 WL 7463099 at *3 (finding extensions of
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`fact and expert discovery cured any prejudice stemming from amended invalidity contentions).
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`V.
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`CONCLUSION
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`For the reasons above, Samsung respectfully requests the Court grant leave to serve its
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`supplemental invalidity contentions.
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 15 of 17 PageID #: 9460
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`Dated: September 7, 2023 /s/ Melissa R. Smith_______________
`Melissa R. Smith
`Texas State Bar No. 24001351
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Phone: (903) 934-8450
`Fax: (903) 934-9257
`
`Gregory Blake Thompson
`Texas State Bar No. 24042033
`MANN | TINDEL | THOMPSON
`112 E. Line Street, Suite 304
`Tyler, Texas 75702
`(903) 657-8540
`(903) 657-6003 (fax)
`
`Neil P. Sirota
`neil.sirota@bakerbotts.com
`Margaret M. Welsh
`margaret.welsh@bakerbotts.com
`BAKER BOTTS L.L.P.
`30 Rockefeller Plaza
`New York, NY 10112-4498
`Phone: (212) 408-2500
`Fax: (212) 408-2501
`
`Darin W. Snyder (pro hac vice)
`dsnyder@omm.com
`Luann Simmons (pro hac vice)
`lsimmons@omm.com
`Mark Liang (pro hac vice)
`mliang@omm.com
`Bill Trac
`btrac@omm.com
`Sorin Zaharia
`szaharia@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, CA 94111
`Telephone: (415) 984-8700
`Facsimile: (415) 984-8701
`
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 16 of 17 PageID #: 9461
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`Stacy Yae (pro hac vice)
`syae@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
`
`Grant Gibson
`Texas State Bar No. 24117859
`ggibson@omm.com
`Cason G. Cole
`
`Texas State Bar No. 24109741
`ccole@omm.com
`O’MELVENY & MYERS LLP
`2501 North Harwood Street, Suite 1700
`Dallas, TX 75201-1663
`Telephone: (972) 360-1900
`Facsimile: (972) 360-1901
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`ATTORNEYS FOR DEFENDANTS
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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`Case 2:22-cv-00263-JRG-RSP Document 122 Filed 09/07/23 Page 17 of 17 PageID #: 9462
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to
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`electronic service are being served with a copy of this document via electronic mail.
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`CERTIFICATE OF CONFERENCE
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`/s/ Melissa R. Smith
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`On September 1, 2023, pursuant to Local Rule CV-7(h), counsel for Defendants met and
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`conferred with counsel for Plaintiff, and counsel for Plaintiff indicated that Plaintiff is opposed to
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`the relief sought by this Motion.
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`/s/ Melissa R. Smith
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