Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 1 of 11 PageID #: 10481
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD.,
`ET AL.,
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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 SUR-REPLY
`IN FURTHER OPPOSITION TO SAMSUNG’S MOTION FOR LEAVE
`TO AMEND ANSWER TO ADD CLAIM PRECLUSION AND
`KESSLER DOCTRINE AFFIRMATIVE DEFENSES (DKT. 101)
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`Defendants.
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`v.
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 2 of 11 PageID #: 10482
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`TABLE OF CONTENTS
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`Page(s)
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`THE GOOGLE I DISMISSAL EXPRESSLY EXEMPTED THE ’970
`AMENDED CLAIMS AND DOES NOT HAVE PRELUSIVE EFFECT .........................2
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`PRECLUSION DOES NOT EXTEND TO SAMSUNG ....................................................4
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`CONCLUSION ....................................................................................................................5
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 3 of 11 PageID #: 10483
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`TABLE OF AUTHORITIES
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`Page(s)
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`Adaptix, Inc. v. AT&T Mobility LLC,
` 2015 WL 12696204 (E.D. Tex. May 12, 2015) ............................................................................. 5
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`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
` 672 F.3d 1335 (Fed. Cir. 2012) ..................................................................................................... 3
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`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
` 721 F.3d 1330 (Fed. Cir. 2013)...................................................................................................... 3
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`In re Clement,.................................................................................................................................. 3
` 131 F.3d 1464 (Fed. Cir. 1997)
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`In re PersonalWeb Techs. LLC,
` 961 F.3d 1365 (Fed. Cir. 2020)...................................................................................................... 2
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`Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.
` 719 F.3d 1367 (Fed. Cir. 2013)...................................................................................................... 3
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`Pactiv Corp. v. Dow Chem Co.,
` 449 F.3d 1227 (Fed. Cir. 2006)...................................................................................................... 2
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`Realtime Adaptive Streaming LLC v. Netflix, Inc.
` 2020 WL 7889048, at *5 (C.D. Cal. Nov. 23, 2020) ..................................................................... 3
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`Rubber Tire Wheel Co. v. Goodyear Tire & Rubber Co.,
` 232 U.S. 413 (1914) ....................................................................................................................... 4
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`Senju Pharm. Co. v. Apotex Inc.,
` 746 F.3d 1344 (Fed. Cir. 2014) ..................................................................................................... 3
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`Seven Networks, LLC v. Motorola Mobility,
` 2022 WL 4326589, at *6-*9 (N.D. Tex. Feb. 10, 2022) ............................................................... 5
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`SpeedTrack, Inc. v. Office Depot, Inc.
` 791 F.3d 1317 (Fed. Cir. 2015)...................................................................................................... 4
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`Target Training Int'l v. Extended Disc N. Am.,
` 645 F. App'x. 1018 (Fed. Cir. 2016) ............................................................................................. 3
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`Trs. of Bos. Univ. v. Kingbright Elec. Co.,
` 427 F. Supp. 3d 246 (D. Mass. 2019) ........................................................................................... 5
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 4 of 11 PageID #: 10484
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`Uniloc 2017 LLC v. Microsoft Corp.,
` No. 18-CV-02053-JLS, Dkt. No. 101 (C.D. Cal. Sep. 9, 2019) .................................................... 3
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`Uniloc 2017, LLC v. Ubisoft, Inc.,
` No. 2021 1255605, at *6 (C.D. Cal. Mar. 18, 2021) ..................................................................... 4
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`Other Authorities
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`Fed. R. Civ. P. 41(a)(1)(A)(ii) ........................................................................................................ 3
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`Fed. R. Civ. P. 41(a)(1)(B) ........................................................................................................ 1, 3
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 5 of 11 PageID #: 10485
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`Defendants do not contest that this Court may deny a request for leave to amend pleadings
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`on the basis of futility, and their Reply confirms that these are precisely the type of circumstances
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`warranting denial of leave.
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`First, Defendants’ proposed amendment fails to plead facts sufficient to plausibly allege
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`the defense of claim preclusion. It is undisputed that none of the pre-reexamination claims of the
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`’970 Patent are asserted in this case. Defendants rely on a prior dismissal against third-party
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`Google that was expressly limited to pre-reexamination claims of the ’970 Patent, and that
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`expressly carved out the new reexamination-amended claims. Defendants’ argument that the
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`dismissal was made “with prejudice” is irrelevant because the “with prejudice” concerned only the
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`pre-reexamination claims. See Ex. 2 at 1, n.2. Google has maintained that the pre-reexamination
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`claims ceased to exist so as to remove subject matter jurisdiction, that the new claims were never
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`accused in the Google case, and that the differences between the pre-reexamination claims and
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`new reexamination-amended claims were substantive and material. See Exs. M, N. Accordingly,
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`Samsung’s proposed amendment is futile for failure to plead sufficient facts to support a defense
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`of claim preclusion.1
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`Second, Defendants’ proposed amendment fails to plead facts sufficient to plausibly allege
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`the defense related to the Kessler doctrine. This case concerns only Samsung devices. There is no
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`overlap of devices or sales between Samsung and Google. Defendants cannot plausibly allege
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`identity of a cause of action because the sale of Samsung devices accused in this case arises from
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`different transactions from Google devices. AGIS has consistently maintained that it is accusing
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`1 For the first time in a footnote to its Reply, Samsung relies on Rule 41(a)(1)(B) to contend that two successive
`dismissals have the effect of an adjudication on the merits. However, Rule 41(a)(1)(B) requires that the dismissals
`must be actions “based on or including the same claim.” AGIS’s arguments apply with equal force to Rule 41(a)(1)(B)
`because it is undisputed that the pre-reexamination claims are not the same as the new reexamination-amended claims,
`and AGIS never received leave to assert the new-reexamination-amended claims of the ’970 Patent in the first-
`dismissed case.
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 6 of 11 PageID #: 10486
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`the presence of software on the Samsung device rather than accusing software without regard to
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`Samsung devices. Ex. 3 at 35:9-14, 37:5-9 (“We have a case against Samsung that’s not related to
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`Google [] because aspects of the device are device, not software.”). Defendants acknowledge that
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`the existence of hardware limitations and that AGIS accuses Samsung devices, including hardware
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`components specific to Samsung devices. Reply at 4. Samsung agreed to claim constructions
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`expressly reciting hardware, e.g., corresponding structure of “PDA/cell phone hardware including
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`display 16 and a wireless receiver and/or transceiver; and equivalents thereof.” Dkt. 70 at 3-4.
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`Accordingly, Defendants’ proposed defense related to claim preclusion and the Kessler doctrine
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`are futile, and the Court should use its discretion to deny leave.
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`THE GOOGLE I DISMISSAL EXPRESSLY EXEMPTED THE ’970
`AMENDED CLAIMS AND DOES NOT HAVE PRELUSIVE EFFECT
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`Samsung erroneously contends the Google I dismissal was on the merits for the same claim
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`and did not contain an express reservation of rights. See Reply at 1. However, the Federal Circuit
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`has held that “[a]n exception to the normal rules of claim preclusion exists when ‘[t]he parties have
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`agreed in terms of in effect that the plaintiff may split his claim, or the defendant has acquiesced
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`therein…” Pactiv Corp. v. Dow Chem. Co., 449 F.3d 1227, 1231 (Fed Cir. 2006) (citations
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`omitted). Furthermore, PersonalWeb stated that “[s]ettling parties will remain free to limit the
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`preclusive effect of a dismissal; they simply have to fashion their agreement in a way that makes
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`clear any limitations to which they which to agree as to the downstream effect of the dismissal.”
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`In re PersonalWeb Techs. LLC, 961 F.3d 1365, 1379 (Fed. Cir. 2020). That is precisely what
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`occurred in Google I: Google and AGIS expressly and unambiguously stipulated to a voluntary
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`dismissal that covered the original pre-reexamination claims of the ’970 Patent and exempted the
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`reexamination-amended claims of the ’970 Patent from the dismissal order. See Ex. P at 1, n.1.
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`The Court’s Dismissal Order unequivocally adopted the parties’ language. Id. Because the
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`2
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 7 of 11 PageID #: 10487
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`reexamination-amended claims of the ’970 Patent were not subject to the Google I dismissal, they
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`have only been subject to a single dismissal in Google II, which does not implicate Fed. R. Civ. P.
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`41(a)(1)(B) and cannot support Defendants’ proposed defenses.2
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`Additionally, Defendants erroneously contend that Senju and Aspex apply under the facts
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`and circumstances here but fail to adequately differentiate Target. Defendants cannot show that
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`the new reexamination-amended claims do not include “substantive amendments” that were
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`“materially different” from the previously extinguished claims of the ’970 Patent. Google admitted
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`such in the NDCA action: “AGIS amended those claims in parallel EPR proceedings to add
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`several new features found nowhere in the original claims… and AGIS’s amendments
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`effectively cancelled the original claims.” Ex. N. at 2, 12 (citing Fresenius USA, Inc. v. Baxter
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`Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013) (emphasis added) (“[U]nder either the reissue or
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`reexamination statute…if the original claim is cancelled or amended to cure invalidity, the
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`patentee’s cause of action is extinguished and the suit fails”); In re Clement, 131 F.3d 1464, 1469
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`(Fed. Cir. 1997) (“Amending a claim by the inclusion of an additional limitation [has] exactly the
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`same effect as if the claim…had been canceled.”)); see also Exs. M, N at 10-11 (cases cited by
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`Samsung’s counsel). Defendants identify no intervening change in case law, and Defendants’
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`proposed pleadings fail to plausibly allege any facts in contravention of the new reexamination-
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`amended claims being “materially different” and having “substantive amendments” as compared
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`to the original pre-amendment extinguished claims. Compare Reply at 2 and Ex. N at 2, 12.
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`Accordingly, Defendants’ arguments fail because no facts exist to support preclusion.
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`2 Defendants cite Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. for the proposition that a voluntary
`concession results in preclusion; however, the Federal Circuit held that neither issue nor claim preclusion applied
`there. 719 F.3d 1367, 1371 (Fed. Cir. 2013). Furthermore, Realtime Adaptive Streaming LLC v. Netflix, Inc.
`distinguished “a stipulated voluntary dismissal with prejudice under Rule 41(a)(1)(A)(ii), which arises from the
`parties’ agreement.” 2020 WL 7889048, at *5 (C.D. Cal. Nov. 23, 2020) (citing Uniloc 2017 LLC v. Microsoft Corp.,
`No. 18-CV-02053-JLS, Dkt. No. 101 (C.D. Cal. Sep. 9, 2019) (Guilford, J.) (stipulated voluntary dismissal under Rule
`41(a)(1)(A)(ii) is not judicially sanctioned and thus does not convey prevailing status).
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`3
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 8 of 11 PageID #: 10488
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`PRECLUSION DOES NOT EXTEND TO SAMSUNG
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`Kessler Doctrine Does Not Apply: Defendants cannot plausibly allege the application of
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`Kessler to Samsung. Samsung and Google are separate entities with separate interests that compete
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`against each other. Samsung and Google sell different products with different features. Samsung’s
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`argument that AGIS accuses FMD on the different devices is irrelevant to the cited case law. Reply
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`at 3-4. SpeedTrack, Inc. v. Office Depot, Inc. concluded the Rubber Tire exception did not apply
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`because “the allegations in SpeedTrack’s complaint were directed specifically to Appellee’s use
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`of the IAP software to provide search functionality for their respective websites, not to any other
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`components or any other activities,” and “the IAP software…acquired non[-] infringing status in
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`Walmart, not as to other aspects of their computer systems.” 791 F.3d 1317, 1328 (Fed. Cir. 2015).
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`Here, no accused components or software have acquired non-infringing status in any way.
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`Claim Preclusion Does Not Apply: Defendants contend that AGIS failed to distinguish
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`Uniloc, Seven, and Trs. Of Bos. Univ. with respect to “privity or equivalent” or “same cause of
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`action” and resort to unfounded accusations of “misstat[ing] the law and facts.” Reply at 4-5. First,
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`Defendants fail to provide a full adequate legal citation for any of the cases relied upon (much less
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`a pin citation for the alleged holdings). See id. In Uniloc, the court acknowledged that “the Federal
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`Circuit in Mentor Graphics explained that the Kessler doctrine does not apply where the alleged
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`acts of infringement did not exist at the time of the precious action.” Uniloc 2017, LLC v. Ubisoft,
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`Inc., No. 2021 1255605, at *6 (C.D. Cal. Mar. 18, 2021). Defendants do not dispute the same
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`factual scenario applies or exists here. Similarly, in Trs. Of Bos. Univ., the court applied First
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`Circuit law and concluded that “[t]here is no dispute that this case has been brought by the same
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`patent holder and involves the same patent and product as the Epistar Action.” Defendants
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`conceded this dispute involves different products compared to the Google I and Google II actions.
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 9 of 11 PageID #: 10489
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`Finally, Defendants contend Seven applies because the “plaintiff had filed a first case against
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`Google alleging certain software in Google’s Android operating system.” Mot. at 14. However,
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`the court in Seven denied Google’s motion dismiss as to certain patents because “it [wa]s not
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`apparent…that the patent[s] [we]re essentially the same.” Seven Networks, LLC v. Motorola
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`Mobility LLC, 2022 WL 4326589, at *6-*9 (N.D. Tex. Feb. 10, 2022). Here, Defendants’ pleadings
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`fail to plausibly allege that the Samsung devices are essentially the same as Google devices and
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`instead rely on boiler-plate language that failed in Seven. See Reply at 4-5. Defendants rely on red-
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`herring arguments misdirected towards Google that fail to address the merits of AGIS’s claims in
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`the instant matter. In short, Defendants fail to provide a scintilla of evidence supporting their
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`motion as to the accused Samsung devices, much less their purported affirmative defenses.
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`As to “the fourth element,” Defendants resort to a distorted reading of Adaptix, Inc. v.
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`AT&T Mobility LLC, 2015 WL 12696204 (E.D. Tex. May 12, 2015). First, Adaptix did not involve
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`any re-examined patent claims. Instead, Defendants rely on a fallacious analogy that the
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`infringement theories in Adaptix against adjudged noninfringers Carrier Defendants extend to the
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`facts at issue here, against Google and Samsung. Not so. Defendants have not been adjudged as
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`noninfringers either as carriers much less, as device manufacturers. In short, Defendants premise
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`their entire theory on a house of cards: “the supplied technology forming the basis for the plaintiff’s
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`infringement theory is deemed non-infringing in an earlier action and is accused later in a customer
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`case.” Reply at 5. Fatally, Defendants’ fail to identify a single non-infringement finding to support
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`such conclusion, and therefore, should be denied.
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` CONCLUSION
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`Accordingly, Defendants’ Motion for Leave to Amend Answer to Add Claim Preclusion
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`and Kessler Doctrine Affirmative Defenses (Dkt. 101) should be denied.
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 10 of 11 PageID #:
`10490
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`Dated: September 12, 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
`
`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
`
`ATTORNEYS FOR PLAINTIFF
`AGIS SOFTWARE DEVELOPMENT LLC
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 127 Filed 09/12/23 Page 11 of 11 PageID #:
`10491
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on September 12, 2023, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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