Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 1 of 11 PageID #: 11145
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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
`§
`
`§
`Case No. 2:22-cv-00263-JRG
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`JURY TRIAL DEMANDED
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`§
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`§
`§
`§
`§
`§
`§
`§
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`Defendants.
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`Plaintiff,
`
`v.
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT, LLC’S
`RESPONSE IN OPPOSITION TO SAMSUNG’S MOTION FOR LEAVE
`TO AMEND INVALIDITY CONTENTIONS UNDER P.R. 3-6(b) (DKT. 122)
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`
`

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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 2 of 11 PageID #: 11146
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION .............................................................................................................. 1
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`BACKGROUND ................................................................................................................ 2
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`GOVERNING LAW ........................................................................................................... 3
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`ARGUMENT ...................................................................................................................... 3
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`CONCLUSION ................................................................................................................... 6
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`I.
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`II.
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`III.
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`IV.
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`V.
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`i
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 3 of 11 PageID #: 11147
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`AGIS Software Dev., LLC v. Samsung Elecs. Co., et al.,
`No. 2:19-cv-362-JRG, Dkt. 1 (E.D. Tex. Nov. 4, 2019) ....................................................2, 3, 4
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`AGIS Software Dev., LLC v. Samsung Elecs. Co., et al.,
`No. 2:19-cv-362-JRG, Dkt. 137 (E.D. Tex. May 25, 2022) ......................................................2
`
`Estech Sys., Inc. v. Target Corp.,
`No. 20-CV-123-JRG-RSP, 2021 WL 2187978 (E.D. Tex. May 28, 2021) ...............................3
`
`O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355, 1366 (Fed. Cir. 2006)........................................................................................3
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`ii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 4 of 11 PageID #: 11148
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development, LLC (“AGIS”) files this response in opposition to
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`Defendants Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc.’s
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`(“SEA”) (collectively, “Samsung” or “Defendants”) motion for leave to amend invalidity
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`contentions Under P.R. 3-6(b) (Dkt. 122).
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`Samsung seeks leave to extensively supplement their invalidity contentions to add
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`contentions and claim charts concerning the following three documents:
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`(1) Haney: US Patent Publication. No. 2006/0223518 which is a publication of U.S.
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`Patent Application No. 11/099,362 filed on April 4, 2005 and which issued as U.S.
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`Patent No. 7,353,034 on April 1, 2008 (See Exhibit 1);
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`(2)
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`Beyer-612: US Patent Publication. No. 2006/0199612 which is a publication of
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`U.S. Patent Application No. 11/308,648 filed on April 17, 2006 and which issued
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`as U.S. Patent No. 7,630,724 on December 8, 2009 (See Exhibit 2); and
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`(3)
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`Beyer-728: US Patent No. 7,031,728 which issued on April 18, 2006 from U.S.
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`Patent Application No. 10/711,490 filed on September 21, 2004.
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`None of these documents are new to Samsung. Samsung and its counsel have known about
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`the Beyer-612 and Beyer-728 documents since at least November 14, 2019 and the Haney
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`document since at least June 8, 2020. In fact, Samsung specifically asserted invalidity of the ’970
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`Patent based on Haney, Beyer-612, and Beyer-728 as early as June 8, 2020 and February 6, 2023.
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`There is no excuse for Samsung’s omission of these documents from their February 23, 2023
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`invalidity contentions. Because Samsung’s delay is inexcusable and because Samsung cannot
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`show good cause, the Court should deny the motion for leave to amend their invalidity contentions.
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 5 of 11 PageID #: 11149
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`II.
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`BACKGROUND
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`On November 4, 2019, AGIS filed a complaint against Samsung asserting the ’123 and
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`’829 Patents. AGIS Software Dev., LLC v. Samsung Elecs. Co., et al., No. 2:19-cv-362-JRG, Dkt.
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`1 (E.D. Tex. Nov. 4, 2019) (“Samsung I”). 4, 2019) (“Samsung I”). Samsung was served on
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`November 14, 2019. The attachments to the complaint include the asserted patents, which
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`expressly identify the application and patent numbers of the proposed references identified as
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`Beyer-612 and Beyer-728. See, e.g., Exhibit 3. Thus, Samsung has known about the Beyer-612
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`and Beyer-728 documents since at least November 14, 2019.
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`Samsung I was consolidated with two other cases against Google and Waze and transferred
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`to the Northern District of California (“NDCA”) in accordance with an order issued by the Federal
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`Circuit. Id. at Dkt. 22, 139. On June 8, 2020, Samsung served joint invalidity contentions
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`identifying the Haney, Beyer-612, and Beyer-728 documents. See Exhibit 4. Based on Samsung’s
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`joint invalidity contentions, Samsung knew about the proposed Haney reference since at least June
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`8, 2020.
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`On December 22, 2022, the International Trade Commission (“ITC”) instituted an
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`investigation (“Samsung ITC”) based on a complaint filed by AGIS against Samsung asserting the
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`’970, ’251, ’838, ’829, and ’123 patents. See Exhibit 5. On February 6, 2023, Samsung filed a
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`response to the Samsung ITC complaint identifying as prior art to the ’ 970 Patent the Haney,
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`Beyer-612, and Beyer-728 documents. Id. On April 28, 2023, Samsung served a notice of prior art
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`in the Samsung ITC case identifying the Haney, Beyer-612, and Beyer-728 documents. See Exhibit
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`6.
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`Finally, there is no dispute that Samsung has been consistently represented by the same
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`counsel across the Samsung I, Samsung ITC, and Samsung II cases. See, e.g., AGIS Software Dev.,
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`2
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 6 of 11 PageID #: 11150
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`LLC v. Samsung Elecs. Co., et al., No. 2:19-cv-362-JRG, Dkt. 137 at 2-3 (E.D. Tex. May 25, 2022)
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`(listing signature block of same counsel); see also Exhibits 4-6.
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`III. GOVERNING LAW
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`Absent a discretionary finding of good cause, P.R. 3-6 deems a party’s invalidity
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`contentions as final contentions. According to the Federal Circuit, good cause requires a showing
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`of diligence. O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir.
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`2006). “Courts routinely consider four factors to determine whether good cause has been shown:
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`’(1) the explanation for the party’s failure to meet the deadline, (2) the importance of what the
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`Court is excluding, (3) the potential prejudice if the Court allows that thing that would be excluded,
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`and (4) the availability of a continuance to cure such prejudice.’” Estech Sys., Inc. v. Target Corp.,
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`No. 20-CV-123-JRG-RSP, 2021 WL 2187978, at *2 (E.D. Tex. May 28, 2021) (citation omitted).
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`IV. ARGUMENT
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`Samsung’s attempt to conceal its prior knowledge and its lack of diligence in contending
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`invalidity based on the Haney, Beyer-612, and Beyer-728 is inexcusable and cannot support a
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`finding of good cause.
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`First, Samsung has no explanation for their failure to meet the deadline for their final
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`invalidity contentions. Rather than own up to their long history with these documents, Samsung
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`attempts to mislead the Court on the date Samsung identified the documents. Samsung first learned
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`of the Beyer-612 and Beyer-728 documents on November 14, 2019 when AGIS served Samsung
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`with a complaint in Samsung I because the attachments to the Samsung I complaint identified the
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`Beyer-612 and Beyer-728 documents. See Exhibit 3. Samsung does not address these facts. To the
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`extent Samsung attempts to argue that they required time to review the record and ascertain the
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`applicability of these documents to invalidity of AGIS patents, Samsung’s June 8, 2020 invalidity
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`contentions identify all three Haney, Beyer-612, and Beyer-728 documents. See Exhibit 4.
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`3
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 7 of 11 PageID #: 11151
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`Samsung does not address these facts. To the extent Samsung attempts to explain away the
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`knowledge associated with their June 8, 2020 invalidity contentions in Samsung I on the grounds
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`that the USPTO issued reexamination-amended claims for the ’970 Patent on December 9, 2021,
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`the record shows that Samsung also knew about the Haney, Beyer-612, and Beyer-728 documents
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`as early as February 6, 2023 when Samsung filed a response to the Samsung ITC complaint. Exhibit
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`5. In Samsung’s February 6, 2023 response, Samsung expressly identified as prior art to the ’970
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`Patent the Haney, Beyer-612, and Beyer-728 documents. Id. Samsung followed their response with
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`an April 28, 2023 notice of prior art again identifying the Haney, Beyer-612, and Beyer-728
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`documents as prior art. See Exhibit 6. Samsung does not address these facts. In relation to the
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`Samsung ITC case, Samsung’s attempts to mitigate this factor by relying on the addition of FMD
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`to this case should be rejected because Samsung knew about AGIS’s FMD contentions when
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`Samsung identified the three documents as prior art in its February 6, 2023 response in the
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`Samsung ITC case. Samsung and their counsel’s (same counsel in this case) knowledge and
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`familiarity with these three documents, between June 8, 2020 and February 6, 2023, cannot justify
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`their delay in waiting over seven months to assert these documents and their attempt to
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`misrepresent the timeline regarding identification of these documents. Samsung makes no attempt
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`to explain why, with reasonable diligence, they could not have discovered the three documents
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`prior to the February 23, 2023 deadline for serving invalidity contentions. Samsung does not
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`contend any difficulty in discovering the documents because Samsung learned about the
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`documents in June 2020 and because Samsung had fully recognized the relevance of the
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`documents long before the February 23, 2023 deadline. This factor must weigh strongly against
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`leave.
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 8 of 11 PageID #: 11152
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`Second, Samsung cannot establish the importance of the amendments sufficient to show
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`good cause and overcome their lack of diligence. Samsung’s failure to include the Haney, Beyer-
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`612, and Beyer-728 documents in their invalidity contentions, despite their specific knowledge
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`and familiarity with the documents between their June 8, 2020 and February 6, 2023, undermines
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`the alleged importance of these documents to this case. Additionally, Samsung already has asserted
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`dozens of prior art references against each of the asserted patents. See Exhibit 7. For example,
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`Samsung has asserted 19 distinct prior art patents and publications and 4 prior art systems against
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`the ’970 Patent alone and 16 distinct prior art patents and publications and 5 prior art systems
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`against the ’838 Patent. Id. at 7-10, 28-35. Again, Samsung’s motion omits these portions of their
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`invalidity contentions and does not address the extent of their current prior art references. This
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`factor must weigh strongly against leave.
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`Third, Samsung fails to show that AGIS would not be prejudiced by the amendments.
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`Samsung served their infringement contentions on February 23, 2023. With the understanding that
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`the February 23, 2023 invalidity contentions are deemed final contentions pursuant to P.R. 3-6,
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`AGIS has been conducting discovery and claim construction proceedings based on the current
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`contentions. AGIS has already committed to its claim construction positions and the parties have
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`filed their joint claim construction charts. Should the Court grant leave within such close proximity
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`to the claim construction hearing, AGIS would need to expend unnecessary resources on additional
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`discovery, and potentially move for leave to further supplement its claim construction positions
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`and briefing. Samsung’s delay and the resulting prejudice to AGIS were completely within
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`Samsung’s control. This factor must weigh against leave.
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`Fourth, Samsung fails to show the availability of a continuance to cure the prejudice caused
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`by Samsung’s lack of diligence. The Court already accommodated Samsung’s request for a
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 9 of 11 PageID #: 11153
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`continuance to address FMD infringement contentions. Dkt. 115. No continuance can cure the
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`prejudice imposed by Samsung and Samsung’s counsel’s complete lack of diligence. Given
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`Samsung and Samsung counsel’s knowledge of the Haney, Beyer-612, and Beyer-728 documents
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`since June 8, 2020, there are only three reasons for Samsung’s failure to address the documents in
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`their February 23, 2023: Samsung failed to appreciate their importance to this case or Samsung
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`did not review the information until seven months after the deadline for invalidity contentions.
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`Neither excuse would be sufficient to overcome Samsung’s gross lack of diligence. This factor
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`must weigh against leave.
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`V.
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`CONCLUSION
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`For at least the foregoing reasons, AGIS requests that the Court deny Samsung’s motion
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`for leave to amend invalidity contentions Under P.R. 3-6(b) (Dkt. 122).
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`Dated: September 21, 2023
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`Respectfully submitted,
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`
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`
`
` /s/ Vincent J. Rubino, III
`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
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, NY 10538
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 10 of 11 PageID #:
`11154
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`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 East Houston, 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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`7
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`Case 2:22-cv-00263-JRG-RSP Document 130 Filed 09/21/23 Page 11 of 11 PageID #:
`11155
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 21, 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/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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