Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 1 of 11 PageID #: 12730
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`
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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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`CIVIL ACTION NO. 2:22-cv-263-JRG
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`JURY TRIAL DEMANDED
`
`Defendant.
`
`
`
`SAMSUNG’S REPLY IN SUPPORT OF MOTION FOR LEAVE
`TO AMEND INVALIDITY CONTENTIONS UNDER P.R. 3-6(b)
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 2 of 11 PageID #: 12731
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION............................................................................................................ 1
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`THE GOOD CAUSE FACTORS FAVOR LEAVE TO AMEND .............................. 2
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`A.
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`B.
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`C.
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`D.
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`Samsung Diligently Moved To Amend After FMD Was Added ..................... 2
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`The Amendment Is Important ............................................................................ 3
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`AGIS Would Not Be Prejudiced ......................................................................... 4
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`A Continuance Is Unnecessary ........................................................................... 5
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`III. CONCLUSION ................................................................................................................ 5
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 3 of 11 PageID #: 12732
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`GREE, Inc. v. Supercell Oy,
`No. 2:19-CV-00310-JRG-RSP, 2021 WL 1626740 (E.D. Tex. Apr. 26, 2021) ....................... 3
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`ii
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 4 of 11 PageID #: 12733
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`TABLE OF EXHIBITS
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`B
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`C
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`D
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`E
`F
`G
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`I
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`M
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`N
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`O
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`P
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`Document
`Ex. Number
`Defendants’ Exhibits Filed With Defendants’ Opening Brief (Dkt. 122)
`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”)
`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
`Plaintiff’s Additional Exhibits Filed With Plaintiff’s Response Brief (Dkt. 130)
`1
`U.S. Patent Publication No. 2006/0223518
`2
`U.S. Patent Publication No. 2006/0199612
`3
`U.S. Patent No. 9,820,123
`4
`Defendants’ Invalidity Contentions in Case No. 2:19-cv-00359-JRG
`5
`Samsung’s Response to Verified Complaint served in ITC Inv. No. 337-
`TA-1347
`Respondents’ Notice of Prior Art, served in ITC Inv. No. 337-TA-1347
`Defendants’ Initial Invalidity Contentions and Subject Matter Eligibility
`Contentions in Case No. 2:22-cv-00263-JRG-RSP
`Defendants’ Additional Exhibits Filed With Defendants’ Reply Brief
`Q
`Complainants’ Claim Construction Brief in ITC Inv. No. 337-TA-1347
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`6
`7
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 5 of 11 PageID #: 12734
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`I.
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`INTRODUCTION
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`AGIS cannot have it both ways by amending its infringement contentions to accuse an
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`entirely different product, Find My Device (“FMD”), while preventing Samsung from responding
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`by raising additional invalidity arguments. In contending otherwise, AGIS does not confront the
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`arguments in Samsung’s Motion, all of which demonstrate that leave should be granted, instead
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`creating a sideshow about Samsung’s awareness of the three supplemental references from prior
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`cases. But AGIS fails to acknowledge the key distinction between those prior cases and this one—
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`FMD was accused in those cases, while it was not accused in this case until August 24. AGIS
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`simply ignores that the three supplemental references are directly responsive to its late addition of
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`FMD, as they contain disclosures mirroring AGIS’s allegations against FMD with respect to
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`generating an emergency response. And AGIS does not dispute that Samsung diligently moved to
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`add these references only two weeks after they became relevant here with the addition of FMD.
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`AGIS also fails to identify any specific prejudice it would suffer from the amendment, and
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`instead vaguely refers to additional discovery (without identifying any specific discovery needed)
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`and claim construction (without identifying any proposed supplemental terms). AGIS also
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`sidesteps that it already served rebuttal contentions as to these three references in the recent ITC
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`Action involving FMD. And AGIS ignores that the recent four-month continuance allows
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`sufficient time to redress any alleged prejudice from needed discovery or claim construction.
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`Finally, AGIS’s Opposition is belied by AGIS’s own recent motion to add allegations
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`against FMD one year into the case, when, under the prior case schedule, claim construction was
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`nearly complete and fact discovery was three months from closing. AGIS’s motion came after it
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`repeatedly represented to Samsung and the Court that it would not accuse FMD and after having
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`litigated claims against FMD in other cases since 2017. By contrast, Samsung was diligent in
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`moving to add the supplemental references within two weeks of FMD’s addition to the case. The
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 6 of 11 PageID #: 12735
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`Court should reject AGIS’s “heads I win, tails you lose” approach to amending contentions.
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`II.
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`THE GOOD CAUSE FACTORS FAVOR LEAVE TO AMEND
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`A.
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`Samsung Diligently Moved To Amend After FMD Was Added
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`As Samsung’s Motion explained, the proposed three supplemental references were
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`necessitated by and are responsive to the addition of FMD to this case—on August 24, just two
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`weeks before Samsung filed the Motion—as both FMD and the references relate to generating an
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`emergency response on a mobile device. See Dkts. 115, 122. AGIS’s opposition disregards this
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`critical point entirely. Instead, AGIS attempts a sleight of hand by arguing that Samsung has
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`known about the supplemental references for some time, while ignoring that knowledge of the
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`existence of the references alone is not the point—knowledge of the references’ existence and
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`relevance to the issues in the case is the material issue. And it is undisputed that the supplemental
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`references are relevant now that FMD has been added to the case.
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`Specifically, AGIS contends that Samsung has known about the supplemental references
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`since at least November 14, 2019, when AGIS served the complaint on Samsung in the AGIS I
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`action, because two of the references are cited on the face of AGIS’s asserted patents. Opp. at 2.
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`AGIS next contends that Samsung has known that the supplemental references are “applicabl[e]
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`… to invalidity of AGIS patents” since at least June 8, 2020, when Samsung served invalidity
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`contentions in AGIS I, an action in which FMD was accused. Id. at 3. And finally, AGIS contends
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`that Samsung has known about the applicability of the references to the amended claims of the
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`’970 Patent since at least February 6, 2023, when Samsung served invalidity contentions in the
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`ITC Action, again, an action in which FMD was accused. Id. at 4. What AGIS does not contend—
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`because it cannot contend—is that FMD was part of this case at any of these points in time. Indeed,
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`in January 2023—right before Samsung served its original invalidity contentions in this case on
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`February 23—AGIS insisted repeatedly that this case was not about any Google software, such as
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 7 of 11 PageID #: 12736
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`FMD, and on that basis opposed Samsung’s motions to dismiss and to stay this case pending the
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`ITC Action. See Dkts. 41, 42. There is no dispute that FMD was not part of this case until August
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`24, 2023, and that Samsung filed this Motion only two weeks later. Seeking leave within two
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`weeks of the references becoming relevant to this case unquestionably demonstrates diligence.
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`GREE, Inc. v. Supercell Oy, No. 2:19-CV-00310-JRG-RSP, 2021 WL 1626740, at *5 (E.D. Tex.
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`Apr. 26, 2021) (finding defendant was diligent where it served supplemental invalidity contentions
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`and moved for leave to amend within three weeks of the court granting plaintiff leave to amend its
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`infringement contentions).
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`AGIS’s diligence arguments are also undermined by its own conduct in this case, when it
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`moved for leave to add FMD to this case just three months ago. See Dkt. 72. AGIS argued it was
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`diligent despite its knowledge of FMD since at least 2017, and despite its repeated representations
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`that FMD was not accused in this case. See Dkts. 72, 86. AGIS cannot now reasonably claim that
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`Samsung is unjustified in raising references that, by AGIS’s own argument, Samsung first
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`identified as relevant to the amended/current claims of the ’970 Patent just a few months ago in
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`the ITC Action where FMD was accused, and before FMD was in this case. Unlike AGIS,
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`Samsung never represented it would not rely on the supplemental references; to the contrary,
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`Samsung asserted them in the ITC Action where FMD and the ’970 Patent were at issue, and
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`Samsung then moved quickly to amend once FMD was added to this case. See Mot., Exs. C, D.
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`B.
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`The Amendment Is Important
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`AGIS makes the flawed argument that three references Samsung proposes to add to its
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`contentions are not important because if they were important, Samsung would have included them
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`in the original contentions. Opp. at 5. But this argument again ignores that the supplemental
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`references are responsive to AGIS’s newly added allegations against FMD. AGIS similarly misses
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`the mark by arguing that because Samsung already asserted dozens of references against each of
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 8 of 11 PageID #: 12737
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`the asserted patents, additional references are unnecessary. Id. AGIS cites no authority for this
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`proposition, nor does such authority exist. Further, the volume of references asserted as to the
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`other patents is irrelevant; Samsung seeks to assert the Haney, Beyer ’612, and Beyer ’728
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`references only as to the ’970 Patent. Mot. at 1.
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`C.
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`AGIS Would Not Be Prejudiced
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`In claiming prejudice, AGIS again fails to address the arguments in the Motion, including
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`that AGIS has known about the applicability of the three references to the reexamined, amended
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`claims of the ’970 Patent since at least their assertion in the ITC Action. Mot. at 8–10. Indeed,
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`AGIS already provided rebuttal contentions in the ITC specifically analyzing the Haney, Beyer
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`’612, and Beyer ’728 references and obviousness combinations including those three references.
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`See Mot., Exs. H–J. While AGIS emphasizes that Samsung has been represented by the same
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`counsel across cases, it ignores that AGIS’s counsel here also represented AGIS in the ITC and
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`thus is already familiar with the ITC rebuttal contentions, redressing any alleged prejudice.
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`AGIS vaguely speculates about the need for more discovery or claim construction, but does
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`not identify any specific additional discovery concerns or supplemental claim construction that
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`would be necessary. In the ITC Action, AGIS did not propound any additional discovery requests
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`specific to the three references following their assertion in that action. See Mot., Exs. F, G. Nor
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`did AGIS or any other party propose to construe any additional claim terms from the ’970 Patent
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`that are not already subject to claim construction proceedings in this case. Compare Ex. Q (AGIS’s
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`ITC construction brief), with Dkt. 107 (Joint Claim Construction Chart).
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`Further, AGIS’s generic protestations of prejudice lack merit and are inconsistent with its
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`prior positions. In seeking to add FMD to this case with just three months left in discovery, AGIS
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`claimed there was “more than sufficient time for the parties to exchange discovery regarding
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`FMD.” Dkt. 86 at 2. And even though Samsung identified a specific claim construction dispute
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 9 of 11 PageID #: 12738
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`arising from the addition of FMD, Dkt. 85 at 11–12, AGIS claimed that two months was sufficient
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`to litigate the additional dispute, Dkt. 86 at 2. Now that the Court has granted a continuance of
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`two months for claim construction and another four months for discovery through trial, Dkt. 121,
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`AGIS attempts to flip the script and argue the limited time is prejudicial. The Court should reject
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`AGIS’s efforts to manufacture prejudice and have it both ways.
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`D.
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`A Continuance Is Unnecessary
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`AGIS asserts “[n]o continuance can cure the prejudice imposed by” the proposed
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`amendments, but provides no explanation for its assertion. Opp. at 6. And as the Motion
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`explained, the recent four-month continuance that the Court granted to add FMD to this case is
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`more than sufficient to address the addition of the Haney, Beyer ’612, and Beyer ’728 references
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`as to the ’970 Patent in light of AGIS’s newly added allegations against FMD.
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`III. CONCLUSION
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`The Court should grant Samsung’s motion for leave to amend its invalidity contentions to
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`add the Haney, Beyer ’612, and Beyer ’728 references as to the ’970 Patent.
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`Dated: September 28, 2023
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`Respectfully submitted,
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`By: /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
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 10 of 11 PageID #:
`12739
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`(903) 657-8540
`(903) 657-6003 (fax)
`
`Darin W. Snyder
`dsnyder@omm.com
`Luann Simmons
`lsimmons@omm.com
`Mark Liang (pro hac vice)
`mliang@omm.com
`Bill Trac
`btrac@omm.com
`Sorin Zaharia (pro hac vice)
`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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`Stacy Yae (pro hac vice)
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`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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`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
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 134 Filed 09/28/23 Page 11 of 11 PageID #:
`12740
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`Phone: (212) 408-2500
`Fax: (212) 408-2501
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`ATTORNEYS FOR DEFENDANTS
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.
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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 electronic
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`service are being served with a copy of this document via electronic mail.
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`Dated: September 28, 2023
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`7
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