Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 1 of 12 PageID #: 12787
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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
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`Defendant.
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`SAMSUNG’S REPLY IN SUPPORT OF MOTION TO STAY PENDING RESOLUTION
`OF SAMSUNG’S MOTION TO SEVER AND TRANSFER TO THE NORTHERN
`DISTRICT OF CALIFORNIA CLAIMS AGAINST GOOGLE FIND MY DEVICE
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 2 of 12 PageID #: 12788
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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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`Samsung’s Diligently Filed Motion Should Be Prioritized ............................................... 1
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`Each Of The Three Stay Factors Favor A Stay.................................................................. 3
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`III.
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`Conclusion ......................................................................................................................... 5
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`i
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 3 of 12 PageID #: 12789
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`TABLE OF AUTHORITIES
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`Page
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`Cases
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`In re Apple Inc.,
`52 F.4th 1360 (Fed. Cir. 2022) ..................................................................................................2
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`Moser v. Navistar Int’l Corp.,
`No. 4:17-cv-00598, 2018 WL 1169189 (E.D. Tex. Mar. 6, 2018) ............................................5
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`In re TracFone Wireless, Inc.,
`848 F. App’x 899 (Fed. Cir. 2021) ............................................................................................2
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`ii
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 4 of 12 PageID #: 12790
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`TABLE OF EXHIBITS
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`B
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`C
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`Document
`Ex. Number
`Defendants’ Exhibits Filed With Defendants’ Opening Brief (Dkt. 124)
`A
`Cover Pleading to AGIS’s December 1, 2022 Disclosure of Asserted Claims
`and Infringement Contentions Served in This Case (Eastern District of
`Texas Case No. 2:22-CV-00263-JRG-RSP)
`AGIS’s November 2022 ITC complaint against Google, Samsung, OnePlus,
`TCL, Lenovo, Motorola, HMD, Sony, ASUS, Caterpillar, BLU, Panasonic,
`Kyocera, and Xiaomi (Inv. No. 337-TA-1347)
`Transcript for the August 22, 2023 Hearing in This Case (Eastern District of
`Texas Case No. 2:22-CV-00263-JRG-RSP)
`Plaintiff’s Additional Exhibits Filed With Plaintiff’s Response Brief (Dkt. 131)
`1
`Email from Mark Liang to Counsel for AGIS Regarding Filing the Pending
`Motion to Sever and Transfer in This Case (Eastern District of Texas Case
`No. 2:22-CV-00263-JRG-RSP)
`Defendants’ Additional Exhibits Filed With Defendants’ Reply Brief
`March 1, 2023 Hearing Transcript in AGIS Software Development LLC v.
`D
`Google LLC in the Northern District of California (Case No. 5:22-CV-
`04826-BLF)
`Order Terminating Pending Motions Without Prejudice in AGIS Software
`Development LLC v. Samsung Elecs. Co. Ltd., et al. in the Northern District
`of California (Case No. 5:22-CV-04825-BLF, Dkt. 162)
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`E
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 5 of 12 PageID #: 12791
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`AGIS does not dispute that Federal Circuit precedents require resolution of transfer
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`motions before Markman hearings or other substantive proceedings. Instead, in an attempt to
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`avoid this clear requirement, AGIS argues that (1) it is limited only to “long-pending” transfer
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`motions, and that (2) it should not apply here because Samsung delayed by not filing its motion
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`immediately after AGIS filed its amended complaint. Both arguments fail. First, Federal Circuit
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`precedent requires resolution of venue issues before district courts address other substantive issues,
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`such as claim construction, for the basic reason that a court should not be deciding substantive
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`issues if it is not the appropriate venue for the case. AGIS cites no case, because it cannot, where
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`the Federal Circuit conditions that requirement on the length of time the transfer motion has been
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`pending. Second, Samsung did not delay filing its Motion to Sever and Transfer—indeed, it filed
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`the motion only one week after the Court granted AGIS’s motion for leave to amend its
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`infringement contentions to add FMD to the case and Samsung’s motion, thus, became ripe.
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`Moving any sooner, before FMD was added to the case on August 24, would have been illogical
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`and a waste of the Court’s time.
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`As to prejudice, AGIS does not dispute it is a non-practicing entity seeking only monetary
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`relief. Thus, there is no urgency to resolving AGIS’s claims. And any schedule delay in this case
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`is attributed solely to AGIS’s late addition of “a new basis for infringement.” Dkt. 115 at 1.
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`Finally, AGIS’s observation that this case is in its later stages, with Markman and other key
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`deadlines approaching, only heightens the need for, and urgency of, a stay before the parties and
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`the Court move forward with substantive issues in the costliest phases of the case.
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`I.
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`SAMSUNG’S DILIGENTLY FILED MOTION SHOULD BE PRIORITIZED
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`As the Motion to Stay explained, the Federal Circuit has repeatedly held that venue and
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`transfer issues must be decided before the Markman or other substantive proceedings. Dkt. 124 at
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`1, 4-6. AGIS does not dispute these holdings but instead attempts to distinguish them based on
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`1
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 6 of 12 PageID #: 12792
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`immaterial factual differences and a distorted presentation of the record in this case.
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`AGIS argues that none of the cases that Samsung cites involved motions to sever, in
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`addition to transfer. Dkt. 131 at 4. But AGIS does not explain why this distinction is material,
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`nor could it. Samsung’s motion presents an important venue dispute, and the related request to
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`sever the Find My Device (FMD) claims to facilitate their transfer does not change that fact. Dkts.
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`117, 123, 128, 133. The motion must, therefore, take “top priority” and be decided before
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`Markman. See In re TracFone Wireless, Inc., 848 F. App’x 899, 900 (Fed. Cir. 2021).
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`AGIS next quotes one of Samsung’s cited cases, In re TracFone, to suggest that transfer
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`motions need only be promptly decided if they are “long-pending,” such as for “eight months.”
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`Dkt. 131 at 5. But while In re TracFone involved a long-pending transfer motion, neither that
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`Federal Circuit case nor any other conditions the requirement to decide transfer motions promptly
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`on how long the motions have been pending. To the contrary, the Federal Circuit uniformly ties
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`that requirement to the rationale that substantive issues should not be decided in a venue that may
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`not be appropriate for the case. See Dkt. 115 at 5-6. For example, in In re Apple Inc., 52 F.4th
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`1360, 1363 (Fed. Cir. 2022), the Federal Circuit expressly mandated that “decision of a transfer
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`motion must proceed expeditiously as the first order of business”—even before issuance of a
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`scheduling order. Here, the Markman hearing is imminent—just over one month away. Dkt. 121.
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`Under this clear authority, the case must be stayed pending resolution of the sever-transfer motion.
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`Finally, AGIS argues that Samsung delayed resolution of its sever-transfer motion by not
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`filing immediately after AGIS filed its Second Amended Complaint on June 16 and that Samsung’s
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`June 28 meet and confer email somehow demonstrates that Samsung elected to “s[i]t idle” instead.
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`But, as this Court explained, simply filing an amended complaint “does not automatically entitle
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`Plaintiff to amend its infringement contentions. Such an amendment can only be accomplished[]
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`2
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 7 of 12 PageID #: 12793
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`. . . by leave of Court.” Dkt. 115. So FMD was not part of this case until the Court granted leave
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`on August 24. And Samsung moved for severance and transfer just one week later. Dkt. 117.
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`Contrary to demonstrating a delay strategy, Samsung’s June 28 meet and confer email
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`further shows Samsung’s diligence. Samsung sought AGIS’s position on severance and transfer
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`in late June, before FMD was added to the case, so that if AGIS opposed transfer, Samsung could
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`have a motion ready to file right away if the Court granted AGIS leave to accuse FMD. And AGIS
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`fails to mention that the email expressly stated that Samsung would move to transfer only “in the
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`event that the Court grants AGIS’s motion for leave to add infringement allegations against FMD.”
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`Ex. 1. Indeed, moving to sever and transfer claims against FMD soon after June 28 would have
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`been illogical and a waste of the Court’s resources, given that those claims were not yet in the case.
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`Samsung diligently filed its Motion to Sever and Transfer only one week after the FMD
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`claims were added to this case, and the motion must now be prioritized and decided before the
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`upcoming Markman hearing. Accordingly, the Court should stay this case, including postponing
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`the Markman hearing, until it decides the motion.
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`II.
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`EACH OF THE THREE STAY FACTORS FAVOR A STAY
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`A Stay Will Not Prejudice AGIS: AGIS does not dispute that it is a non-practicing entity,
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`is only seeking damages, and does not engage in product competition with Samsung. Dkt. 131 at
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`6. As the cases cited in the Motion to Stay hold, a stay does not prejudice the plaintiff in such
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`circumstances. Dkt. 124 at 7-8. That the cited cases involved stays pending IPRs, as AGIS notes,
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`is an irrelevant distinction; the salient point is that there is no urgency to resolving AGIS’s claims.
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`AGIS’s remaining arguments fall flat. AGIS fails to explain why its unidentified licensees’
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`alleged competition with Samsung moves the needle on prejudice to AGIS. Dkt. 131 at 6. Further,
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`AGIS complains that the case schedule has already been extended. Id. But, as the Court noted,
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`that extension was a result of AGIS’s own delay, waiting a year and until near the end of the prior
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 8 of 12 PageID #: 12794
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`fact discovery cutoff date before seeking to add its FMD claims to this case. Dkt. 115 at 1. Finally,
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`AGIS’s comment that claim construction briefing is ongoing and that substantial discovery has
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`been completed only further supports the need for an immediate stay because transfer issues must
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`be decided before substantive parts of the case are reached.
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`Samsung Will Suffer Hardship Absent A Stay: AGIS’s argument that Samsung will not
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`suffer hardship distorts the facts and procedural record. For example, AGIS again asserts that any
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`hardship to Samsung is self-inflicted due to its alleged delay in moving to transfer. Dkt. 131 at 7.
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`But as already discussed and contrary to AGIS’s mischaracterization, FMD was not part of this
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`case until August 24, and Samsung filed its sever-transfer motion just a week later.
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`AGIS also argues Samsung would not have to “redo certain work” as in AGIS I,1 and
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`specifically disputes whether Samsung’s reference to “Dkts. 425, 436” in AGIS I supports that the
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`parties had to redo work in the AGIS I cases after transfer. Dkt. 131 at 8. Both docket entries
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`indeed show that work had to be redone: (1) Dkt. 425 is a motion Google had to refile after the
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`NDCA court denied all pending motions without prejudice to re-file after transfer, Ex. D at 8:11-
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`12; see also Ex. E (denying all pending motions in AGIS I Samsung without prejudice after
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`transfer); and (2) Dkt. 436 is an AGIS I NDCA case schedule providing deadlines for infringement
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`and invalidity contentions that the parties had to redo to comply with the NDCA local rules. To
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`avoid the same inefficiencies as AGIS I and minimize the amount of work that would need to be
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`redone in this case, a short stay should be entered until the motion to sever and transfer is decided.
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`A Stay Will Conserve Judicial Resources: AGIS’s arguments that denial of a stay would
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`1AGIS also asserts that the AGIS I transfer order was based on alleged misrepresentations from
`Google regarding the location of FMD-related discovery in London. Dkt. 131 at 8. But as
`Samsung’s sever-transfer briefing explains, there was no such misrepresentation as the London
`FMD team was disclosed by Google in supporting Google’s and Samsung’s respective transfer
`motions in AGIS I. Dkt. 117 at 11 n.3; Dkt. 133 at 1, 2.
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 9 of 12 PageID #: 12795
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`conserve judicial resources are meritless and irrelevant to the scope of the stay sought by this
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`motion. AGIS first argues that there is efficiency in resolving all issues in this proceeding in one
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`matter. Dkt. 131 at 8. But it is unclear how this argument is relevant given that Samsung requests
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`a stay of the entire case, not just the FMD claims.2 Granting this motion’s stay request would not
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`result in two separate matters. By contrast, not staying this case before resolving the transfer-sever
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`motion may result in conflicting outcomes (such as on claim construction) with the other AGIS
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`actions in the NDCA addressing overlapping claims.
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`AGIS also attempts to distinguish Secure Access on the basis that that case was in its early
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`stages when the stay request was filed, whereas this case is not. Dkt. 131 at 9. But it is unclear
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`why this distinction has any import on what Secure Access is cited for—that a stay pending
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`resolution of severance and transfer issues is likely to simplify issues. Regardless, a stay is even
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`more important and urgent at later stages of a case, which are more costly for the parties and the
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`Court. Precisely for that reason, the Federal Circuit has held that transfer issues should be resolved
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`before proceedings on any substantive issues such as the Markman hearing. See Dkt. 124 at 5-6.
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`Given the fast-approaching Markman date in this case and the many depositions and discovery
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`deadlines that soon follow, a stay will substantially conserve judicial resources.3
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`III. CONCLUSION
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`For the foregoing reasons, a short stay should be entered until this Court rules on
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`Samsung’s Motion to Sever and Transfer.
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`2 AGIS argues that its allegations based on FMD are intertwined with its allegations against U.S.
`government and Samsung software, Dkt. 131 at 8-9, but as discussed in Samsung’s reply in support
`of its sever-transfer motion, that is not the case, Dkt. 133 at 1-2.
`3 AGIS cites Moser v. Navistar Int’l Corp., No. 4:17-cv-00598, 2018 WL 1169189, at *2 (E.D.
`Tex. Mar. 6, 2018) to argue that an untimely stay should be denied. But again, Samsung filed its
`motion to stay within a week of the Court adding FMD to this case, so its motion is timely.
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 10 of 12 PageID #:
`12796
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`Dated: September 29, 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
`(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
`szaharia@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, CA 94111
`Telephone: (415) 984-8700
`Facsimile: (415) 984-8701
`
`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
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`Case 2:22-cv-00263-JRG-RSP Document 135 Filed 09/29/23 Page 11 of 12 PageID #:
`12797
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`
`
`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
`
`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
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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 135 Filed 09/29/23 Page 12 of 12 PageID #:
`12798
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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 29, 2023
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`/s/ Melissa R. Smith
`Melissa R. Smith
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