Case 2:22-cv-00263-JRG-RSP Document 141 Filed 10/05/23 Page 1 of 6 PageID #: 14021
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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
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`Case No. 2:22-cv-00263-JRG
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`JURY TRIAL DEMANDED
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`Defendants.
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT, LLC’S
`SUR-REPLY IN FURTHER OPPOSITION TO SAMSUNG’S MOTION FOR LEAVE
`TO AMEND INVALIDITY CONTENTIONS UNDER P.R. 3-6(b) (DKT. 122)
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`Case 2:22-cv-00263-JRG-RSP Document 141 Filed 10/05/23 Page 2 of 6 PageID #: 14022
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`The Court should deny Defendants Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc.’s (collectively, “Samsung”) motion for leave to amend invalidity
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`contentions (Dkt. 122) because Samsung is unable to muster up a sufficient reason for not asserting
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`the three long-known references on February 23, 2023. This is because either Samsung did not
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`pay attention to the case or Samsung deliberately withheld the references as strategic choice.
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`Samsung has abandoned their attempt to cast their conduct as “diligent in identifying and
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`disclosing the additional references.” Dkt. 122 at 6. Samsung does not dispute that Samsung and
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`their counsel have known about the Beyer-612 and Beyer-728 documents since at least November
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`14, 2019 and the Haney document since at least June 8, 2020. Samsung does not dispute their
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`familiarity with these same references through subsequent history including, but not limited to:
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`Samsung specifically asserting invalidity of the ’970 Patent in the AGIS ITC case based on Haney,
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`Beyer-612, and Beyer-728 as early as June 8, 2020 and February 6, 2023. Dkt. 130 at 1-4.
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`Despite omitting from its Motion the long history of knowledge and familiarity with these
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`references, Samsung refocuses on one excuse: the addition of FMD to the June 16, 2023 Second
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`Amended Complaint raised the new issue of generating an emergency1 response. This excuse is
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`pure pretext and desperately misleading.
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`At the outset of the case, AGIS accused Samsung Knox which contains virtually identical
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`features as compared to FMD, including the capability to initiate responses via a lock interface.
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`Samsung’s claim that “the additional references disclose features that are directly comparable to
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`AGIS’ allegations that FMD’s ‘Emergency Call’ icon, ‘Call Owner’ button, and ‘unlock option’
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`1 Generating an emergency response is not a claim limitation of the ’970 Patent, and Samsung
`does not explain the application of the phrase to this case. Presumably, Samsung intends to refer
`to a claimed response from a recipient device. In responding to Samsung’s arguments, AGIS does
`not intend to limit or modify any existing infringement contentions and/or to propose an
`interpretation or meaning for any terms.
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`Case 2:22-cv-00263-JRG-RSP Document 141 Filed 10/05/23 Page 3 of 6 PageID #: 14023
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`provide a ‘selected response’ or a ‘manual response’ as required by the asserted claims of the ’970
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`Patent,” (Dkt. 122 at 7) ignores the fact that similar (if not identical) features are included in AGIS’
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`contentions of Samsung Knox. Each of the below features were accused in AGIS’ September 12,
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`2022 infringement contentions2 for Samsung Knox using the figure reproduced below.
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`See Exhibit 8. Thus, the proposed amendments are not responsive to FMD, and there is no real
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`excuse for Samsung to withhold the assertion of three documents from their February 23, 2023
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`invalidity contentions, despite having knowledge and familiarity with the documents since 2019-
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`2020. The Court should not reward Samsung’s continuous misrepresentations and omissions.
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`The remainder of Samsung’s Reply is dedicated to recycling rejected arguments from other
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`motions, including alleging delay in asserting infringement of FMD. Such arguments are
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`2 This identification is not intended to limit or otherwise modify the scope of AGIS’ contentions.
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`Case 2:22-cv-00263-JRG-RSP Document 141 Filed 10/05/23 Page 4 of 6 PageID #: 14024
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`irrelevant to the relief sought in this Motion, and they do not address the lack of importance of the
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`proposed amendment and the prejudice to AGIS.
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`In the absence of a good reason for Samsung’s lack of diligence, AGIS is unduly prejudiced
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`by Samsung’s inattention or deliberate disregard of the February 23, 2023 deadline for invalidity
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`contentions. Samsung’s long delay in asserting the documents undermines their importance, as
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`does the undisputed fact that Samsung already has asserted 19 distinct prior art patents and
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`publications and 4 prior art systems against the ’970 Patent alone and 16 distinct prior art patents
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`and publications and 5 prior art systems against the ’838 Patent. See Dkt. 130 at 5 citing Exhibit
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`7 at 7-10, 28-35.
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`The inexcusable circumstances of Samsung’s dilatory conduct in withholding the assertion
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`of long-known documents would set a poor precedent and undermine the force of law behind the
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`Court’s docket control orders. For the reasons set forth herein, the Court should deny the Motion
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`for leave to amend their invalidity contentions.
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`Dated: October 5, 2023
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`Respectfully submitted,
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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, New York 10538
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`Case 2:22-cv-00263-JRG-RSP Document 141 Filed 10/05/23 Page 5 of 6 PageID #: 14025
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`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`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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`Case 2:22-cv-00263-JRG-RSP Document 141 Filed 10/05/23 Page 6 of 6 PageID #: 14026
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on October 5, 2023, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`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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