Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 1 of 18 PageID #: 14372
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`v.
`
`CIVIL ACTION NO. 2:22-cv-263-JRG
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`JURY TRIAL DEMANDED
`
`Defendants.
`
`
`
`SAMSUNG’S MOTION FOR LEAVE TO AMEND ANSWER TO ADD
`ISSUE PRECLUSION AFFIRMATIVE DEFENSE
`
`
`
`
`
`

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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 2 of 18 PageID #: 14373
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`
`TABLE OF CONTENTS
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`
`Page
`
`I.
`
`FACTUAL BACKGROUND ............................................................................................ 2
`
`A.
`
`Procedural History ................................................................................................. 2
`
`1.
`
`2.
`
`3.
`
`The AGIS I Actions Were Transferred To The NDCA .............................. 2
`
`The NDCA SJ Order’s Finding Of Non-infringement For FMD .............. 3
`
`AGIS’s FMD Allegations Are Identical In This Case ............................... 3
`
`B.
`
`Samsung’s Defense Based On Issue Preclusion .................................................... 5
`
`II.
`
`LEGAL STANDARDS ..................................................................................................... 6
`
`III.
`
`ARGUMENT ..................................................................................................................... 7
`
`A.
`
`Each Good-Cause Factor Favors Granting Samsung Leave To Amend ................ 7
`
`1.
`
`2.
`
`3.
`
`Samsung Has Timely Moved To Amend Its Answer In This Case ........... 7
`
`Samsung’s Issue Preclusion Defense Is Important As It Could
`Narrow The Issues And Could Be Waived If Not Raised Now ................ 8
`
`Samsung’s Amendment Does Not Result In Any Prejudice Or
`Necessitate a Continuance Because It Does Not Require Discovery ........ 8
`
`B.
`
`The Rule 15(a) Factors Also Weigh In Favor Of Granting Leave ........................ 9
`
`IV.
`
`CONCLUSION ................................................................................................................ 11
`
`
`
`
`i
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 3 of 18 PageID #: 14374
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`
`TABLE OF AUTHORITIES
`
`
`Page
`
`CASES
`
`Acumed LLC v. Stryker Corp.,
`525 F.3d 1319 (Fed. Cir. 2008)............................................................................................... 10
`
`Adrain v. Vigilant Video, Inc.,
`No. 2:10-CV-173-JRG, 2013 WL 1984369 (E.D. Tex. May 13, 2013) ................................... 7
`
`Arcelor Mittal Allantique et Lorraine v. AK Steel Corp.,
`908 F.3d 1267 (Fed. Cir. 2018)............................................................................................... 10
`
`Bradberry v. Jefferson Cty., Tex.,
`732 F.3d 540 (5th Cir. 2013) .................................................................................................... 9
`
`Cellular Commc’ns Equip. LLC v. AT&T Inc.,
`No. 2:15-CV-00576, 2017 WL 2267296 (E.D. Tex. May 24, 2017) ........................................ 8
`
`Colida v. Qualcomm Inc.,
`128 F. App’x 765 (Fed. Cir. 2005) ......................................................................................... 10
`
`Estech Sys., Inc. v. Target Corp.,
`No. 2:20-CV-00122-JRG-RSP, 2021 WL 2187978 (E.D. Tex. May 28, 2021) ................... 6, 9
`
`GREE, Inc. v. Supercell Oy,
`No. 2:19-CV-00310-JRG-RSP, 2021 WL 1626740 (E.D. Tex. Apr. 26, 2021) ....................... 7
`
`Martinez v. Nueces Cnty.,
`71 F.4th 385 (5th Cir. 2023) ..................................................................................................... 6
`
`Mass Engineered Design, Inc. v. Ergotron, Inc.,
`No. 2:06 CV 272, 2008 WL 1930299 (E.D. Tex. Apr. 30, 2008) ............................................ 8
`
`Mozingo v. Correct Mfg. Corp.,
`752 F.2d 168 (5th Cir. 1985) .................................................................................................... 8
`
`Realtime Data LLC v. EchoStar Corp.,
`No. 6:17-CV-00084-JDL, 2018 WL 7283282 (E.D. Tex. July 17, 2018) ................................ 8
`
`Rothschild Connected Devices Innovations, LLC v. ADS Sec., L.P.,
`No. 2:15-CV-01431-JRG-RSP, 2019 WL 6002198 (E.D. Tex. Mar. 11, 2019) ...................... 6
`
`Seven Networks, LLC v. Google LLC,
`No. 2:17-CV-00442-JRG, 2018 WL 3327927 (E.D. Tex. July 6, 2018) .................................. 8
`
`Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC,
`778 F.3d 1311 (Fed. Cir. 2015)................................................................................................. 5
`
`ii
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 4 of 18 PageID #: 14375
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`State Farm Mut. Auto. Ins. Co. v. LogistiCare Sols., LLC,
`751 F.3d 684 (5th Cir. 2014) ................................................................................................ 5, 9
`
`Page
`
`RULES
`
`Fed. R. Civ. P. 15(a) ....................................................................................................................... 6
`
`Fed. R. Civ. P. 16(b)(4)................................................................................................................... 6
`
`
`
`
`iii
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 5 of 18 PageID #: 14376
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`
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`Samsung moves to amend its Answer to AGIS’s Second Amended Complaint (“SAC”) to
`
`add an issue preclusion defense based on a recent summary judgment order (the “SJ Order”) from
`
`the Northern District of California (“NDCA”). In particular, issue preclusion bars AGIS’s claim
`
`that Samsung infringes U.S. Patent No. 9,467,838 (“’838 Patent”) based on Google’s Find My
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`Device (“FMD”) application.
`
`The NDCA found that Google’s FMD does not infringe the ’838 Patent because it does not
`
`satisfy the “‘sending data’ limitation, which requires that a user select a ‘user-selectable symbol
`
`… positioned on the … georeferenced map’ corresponding to a second device and then ‘send[]
`
`data’ to the second device.” SJ Order at 18–25. This limitation is an element of all claims of the
`
`’838 Patent. Despite the SJ Order’s rulings, in this case, AGIS is continuing to allege that FMD
`
`infringes the ’838 Patent, and it contends that FMD satisfies the “sending data” limitation based
`
`on the same accused features in FMD.
`
`Samsung recognizes that issue preclusion will not attach to the SJ Order until the NDCA
`
`issues a final judgment on the issues for which the SJ Order granted summary judgment. To that
`
`end, on November 10, Google filed a motion in the NDCA for partial final judgment under Federal
`
`Rule of Civil Procedure 54(b), and this motion is contingent on the NDCA granting Google’s
`
`motion. Once that judgment is entered, AGIS’s identical claims against FMD in this case as to the
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`’838 Patent are barred by issue preclusion. To avoid any delay and potentially needing to seek
`
`leave after fact discovery closes, Samsung now moves before the NDCA has issued final judgment.
`
`Each of the four good-cause factors weighs in favor of granting Samsung leave to add this
`
`defense: (1) Samsung has expeditiously moved for leave to amend, indeed before a final judgment
`
`has even been entered based on recent NDCA SJ Order; (2) the defense is important because it
`
`could dispose of AGIS’s claims of infringement of the ’838 Patent based on FMD; (3) amendment
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`1
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 6 of 18 PageID #: 14377
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`
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`does not result in any prejudice to AGIS because the preclusion defense presents legal questions
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`that do not require any discovery to address; and (4) thus, a continuance is unnecessary.
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`There is also no reason under Federal Rule of Civil Procedure 15(a) to deny leave.
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`Samsung promptly moved to add its preclusion defense, so it has not acted with undue delay, bad
`
`faith, or dilatory motive. And the defense is not futile, as each of the elements for issue preclusion
`
`are met, as fully pled in Samsung’s proposed Amended Answer, attached hereto as Exhibit A (see
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`Nineteenth Affirmative Defense in paragraphs 192–200). See also Ex. B, Redline of Samsung’s
`
`proposed Amended Answer against proposed Amended Answer filed on August 11, 2023; Ex. C,
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`Redline of Samsung’s proposed Amended Answer against its Answer filed on July 30, 2023.1
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`Thus, leave should be granted for Samsung to add its issue preclusion defense.
`
`I.
`
`FACTUAL BACKGROUND
`
`A.
`
`Procedural History
`
`1.
`
`The AGIS I Actions Were Transferred To The NDCA
`
`In November 2019, AGIS filed cases against both Samsung, Google, and Waze in this
`
`Court and alleged infringement based on Google Maps and FMD running on Samsung devices in
`
`the Samsung case and running on Google devices in the Google case.2 AGIS v. Samsung, Dkt. 1
`
`at ¶¶ 15–16; AGIS v. Google, Dkt. 1, ¶¶ 86–87; AGIS Software Development LLC v. Waze Mobile
`
`Ltd., 2:19-cv-00359, Dkt. 1. Against Google, AGIS asserted six patents, including 9,467,838 (’838
`
`Patent). AGIS v. Google, Dkt. 1 at ¶¶ 86–87, 92–93.
`
`
`1 Samsung previously moved to amend its answer to include preclusion defenses based on claim
`preclusion and the Kessler doctrine. Dkt. 101. Although that motion for leave is still pending,
`Samsung moves to amend its proposed answer submitted with respect to that motion.
`
`2 AGIS Software Dev. LLC v. Samsung Elecs. Co. et al., (“AGIS v. Samsung”), No. 5:22-cv-04825-
`BLF (N.D. Cal.); AGIS Software Dev. LLC v. Google LLC (“AGIS v. Google”), No., 5:22-cv-
`04826-BLF (N.D. Cal.) (the NDCA actions collectively referred to herein as “AGIS I”).
`
`2
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`

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`
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`The prior cases against Google, Samsung, and Waze proceeded through discovery in this
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`Court, until they were transferred to the NDCA. Since transfer, AGIS I has been pending in the
`
`NDCA, with the Google and Waze cases proceeding and the Samsung case stayed. In AGIS I,
`
`Google moved for summary judgment of, among other things, non-infringement by FMD as to the
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`’838 Patent. AGIS v. Google, Dkt. 434. On October 10, 2023, the court issued its order on
`
`Google’s motion, which included granting summary judgment of non-infringement of the ’838
`
`Patent by FMD. Id., Dkt. 470.
`
`2.
`
`The NDCA SJ Order’s Finding Of Non-infringement For FMD
`
`All claims of the ’838 Patent contain a “sending data” limitation, which requires “that a
`
`user select a ‘user-selectable symbol … positioned on the … georeferenced map’ corresponding
`
`to a second device and then ‘send[] data’ to the second device.” Ex. D, SJ Order at 18–25. The
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`SJ Order found that FMD’s only user-selectable symbols (i.e., icons of the user’s devices linked
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`to the user’s account) are not positioned on the map, but rather, are displayed above the map. See
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`id. at 20–21. Further, the SJ Order found that FMD displays only a green symbol positioned on
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`the map and that selecting that green symbol does not send data to any device, but rather, merely
`
`displays the selected device’s battery capacity and wireless signal strength. See id. at 21–22.
`
`Accordingly, the SJ Order held that FMD does not satisfy the ’838 Patent’s “sending data”
`
`limitation. Id. at 18–25. On November 10, Google moved for entry of final judgment based on
`
`the SJ Order’s findings under Federal Rule of Civil Procedure 54(b).
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`3.
`
`AGIS’s FMD Allegations Are Identical In This Case
`
`On July 14, 2022, the same plaintiff, AGIS Software Development LLC, filed this case
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`against Samsung, asserting the ’838 Patent along with three other patents. Dkt. 1. AGIS’s initial
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`Complaint accused only U.S. government and Samsung software and did not assert any claims
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`against FMD or any other Google-developed software. See id. On June 16, 2023, AGIS filed its
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`3
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`
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`Second Amended Complaint, adding infringement allegations for the ’838 Patent based on FMD
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`software running on Samsung devices. Dkt. 69, ¶ 18. On June 28, AGIS filed a motion for leave
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`to amend its infringement contentions to also add allegations against FMD for the ’838 Patent.
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`Dkt. 72. The Court granted the motion for leave on August 24, while also ordering a four-month
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`continuance of the trial date to July 8, 2024. Dkt. 115 at 2.
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`In both this case and in AGIS I, AGIS’s infringement contentions as to FMD turn entirely
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`on the functionality of the FMD software. Indeed, for every claim limitation of the ’838 Patent,
`
`AGIS’s contentions accuse FMD software functionality and for most limitations, FMD software
`
`is the only accused functionality. Ex. F, ’838 Supplemental Infringement Contentions at 2–45. In
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`particular, as illustrated below, AGIS’s allegations are the same with respect to the “sending data”
`
`limitation—the basis of the NDCA court’s SJ Order—and are premised on FMD’s user interface.
`
`AGIS I
`
`This Case
`
`
`Ex. E, AGIS I Infringement Contentions
`at 279.
`
`
`Ex. F, ’838 Supplemental Infringement
`Contentions at 44.
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`4
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`
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`As with AGIS’s contentions against Google devices in AGIS I, AGIS’s theories in this case
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`do not depend on any specific features of the accused Samsung devices. Thus, its contentions in
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`this case against FMD on Samsung devices are materially identical to its allegations in AGIS I,
`
`where AGIS is accusing FMD on Google devices. See Exs. E, F.
`
`B.
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`Samsung’s Defense Based On Issue Preclusion
`
`Based on the NDCA court’s holding that FMD does not infringe the ’838 Patent, Samsung
`
`requests leave to plead a defense of issue preclusion.
`
`The law of the regional circuit determines “the general procedural question of whether
`
`issue preclusion applies.” Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC,
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`778 F.3d 1311, 1314 (Fed. Cir. 2015). Under Fifth Circuit law, issue preclusion applies where
`
`four elements are satisfied: (1) “the issue under consideration in a subsequent action must be
`
`identical to the issue litigated in a prior action,” (2) “the issue must have been fully and vigorously
`
`litigated in the prior action,” (3) “the issue must have been necessary to support the judgment in
`
`the prior case,” and (4) “there must be no special circumstance that would render preclusion
`
`inappropriate or unfair.” State Farm Mut. Auto. Ins. Co. v. LogistiCare Sols., LLC, 751 F.3d 684,
`
`689 (5th Cir. 2014).
`
`Each of the four elements is met as pled in the proposed Amended Answer. Ex. A,
`
`Amended Answer, ¶¶ 192–200. As to the first factor, both suits involve the same issue because
`
`both suits implicate the same FMD functionality and same ’838 Patent. See supra Section I.A.3.
`
`As to the second, third, and fourth factors, the issue of infringement of the ’838 Patent by FMD
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`was actually litigated—including through full briefing and oral argument—resulting in the SJ
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`Order finding no infringement. Thus, applying issue preclusion as to AGIS’s claim for the ’838
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`Patent would not be inappropriate or unfair. While the NDCA court has not yet issued a final
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`5
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`

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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 10 of 18 PageID #:
`14381
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`judgment, Google moved on November 10 for partial final judgment under Federal Rule of Civil
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`Procedure 54(b), and preclusive effect will attach once final judgment issues.
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`II.
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`LEGAL STANDARDS
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`“After a Docket Control Order has been entered, Fed. R. Civ. P. 16(b) governs the decision
`
`whether to permit a post-deadline amendment.” Estech Sys., Inc. v. Target Corp., No. 2:20-CV-
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`00122-JRG-RSP, 2021 WL 2187978, at *2 (E.D. Tex. May 28, 2021). “Rule 16 provides that a
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`scheduling order ‘may be modified only for good cause and with the judge’s consent.’” Rothschild
`
`Connected Devices Innovations, LLC v. ADS Sec., L.P., No. 2:15-CV-01431-JRG-RSP, 2019 WL
`
`6002198, at *1 (E.D. Tex. Mar. 11, 2019) (quoting Fed. R. Civ. P. 16(b)(4)). When considering
`
`whether a party has good cause for not meeting a deadline, courts consider four factors: “(1) the
`
`explanation for the party’s failure to [timely move for leave to amend]; (2) the importance of the
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`[amendment]; (3) potential prejudice in allowing the [amendment]; and (4) the availability of a
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`continuance to cure such prejudice.” Estech, 2021 WL 2187978, at *2 (citation omitted).
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`A court’s “discretion [when considering whether to extend a deadline in a Docket Control
`
`Order], however, is limited by Rule 15(a), [which] states that leave to amend must be ‘freely given
`
`when justice so requires.’” Id. (quoting Fed. R. Civ. P. 15(a)). Rule 15(a) “evinces a bias in favor
`
`of granting leave to amend,” and “[u]nless there is a substantial reason to deny leave to amend, the
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`discretion of the district court is not broad enough to permit denial.” Id. “In deciding whether to
`
`grant leave to file an amended pleading, the district court may consider such factors as undue
`
`delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies
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`by amendments previously allowed, undue prejudice to the opposing party, and futility of
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`amendment.” Id. (citation omitted). If an added claim “would be subject to dismissal, then [it] is
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`futile.” Martinez v. Nueces Cnty., 71 F.4th 385, 391 (5th Cir. 2023).
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 11 of 18 PageID #:
`14382
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`III. ARGUMENT
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`Each of the four good-cause factors favors granting Samsung leave to amend its answer to
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`add an issue preclusion affirmative defense. Samsung moved for leave promptly, indeed, before
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`a final judgment has even issued based on the recent SJ Order granting SJ of non-infringement as
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`to the ’838 Patent. Granting leave would not result in any prejudice to AGIS because no discovery
`
`is required to address this legal defense. Additionally, under Rule 15(a), Samsung should be
`
`granted leave to amend for the same reasons, and because the issue preclusion defense is not futile.
`
`A.
`
`Each Good-Cause Factor Favors Granting Samsung Leave To Amend
`
`1.
`
`Samsung Has Timely Moved To Amend Its Answer In This Case
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`Samsung has diligently moved for leave to amend its Answer before the NDCA has even
`
`issued a final judgment that could trigger issue preclusion. Samsung also filed this motion within
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`six weeks of the NDCA’s SJ Order finding no infringement by FMD as to the ’838 Patent. This
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`factor thus weighs in favor of granting leave. This Court and others in this District have found
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`that a motion for leave is timely when filed up to two months after the factual development or
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`court ruling that forms the basis for the motion. See, e.g., Adrain v. Vigilant Video, Inc., No. 2:10-
`
`CV-173-JRG, 2013 WL 1984369, at *1 (E.D. Tex. May 13, 2013) (“[T]he Court does not find that
`
`the two month interval amounts to an unreasonable delay.”) (emphasis added); GREE, Inc. v.
`
`Supercell Oy, No. 2:19-CV-00310-JRG-RSP, 2021 WL 1626740, at *5 (E.D. Tex. Apr. 26, 2021)
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`(finding no undue delay where a defendant served supplemental invalidity and noninfringement
`
`expert reports and invalidity contentions within three weeks of the court granting a plaintiff leave
`
`to amend its infringement contentions). Here, Samsung has moved for leave before the relevant
`
`development—an issuance of final judgment on the SJ Order’s rulings—has even occurred.
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`7
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 12 of 18 PageID #:
`14383
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`2.
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`Samsung’s Issue Preclusion Defense Is Important As It Could Narrow
`The Issues And Could Be Waived If Not Raised Now
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`The affirmative defense that Samsung seeks leave to add—i.e., a defense based on issue
`
`preclusion—is important because it could narrow the issues in this case and could be waived if not
`
`raised now. This Court has held that “judicial efficiency is (1) important, and (2) a basis upon
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`which amendments are allowed in cases.” Cellular Commc’ns Equip. LLC v. AT&T Inc., No. 2:15-
`
`CV-00576, 2017 WL 2267296, at *2 (E.D. Tex. May 24, 2017). Samsung’s issue preclusion
`
`defense may dispose of AGIS’s allegations asserting the ’838 Patent against FMD, narrowing the
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`issues and avoiding the need for the parties to continue to litigate an already-decided issue.
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`Samsung’s requested amendment is also important because, absent leave to plead this
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`defense in its answer, Samsung may be unable to raise the defense later in this case. The Fifth
`
`Circuit has held that “[u]nder F.R.C.P. 8(c), res judicata[] . . . is an affirmative defense which if
`
`not pled is considered waived.” Mozingo v. Correct Mfg. Corp., 752 F.2d 168, 172 (5th Cir. 1985).
`
`And this District has held that an amendment is important if, without the amendment, one of the
`
`parties would not be able to assert certain claims. See Mass Engineered Design, Inc. v. Ergotron,
`
`Inc., No. 2:06 CV 272, 2008 WL 1930299, at *3 (E.D. Tex. Apr. 30, 2008). Thus, the importance
`
`factor weighs in favor of granting Samsung leave to amend.
`
`3.
`
`Samsung’s Amendment Does Not Result In Any Prejudice Or
`Necessitate a Continuance Because It Does Not Require Discovery
`
`The prejudice and continuance factors weigh in favor of granting leave because there would
`
`be no prejudice to AGIS. The prejudice factor does not weigh against granting leave when
`
`allowing an amendment would require minimal additional discovery, or there is sufficient time to
`
`address any such additional discovery. See, e.g., Realtime Data LLC v. EchoStar Corp., No. 6:17-
`
`CV-00084-JDL, 2018 WL 7283282, at *2 (E.D. Tex. July 17, 2018); Seven Networks, LLC v.
`
`Google LLC, No. 2:17-CV-00442-JRG, 2018 WL 3327927, at *3 (E.D. Tex. July 6, 2018) (finding
`
`8
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`

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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 13 of 18 PageID #:
`14384
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`prejudice to be minimal and finding good cause for an amendment that sought to add a prior art
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`reference that was already known and considered by the patent owner).
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`Here, Samsung’s issue preclusion defense does not require any discovery. The issue
`
`preclusion defense presents “question[s] of law,” Bradberry v. Jefferson Cty., Tex., 732 F.3d 540,
`
`549 (5th Cir. 2013), and the factual bases for the legal defense are already in the public record—
`
`i.e., the NDCA court’s SJ Order. See Ex. A, Amended Answer, ¶¶ 192–200.
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`Because granting Samsung’s motion for leave will not result in any prejudice or require
`
`any additional discovery, a continuance is not necessary.
`
`B.
`
`The Rule 15(a) Factors Also Weigh In Favor Of Granting Leave
`
`The Rule 15(a) factors similarly favor granting Samsung’s motion. As discussed with
`
`respect to the good-cause factors, Samsung has moved expeditiously to amend its answer to add
`
`its issue preclusion defense. Thus, Samsung has not acted with undue delay, bad faith, or dilatory
`
`motive in asserting its issue preclusion defense. The remaining Rule 15(a) consideration—futility
`
`of the amendment, see Estech, 2021 WL 2187978, at *2—does not weigh against granting leave
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`because the legal requirements for the issue preclusion defense are or will be met here.
`
`Issue preclusion has four elements: (1) “the issue under consideration in a subsequent
`
`action must be identical to the issue litigated in a prior action,” (2) “the issue must have been fully
`
`and vigorously litigated in the prior action,” (3) “the issue must have been necessary to support
`
`the judgment in the prior case,” and (4) “there must be no special circumstance that would render
`
`preclusion inappropriate or unfair.” State Farm, 751 F.3d at 689.
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`The first factor is met because AGIS’s claim against to FMD running on Samsung phones
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`implicates the same issue resolved by the SJ Order. Issue preclusion dictates a finding of no
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`infringement “where it is shown that a close identity exists between the relevant features of the
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`accused device and the device previously determined to be [non-]infringing such that they are
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`9
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 14 of 18 PageID #:
`14385
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`essentially the same.” Arcelor Mittal Allantique et Lorraine v. AK Steel Corp., 908 F.3d 1267,
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`1274 (Fed. Cir. 2018) (quotations omitted). “Accused devices are ‘essentially the same’ where the
`
`differences between them are merely ‘colorable’ or ‘unrelated to the limitations in the claim of the
`
`patent.’” Id. (quoting Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1324 (Fed. Cir. 2008)).
`
`Here, AGIS’s allegations are identical to those in AGIS I, except that AGIS accused FMD
`
`running on Google devices, while it accuses FMD running on Samsung devices in this case. But
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`AGIS’s infringement theories are device-agnostic: they do not depend on any device-specific
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`hardware or features. Instead, because AGIS relies on FMD to satisfy all limitations of the asserted
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`claims of the ’838 Patent, any differences in the Google and Samsung hardware are “unrelated to
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`the limitations in the claim[s] of the [’838 Patent].” Arcelor, 908 F.3d at 1274. Crucially, for the
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`“sending data” limitation found to be not infringed in AGIS I, AGIS’s contentions rely exclusively
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`on FMD’s user interface features, which look and operate in the same way across all devices that
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`run FMD (see supra Section I.A.3; Ex. D at 18–25).
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`The second, third, and fourth factors are also met here: AGIS’s claims against Google’s
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`FMD as to the ’838 Patent were actually litigated and resulted in the SJ Order. Ex. A ¶¶ 192–200.
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`And AGIS had a full and fair opportunity to litigate this issue in AGIS I, having filed an opposition
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`brief and argued at a hearing that FMD satisfied the “sending data” limitation of the ’838 Patent.
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`The NDCA court rejected AGIS’s argument, concluding that FMD does not satisfy the “sending
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`data” limitation and thus does not infringe the ’838 Patent. Ex. D at 18–25. Once a final judgment
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`issues based on the SJ Order, then the NDCA court’s holding of non-infringement in the SJ Order
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`will be necessary to the resulting judgment. See Colida v. Qualcomm Inc., 128 F. App’x 765, 766
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`(Fed. Cir. 2005) (“[T]he grant of summary judgment of non-infringement was a critical and
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`necessary part of the judgment in the earlier litigation and was affirmed on appeal. Thus, Colida
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 15 of 18 PageID #:
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`is collaterally estopped from re-litigating this issue.”).
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`IV. CONCLUSION
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`For the foregoing reasons, Samsung should be granted leave to file its proposed Amended
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`Answer (Ex. A) adding a defense based on issue preclusion.
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 16 of 18 PageID #:
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`Dated: November 17, 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 (pro hac vice)
`dsnyder@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
`
`Cason Cole
`Texas State Bar No. 24109741
`ccole@omm.com
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`12
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`Case 2:22-cv-00263-JRG-RSP Document 155 Filed 11/17/23 Page 17 of 18 PageID #:
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`Grant Gibson
`Texas State Bar No. 24117859
`ggibson@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 155 Filed 11/17/23 Page 18 of 18 PageID #:
`14389
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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: November 17, 2023
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` /s/ Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`On November 16, pursuant to Local Rule CV-7(h), counsel Mark Liang for Defendants
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`met and conferred by email with counsel Vincent Rubino for Plaintiff and AGIS stated its
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`opposition to the relief requested herein.
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`Dated: November 17, 2023
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` /s/ Melissa R. Smith
`Melissa R. Smith
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`14
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