Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 1 of 11 PageID #: 14775
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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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`Defendants.
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`SAMSUNG’S REPLY IN SUPPORT OF ITS MOTION FOR LEAVE TO AMEND
`ANSWER TO ADD ISSUE PRECLUSION AFFIRMATIVE DEFENSE
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 2 of 11 PageID #: 14776
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`TABLE OF CONTENTS
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`THE GOOD CAUSE FACTORS FAVOR GRANTING LEAVE .................................... 1
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`THE PROPOSED AMENDMENT IS NOT FUTILE ....................................................... 4
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`Page
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`I.
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`II.
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`i
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 3 of 11 PageID #: 14777
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Arcelor Mittal Allantique et Lorraine v. AK Steel Corp.,
`908 F.3d 1267 (Fed. Cir. 2018)................................................................................................. 5
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`Colida v. Qualcomm Inc.,
`128 F. App’x 765 (Fed. Cir. 2005) ........................................................................................... 2
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`Langley v. Prince,
`926 F.3d 145 (5th Cir. 2019) .................................................................................................... 3
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`Meadaa v. K.A.P. Enters., L.L.C.,
`756 F.3d 875 (5th Cir. 2014) .................................................................................................... 4
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`Mozingo v. Correct Mfg. Corp.,
`752 F.2d 168 (5th Cir. 1985) .................................................................................................... 2
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`Script Security Sol., LLC v. Amazon.com, Inc.,
`2016 WL 5916627 (E.D. Tex. Oct. 11, 2016) ......................................................................... 1
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`Stevens v. St. Tammany,
`17 F.4th 563 (5th Cir. 2021) ..................................................................................................... 3
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`TQ Delta, LLC v. CommScope Holding Co.,
`2023 WL 2145502 (E.D. Tex. Feb. 21, 2023) ...................................................................... 2, 4
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`RULES
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`Fed. R. Civ. P. 54(b) ....................................................................................................................... 4
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`ii
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 4 of 11 PageID #: 14778
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`AGIS cannot have it both ways, faulting Samsung for not filing its Motion for leave sooner
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`and months before the NDCA’s SJ Order, while also arguing that the Motion is premature because
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`the NDCA has not yet issued final judgment. Neither contention is correct, and AGIS ignores that
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`Samsung’s Motion is explicitly contingent on the NDCA court granting Google’s pending Rule
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`54(b) motion for final judgment based on the SJ Order’s ruling of non-infringement. Briefing on
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`that Rule 54(b) motion closed last week, so a decision is expected soon.1
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`Under the guise of “futility,” AGIS also raises premature challenges to the merits of
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`Samsung’s issue preclusion defense. First, AGIS argues the NDCA SJ Order is not a final
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`judgment. But this fact, which Samsung concedes in its Motion, will be cured if the NDCA court
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`grants Google’s pending Rule 54(b) motion. Second, AGIS puts forward the fiction that this case
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`concerns a “new version” of FMD running on Samsung devices, versus the “old version” of FMD
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`on Google devices at issue in the NDCA case. In truth, there is no difference in either the accused
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`FMD functionality or in AGIS’s allegations for the “sending data” limitation that the SJ Order
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`found not infringed, and AGIS identifies none. Samsung’s Motion should be granted.
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`I.
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`THE GOOD CAUSE FACTORS FAVOR GRANTING LEAVE
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`Each of the good cause factors favors granting Samsung leave to amend under Rule 16(b).
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`Samsung Has Been Diligent: In faulting Samsung for not pleading issue preclusion in its
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`Answers filed in May and June 2023 (Opp. at 8), AGIS ignores that diligence is measured from
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`the date of the intervening development that precipitates the request for leave. E.g., Script Security
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`Sol., LLC v. Amazon.com, Inc., 2016 WL 5916627, at *3-5 (E.D. Tex. Oct. 11, 2016). Here, the
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`1 If the Court finds this Motion premature before the NDCA court issues a final judgment, Samsung
`requests denial without prejudice to renew the Motion when final judgment issues. Samsung has
`filed its Motion now, to avoid delay while waiting for the NDCA court’s decision on Google’s
`opposed Rule 54(b) motion.
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`1
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 5 of 11 PageID #: 14779
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`NDCA did not issue its SJ Order finding non-infringement until October 10, months after those
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`Answers. See Mot., Ex. D. Indeed, FMD was not even part of this case until the Court granted
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`AGIS’s motion for leave to add it on August 24. Dkt. 115. Thus, the possibility of adding issue
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`preclusion did not exist in May or June, or at any point before the June 16 deadline for amending
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`pleadings. And the intervening development needed to amend the answer—a final judgment based
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`on the SJ Order—has not yet even occurred. Samsung’s Motion is therefore timely.
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`The Amendment Is Important: While for the diligence factor, AGIS argues this Motion
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`is too late, it simultaneously argues that the Motion is premature for the importance factor. AGIS
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`contends that it is premature because the NDCA’s “SJ Order … has no preclusive effect absent a
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`final judgment.” Opp. at 9 (citing TQ Delta, LLC v. CommScope Holding Co., 2023 WL 2145502,
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`at *7 (E.D. Tex. Feb. 21, 2023)). But Samsung’s Motion acknowledges that final judgment has
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`yet to issue and is necessary for issue preclusion to attach, which is why Samsung made this Motion
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`contingent on entry of the final judgment. Mot. at 1, 5-6. As AGIS again ignores, Google has a
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`pending Rule 54(b) motion for final judgment to create an appealable order and briefing on that
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`motion completed last week, with a decision expected soon.
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`Dismissing as “speculative” Samsung’s concern that it may be unable to raise the collateral
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`estoppel defense later in this case, AGIS implies Samsung need not amend its Answer to assert
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`collateral estoppel “[i]f the SJ Order is affirmed on appeal.” Opp. at 9. AGIS is wrong. The Fifth
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`Circuit has squarely held that “res judicata[] … is an affirmative defense which if not pled is
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`considered waived.” Mozingo v. Correct Mfg. Corp., 752 F.2d 168, 172 (5th Cir. 1985).2 Further,
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`2 The Colida v. Qualcomm Inc. case cited by AGIS does not suggest otherwise. 128 F. App’x 765,
`766 (Fed. Cir. 2005). The issue in Colida was not the waivability of the collateral estoppel defense.
`Rather it was a straightforward application of the defense. There, the Federal Circuit held that
`Colida was collaterally estopped from re-litigating an issue that it had presented in a prior appeal
`against a different party and lost. Id.
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`2
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 6 of 11 PageID #: 14780
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`AGIS’s suggestion that Samsung wait for the SJ Order to be “affirmed on appeal” is impractical,
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`given that any appeal would take about a year to conclude, long after summary judgment motions
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`and trial in this case, which are set for April and July 2024, respectively. Dkt. 121 at 1, 3. To file
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`a dispositive motion based on issue preclusion, Samsung first requires leave from this Court to
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`amend its Answer to plead that defense, as is sought in this Motion.
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`AGIS Is Not Prejudiced: No discovery is necessary and no prejudice will result from
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`granting leave because issue preclusion presents a purely legal issue and the same facts underlying
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`AGIS’s allegations as to the “sending data” limitation of the ’838 Patent claims have already been
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`adjudicated in the NDCA. AGIS presents a red herring that discovery is needed to verify if the
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`Samsung devices and alleged “new version” of FMD accused in this case present different issues.
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`As Samsung has explained in another briefing, the “new version of FMD” is materially the same
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`as the FMD accused in the NDCA case, and AGIS has no basis to contend otherwise. Dkts. 125,
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`136. Critically, AGIS does not dispute that its own contentions for the “sending data” limitation
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`are the same in this case as its contentions in the NDCA. See Mot. at 4; Ex. F at 40-46. While
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`AGIS criticizes Samsung for citing “exemplary screenshots” to demonstrate this similarity, the
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`only accused FMD functionality for the “sending data” limitation is FMD’s user interface, which
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`is fully described by such screenshots and unchanged from the NDCA case. See Mot. at 4.
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`A Continuance is Unnecessary: AGIS’s suggestion that Samsung needs a continuance
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`through the August 2025 trial date in NDCA, and any subsequent appeal, is flatly wrong. Google
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`has requested a Rule 54(b) judgment, which will be decided soon, precisely to eliminate any need
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`to wait until August 2025 to obtain a judgment. Preclusion will immediately attach to a final
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`judgment from the NDCA, without needing to wait for any appeal. See Langley v. Prince, 926
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`F.3d 145, 164 (5th Cir. 2019); Stevens v. St. Tammany, 17 F.4th 563, 571 (5th Cir. 2021).
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`3
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 7 of 11 PageID #: 14781
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`II.
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`THE PROPOSED AMENDMENT IS NOT FUTILE
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`AGIS does not contest that under Rule 15(a), leave to amend must be freely given and that
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`there is no undue delay or bad faith in Samsung’s amendment. Dkt. 158 at 5. AGIS instead rehashes
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`its same arguments from the good cause factors under the guise of “futility”—(1) the SJ Order is
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`not a final judgment giving rise to preclusion; and (2) differences exist between the accused Google
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`and Samsung devices and FMD versions. These arguments fare no better under Rule 15.
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`Google Is Seeking Final Judgment: AGIS goes to great lengths to show that summary
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`judgment orders are not entitled to preclusive effect. Samsung acknowledges that a final judgment
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`is required for preclusive effect and has yet to issue. Mot. at 1. But as Samsung has also explained,
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`Google has moved for final judgment under Rule 54(b) in the NDCA, with a decision expected
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`soon, and this Motion is contingent on the issuance of a final judgment in the NDCA. Id.
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`AGIS also misstates the law, arguing that “[e]ven if the NDCA grants non-party Google’s
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`motion for entry of partial final judgment under Fed. R. Civ. P. 54(b) as to non-infringement of
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`the ’838 Patent, such order has no res judicata or collateral estoppel effect because ‘such an appeal
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`would be interlocutory and such has no preclusive effect.’” Opp. at 12-13 (quoting TQ Delta,
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`2023 WL 2145502, at *7). But the Fifth Circuit has held that Rule 54(b) judgments are final and
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`immediately appealable. Meadaa v. K.A.P. Enters., L.L.C., 756 F.3d 875, 879 (5th Cir. 2014). In
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`arguing otherwise, AGIS misapplies TQ Delta, ignoring that the case involved a prior summary
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`judgment order—not a final judgment—which the court held was not entitled to preclusive effect
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`because it was “not yet final” and “not yet appealable.” 2023 WL 2145502 at *5-6. Thus, if the
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`NDCA issues partial judgment under Rule 54(b), that judgment will be entitled to preclusive effect.
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`No Material Changes To FMD: As in its prior briefs (Dkts. 128, 132, 144), AGIS
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`continues to mislead by suggesting that there are differences in FMD’s operation on Samsung
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 8 of 11 PageID #: 14782
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`versus Google devices, or that there are materially different FMD versions. But AGIS does not
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`identify—and has never identified—any differences material to infringement.
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`FMD operates the same way on all Android devices capable of running FMD software,
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`including Samsung and Google devices. Dkt. 118 at 3-4. While AGIS vaguely asserts that some
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`“Samsung hardware components satisfy numerous claimed limitations” (Opp. at 15), the alleged
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`hardware elements recited in the ’838 Patent claims are generic features like a “display” or the
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`“device” itself. See Mot., Ex. F at 2-45. These generic hardware features must merely exist to
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`support FMD’s operation and are not unique to Samsung devices. For the “sending data” limitation
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`specifically, the relevant FMD functionality—i.e., FMD’s user interface—is exactly the same on
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`Google and Samsung phones, and AGIS has never argued otherwise, including in its opposition to
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`this Motion. If the “sending data” limitation is not satisfied by FMD on Google devices, as the SJ
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`Order found, this limitation is not satisfied on Samsung devices for the same reasons.
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`AGIS has likewise never identified any material differences between the alleged “old” and
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`“new” FMD versions. The Motion includes screenshots of the FMD user interface for “old” and
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`“new” versions that are accused for the “sending data” limitation in AGIS’s infringement
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`contentions. See Mot. at 4. FMD’s interface has scarcely changed at all, let alone in a way that
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`is material to infringement or the “sending data” limitation. Thus, AGIS’s cited authority—
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`holding that preclusion applies when accused devices in different cases are “essentially the same”
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`and any differences are “unrelated to the limitations of the claim”—is directly applicable here. See
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`Opp. at 14-15 (citing Arcelor Mittal Allantique et Lorraine v. AK Steel Corp., 908 F.3d 1267, 1274
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`(Fed. Cir. 2018)). Because the accused FMD functionality for the “sending data” limitation is the
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`same, the SJ Order’s finding of non-infringement as to FMD for the ’838 Patent applies equally
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`here. Accordingly, Samsung’s Motion for leave to plead issue preclusion should be granted.
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 9 of 11 PageID #: 14783
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`Dated: December 8, 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
`
`6
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`Case 2:22-cv-00263-JRG-RSP Document 159 Filed 12/08/23 Page 10 of 11 PageID #:
`14784
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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 159 Filed 12/08/23 Page 11 of 11 PageID #:
`14785
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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: December 8, 2023
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` /s/ Melissa R. Smith
`Melissa R. Smith
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`8
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