Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 1 of 20 PageID #: 1371
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`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No. 2:22-cv-00263-JRG-RSP
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE
`IN OPPOSITION TO DEFENDANTS’ PARTIAL MOTION TO DISMISS
`PLAINTIFF’S AMENDED COMPLAINT UNDER RULE 12(B)(6) (DKT. 39)
`
`
`
`
`v.
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`Defendants.
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`
`
`
`
`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 2 of 20 PageID #: 1372
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`
`I.
`
`II.
`
`III.
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`TABLE OF CONTENTS
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`Page(s)
`
`BACKGROUND ................................................................................................................ 1
`
`BACKGROUND ................................................................................................................ 3
`
`LEGAL STANDARD ......................................................................................................... 4
`
`A.
`
`B.
`
`C.
`
`Rule 12(b)(6) ........................................................................................................... 4
`
`28 U.S.C. § 1498(a) ................................................................................................ 5
`
`Claim Splitting ........................................................................................................ 5
`
`IV.
`
`ARGUMENT ...................................................................................................................... 6
`
`A.
`
`B.
`
`Samsung Has Not Met its Burden to Show 28 U.S.C. § 1498(a) Applies .............. 7
`
`Samsung Has Not Met its Burden to Show AGIS’s Claims are Barred for
`Claim Splitting ...................................................................................................... 12
`
`CONCLUSION ................................................................................................................. 14
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`V.
`
`
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 3 of 20 PageID #: 1373
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Acumed LLC v. Stryker Corp.,
`525 F.3d 1319 (Fed. Cir. 2008)........................................................................................5, 6, 13
`
`Advanced Software Design Corp. v. Fed. Rsrv. Bank of St. Louis,
`583 F.3d 1371 (Fed. Cir. 2009)............................................................................................9, 10
`
`AGIS Software Dev. LLC v. Samsung Elec. Co.,
`No. 2:19-cv-00362-JRG, Dkt. 1 (E.D. Tex. Nov 4, 2019) .....................................................3, 4
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................4
`
`Avago Techs. Gen. IP (Singapore) PTE Ltd. v. Asustek Comput., Inc.,
`No. 15-cv-04525-EMC, 2016 WL 1623920 (N.D. Cal. Apr. 25, 2016) ....................................6
`
`Collins v. Morgan Stanley Dean Witter,
`224 F.3d 496 (5th Cir. 2000) .....................................................................................................5
`
`Foster v. Hallco Mfg. Co., Inc.,
`947 F.2d 469 (Fed. Cir. 1991)....................................................................................................6
`
`Fujitsu Ltd. v. Tellabs Operations, Inc.,
`No. 12 C 3229, 2013 WL 361810 (N.D. Ill. Jan. 30, 2013) ..................................................5, 6
`
`Gillig v. Nike, Inc.,
`602 F.3d 1354 (Fed. Cir. 2010)................................................................................................12
`
`In re Google LLC,
`No. 2022-0126, Dkt. 2-1 (Fed. Cir. Feb. 23, 2022) ...................................................................3
`
`In re Google LLC,
`No. 2022-0140, Dkt. 2-1 (Fed. Cir. Apr. 4, 2022) ...............................................................3, 12
`
`Hallco Mfg. Co. v. Foster,
`256 F.3d 1290 (Fed. Cir. 2001)......................................................................................6, 12, 14
`
`IRIS Corp. v. Japan Airlines Corp.,
`769 F.3d 1359 (Fed. Cir. 2014)..................................................................................................9
`
`Larson v. United States,
`26 Cl. Ct. 365 (1992) .................................................................................................................9
`
`ii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 4 of 20 PageID #: 1374
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`McZeal v. Sprint Nextel Corp.,
`501 F.3d 1354 (Fed. Cir. 2007)..................................................................................................5
`
`Nalco Co. v. Chem-Mod, LLC,
`883 F.3d 1337 (Fed. Cir. 2018)..............................................................................................4, 5
`
`In re PersonalWeb Techs. LLC,
`961 F.3d 1365 (Fed. Cir. 2020)................................................................................................13
`
`Riles v. Amerada Hess Corp.,
`999 F. Supp. 938 (S.D. Tex. 1998) ................................................................................9, 10, 11
`
`Sevenson Env’t Servs., Inc. v. Shaw Env’t, Inc.,
`477 F.3d 1361 (Fed. Cir. 2007)..................................................................................................9
`
`Va. Panel Corp. v. MAC Panel Co.,
`133 F.3d 860 (Fed. Cir. 1997)....................................................................................................5
`
`In re Waze Mobile Ltd.,
`No. 2022-141, Dkt. 7 (Fed. Cir. May 23, 2022) ........................................................................4
`
`Xiaohua Huang v. Huawei Techs. Co.,
`787 F. App’x 723 (Fed. Cir. 2019) ..........................................................................................14
`
`Statutes
`
`28 U.S.C. § 1498(a) ............................................................................................................... passim
`
`Other Authorities
`
`Fed. R. Civ. P. 12(b)(6)....................................................................................................................4
`
`
`iii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 5 of 20 PageID #: 1375
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
`
`undersigned counsel, hereby submits this response in opposition to Defendants Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc.’s (collectively, “Samsung” or
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`“Defendants”) Partial Motion to Dismiss Plaintiff’s Amended Complaint Under Rule 12(b)(6)
`
`(Dkt. 39) (the “Motion”).
`
`I.
`
`BACKGROUND
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`Samsung requests partial dismissal of AGIS’s claims for patent infringement on two
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`grounds: (1) because the TAK apps are allegedly “developed and [] maintained by the United
`
`States Government, not Samsung,” and (2) because AGIS has allegedly engaged in improper claim
`
`splitting. Mot. At 1-2. Samsung’s arguments are without merit.
`
`First, Samsung’s request for relief is premature because it is directed to a defense that
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`would operate as a limitation on damages. Among other accusations, AGIS has alleged
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`infringement by Samsung’s acts concerning Samsung Knox and situational awareness and location
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`sharing features of Samsung Tactical, TAK, ATAK, and CivTAK. Samsung has not established
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`that the Samsung Accused Products are developed exclusively “for the Government” and with the
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`authorization and consent of the Government. Accordingly, the “exclusive remedy” is not against
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`the U.S. Government in the United States Court of Federal Claims. As shown below, Samsung
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`must establish that it is entitled to summary judgment on its 28 U.S.C. § 1498(a) claims and it has
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`failed to do so. Samsung fails to point to any explicit authorization, a contract executed between
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`Samsung and the U.S. Government, or any authorization or consent clause which would indicate
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`that the Samsung Accused Products are exclusively developed for the Government and with the
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`authorization and consent of the Government. Months before Samsung filed this Motion, AGIS
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`informed Samsung’s counsel of the correct case law and the fact that Samsung’s own website
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`offers the Accused Products to non-Government entities. Samsung’s disregard for well-established
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 6 of 20 PageID #: 1376
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`case law and its own public offerings renders this Motion frivolous, and AGIS reserves all rights
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`to seek fees and expenses in connection with this Motion.
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`Second, Samsung’s allegations of claim splitting are without merit because Samsung
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`mischaracterizes the allegations of infringement against Samsung. The Court should deny
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`Samsung’s Motion because the instant AGIS-Samsung II case does not involve the same cause of
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`action and no claims are “essentially the same” as compared to the claims presented in the AGIS-
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`Samsung I and AGIS ITC litigations. 1 These cases involve different accused functionalities,
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`different accused products, and additional patents. For example, the instant AGIS-Samsung II case
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`involves the Samsung Knox and Tactical applications and software, as well as non-Google
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`situational awareness applications. AGIS-Samsung II does not involve any Google applications or
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`Google software.
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`AGIS-Samsung II cannot involve “essentially the same” claims presented in AGIS-
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`Samsung I and AGIS ITC litigations because those prior litigations concern Google applications.
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`Samsung admitted so in its repeated attempts to transfer AGIS-Samsung I to the Northern District
`
`of California (“NDCA”). For example, in its motion to transfer, Samsung represented to this Court
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`that the issues centered around “the Accused Google Applications” which included the Google
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`Maps for Mobile and Google Find My Device applications. See AGIS-Samsung I, Dkt. 46 at 2
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`(E.D. Tex. Mar. 9, 2020). In its petition for a writ of mandamus to direct this Court to stay the
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`AGIS-Samsung I case, Samsung represented to the Federal Circuit that “AGIS’s allegations of
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`infringement against Samsung center around the same Accused Google Applications [Google
`
`
`1 Hereinafter, “AGIS-Samsung I” refers to AGIS Software Dev. LLC v. Google LLC, No. 2:19-cv-
`00361-JRG (E.D. Tex.),”AGIS-Samsung II” refers to AGIS Software Dev. LLC v. Samsung Elecs.
`Co., Ltd., No. 2:22-cv-0263-JRG (E.D. Tex.), and “AGIS ITC” refers to In re Certain Location-
`Sharing Systems, Related Software, Components Thereof, and Products Containing Same, No.
`337-TA-1347 (USITC).
`
`2
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 7 of 20 PageID #: 1377
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`Maps and Find My Device], as well as Samsung’s own Find My Mobile application.” Ex. 1, In re
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`Google LLC, No. 2022-0126, Dkt. 2-1 at 23 (Fed. Cir. Feb. 23, 2022). In its successful petition for
`
`a writ of mandamus to vacate this Court’s Order denying transfer and to transfer to NDCA,
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`Samsung represented to the Federal Circuit that “the accused products in the Samsung case are,
`
`after all, Google products.” Ex. 2, In re Google LLC, No. 2022-0140, Dkt. 2-1 (Fed. Cir. Apr. 4,
`
`2022).
`
`Furthermore, despite discovery requests to identify accused products and applications in
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`AGIS I, Samsung at no point identified Samsung Knox (or Samsung Tactical, TAK, ATAK, and
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`CivTAK applications and features) as accused products or as containing infringing technology or
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`features. To allow Samsung to now attempt to dismiss AGIS’s claims against Samsung Knox
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`would set a precedent to permit Samsung to evade its disclosure obligations and would be
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`prejudicial against AGIS.
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`Accordingly, AGIS respectfully requests that the Court deny Samsung’s Motion in its
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`entirety.
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`II.
`
`BACKGROUND
`
`AGIS filed suit against Defendants on November 4, 2019, alleging infringement of U.S.
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`Patent Nos. 9,820,123 (the “’123 Patent”) and 9,749,829 (the “’829 Patent”) by Samsung. See
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`AGIS Software Dev. LLC v. Samsung Elec. Co., No. 2:19-cv-00362-JRG, Dkt. 1 (E.D. Tex. Nov
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`4, 2019) (“AGIS I”). Samsung stated that “AGIS’s specific allegations of infringement center
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`around the Location Sharing feature of Google Maps for Mobile (‘GMM’), in conjunction with
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`text messaging functionality found within other applications” and “Find My Device.” AGIS-
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`Samsung I, Dkt. 46 at 2. Samsung also stated that “GMM, Android Messages, Google Plus, Google
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`Handouts, and Find My Device (collectively, the ‘Accused Google Applications’) are all
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`applications designed and developed by Google.” Id. Samsung filed a motion to transfer to the
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`3
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 8 of 20 PageID #: 1378
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`NDCA which was subsequently denied by this Court on March 21, 2022. AGIS I, Dkt. 73 (E.D.
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`Tex. Mar. 21, 2022). Samsung submitted a petition for writ of mandamus of the District Court’s
`
`denial of Samsung’s motion to transfer. Id. Dkt. 113 (E.D. Tex. Apr. 4, 2022). The Federal Circuit
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`granted Samsung’s mandamus petition on May 23, 2022. See Ex. 3, In re Waze Mobile Ltd., No.
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`2022-141, Dkt. 7 (Fed. Cir. May 23, 2022).
`
`AGIS filed the present action against Samsung on July 14, 2022, alleging infringement of
`
`the ’123 and ’829 Patents, in addition to U.S. Patent Nos. 8,213,970 (the “’970 Patent”) and
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`9,467,838 (the “’838 Patent”) (collectively, the “Asserted Patents”). AGIS-Samsung II, Dkt. 1
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`(E.D. Tex. July 14, 2022). The original complaint alleged infringement by Samsung of the
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`“Samsung Tactical, TAK, ATAK, and CivTAK applications, products, and solutions, which also
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`include related servers and services for supporting Samsung Tactical, TAK, ATAK, and CivTAK.”
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`Id., ¶ 16. AGIS amended the complaint on December 5, 2022 to include the Samsung Knox
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`application, products, and solutions, including related servers and services for Samsung Knox.
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`AGIS-Samsung II, Dkt. 29 (E.D. Tex. Dec. 5, 2022).
`
`III. LEGAL STANDARD
`
`A.
`
`Rule 12(b)(6)
`
`Pursuant to Rule 12(b)(6), a defendant may move to dismiss a complaint for “failure to
`
`state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). To survive a motion to
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`dismiss under Rule 12(b)(6), a complaint must “contain sufficient factual matter, accepted as true,
`
`to ‘state a claim to relief that is plausible on its face.’” Nalco Co. v. Chem-Mod, LLC, 883 F.3d
`
`1337, 1347 (Fed. Cir. 2018) (citing Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). To meet this
`
`requirement, the plaintiff must plead “factual content that allows the court to draw the reasonable
`
`inference that the defendant is liable for the misconduct alleged.” Id. When ruling on a motion to
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`dismiss under Rule 12(b)(6), the court accepts all well-pleaded factual allegations as true and
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 9 of 20 PageID #: 1379
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`construes all reasonable inferences in favor of the plaintiff. Id. A motion to dismiss under Rule
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`12(b)(6) “is viewed with disfavor and is rarely granted.” Collins v. Morgan Stanley Dean Witter,
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`224 F.3d 496, 498 (5th Cir. 2000). To state a claim for patent infringement, “a patentee need only
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`plead facts sufficient to place the alleged infringer on notice as to what he must defend.” McZeal
`
`v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007).
`
`B.
`
`28 U.S.C. § 1498(a)
`
`Section 1498(a) provides, in part:
`
`Whenever an invention described in and covered by a patent of the
`United States is used or manufactured by or for the United States
`without license of the owner thereof or lawful right to use or
`manufacture the same, the owner’s remedy shall be by action against
`the United States in the United States Court of Federal Claims for
`the recovery of his reasonable and entire compensation for such use
`and manufacture. . . .
`
`For the purposes of this section, the use or manufacture of an
`invention described in and covered by a patent of the United States
`by a contractor, a subcontractor, or any person, firm, or corporation
`for the Government and with the authorization or consent of the
`Government, shall be construed as use or manufacture for the United
`States.
`
`28 U.S.C. § 1498(a). While Section 1498(a) gives the United States Court of Federal Claims
`
`exclusive jurisdiction over patent infringement suits against the Government, it also provides “an
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`affirmative defense for applicable government contractors.” Va. Panel Corp. v. MAC Panel Co.,
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`133 F.3d 860, 869 (Fed. Cir. 1997).
`
`C.
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`Claim Splitting
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`“The bar against claim splitting is a form of res judicata.” Fujitsu Ltd. v. Tellabs
`
`Operations, Inc., No. 12 C 3229, 2013 WL 361810, *2 (N.D. Ill. Jan. 30, 2013). Under the doctrine
`
`of claim preclusion or res judicata, “a judgment on the merits in a prior suit bars a second suit
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`involving the same parties or their privies based on the same cause of action.” Acumed LLC v.
`
`5
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 10 of 20 PageID #: 1380
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`Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008). Claim splitting “basically applies the same
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`test” “except that, ‘[u]nlike traditional claim preclusion, . . . the bar against claim splitting can be
`
`applied before either action reaches a final judgment on the merits.” Avago Techs. Gen. IP
`
`(Singapore) PTE Ltd. v. Asustek Comput., Inc., No. 15-cv-04525-EMC, 2016 WL 1623920, at *2
`
`(N.D. Cal. Apr. 25, 2016) (citing Fujitsu, 2013 WL 361810, at *7). “Whether two claims for patent
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`infringement are identical is a claim preclusion issue that is ‘particular to patent law,’ and therefore
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`we analyze it under Federal Circuit law.” Acumed, 525 F.3d at 1323 (citing Hallco Mfg. Co. v.
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`Foster, 256 F.3d 1290, 1294 (Fed. Cir. 2001)).
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`Claim preclusion does not apply unless the accused device in the action before the court is
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`“essentially the same’ as the accused device in a prior action between the parties. See Foster v.
`
`Hallco Mfg. Co., Inc., 947 F.2d 469, 480 (Fed. Cir. 1991). “Colorable changes in an infringing
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`device or changes unrelated to the limitations in the claim of the patent would not present a new
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`cause of action.” Id. The party asserting claim preclusion has the burden of showing that the
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`accused devices are essentially the same. Id.
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`IV. ARGUMENT
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`Samsung attempts to dismiss AGIS’s Amended Complaint alleging that (1) any allegations
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`of infringement by the Samsung Accused Products regarding the TAK applications should have
`
`been brought against the United States Government in the Court of Federal Claims; and (2) AGIS’s
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`allegations of infringement against the ’829 and ’123 Patents should be barred for claim splitting.
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`As detailed below, Samsung has not demonstrated that the Samsung Accused Products are
`
`manufactured for the Government or with the authorization or consent of the Government.
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`Additionally, Samsung has not demonstrated that AGIS is improperly engaged in claim splitting
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`with respect to the Samsung Knox application and services.
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 11 of 20 PageID #: 1381
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`As a preliminary matter, Samsung attempts to rely on the applications and services, TAK,
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`ATAK, and Civ-TAK, in arguing that these claims should have been brought in the Court of
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`Federal Claims. In arguing for claim splitting, Samsung now relies on the Samsung devices, not
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`the application at issue—Samsung Knox. Samsung should not be permitted to distinguish the
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`Accused Products on these grounds, arguing against the TAK applications, on the one hand, and
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`the Samsung devices on the other, in an attempt to dismiss the claims in the Amended Complaint.
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`See Mot. at 12 (“Any argument from AGIS that AGIS I and AGIS II are not the same causes of
`
`action because they involve different apps or features of the same accused products is without
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`merit.”). Nonetheless, Samsung has failed to meet its burden to show that dismissal is warranted.
`
`A.
`
`Samsung Has Not Met its Burden to Show 28 U.S.C. § 1498(a) Applies
`
`Samsung has not met its burden to show 28 U.S.C. § 1498(a) applies to AGIS’s claims for
`
`patent infringement by the Samsung Accused Products. Samsung does not submit any evidence
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`that Samsung engages in infringing activities over the Samsung Accused Products, including the
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`Samsung Tactical, TAK, ATAK, and CivTAK applications, exclusively at the direction of the
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`Government or that it has received authorization or consent to manufacture the Samsung Accused
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`Products exclusively for the Government.
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`Section 1498(a) is an affirmative defense for which Samsung bears the burden to
`
`demonstrate. Samsung has failed to meet its burden. Samsung has not established that its infringing
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`activities are “for the Government” and that the U.S. Government has authorized or consented to
`
`the use. It is notable that Samsung does not submit any agreement or contract that Samsung has
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`executed with the U.S. Government for the Samsung Accused Products.
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`Instead, Samsung points to three documents that it alleges supports its claims. First,
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`Samsung points to a document titled “Department of Defense Instruction” which references
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`distribution statements on technical documents by the U.S. Department of Defense. See Mot. at 9.
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`7
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 12 of 20 PageID #: 1382
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`However, that the Amended Complaint refers to a graphic on the webpage, www.civtak.org, which
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`requires “U.S. Government approval . . . to distribute the information publicly” does not support
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`and has no association with Samsung’s argument that the Samsung Accused Products were
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`manufactured for the U.S. Government. Id. The Department of Defense Instruction appended as
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`Exhibit B to Samsung’s Motion merely establishes the procedures and framework by which
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`technical documents are marked and managed. See Dkt. 39-3 at 2.
`
`Second, Samsung relies on a document titled “Committee on National Security Systems
`
`(CNSS) Glossary” appended as Exhibit C to Samsung’s Motion. See Dkt. 39-4. Samsung argues
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`that this document provides the definition of a “Government off the shelf (GOTS)” product as a
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`“software and/or hardware product that is developed by the technical staff of a Government
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`organization for use by the U.S. Government.” Mot. at 10. Similarly, Samsung points to a webpage
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`for TAK, https://tak.gov/products” which states that the “TAK capability suite is a United States
`
`Government (USG) owned product.” Id. Each of these items ignores that commercial entities, such
`
`as Samsung, may develop TAK capability, including with Samsung plugins and TAK-compatible
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`services such as Samsung Tactical and Samsung Knox, either under agreement or at their own cost
`
`and without government oversight. See, e.g., Ex. 4, https://tak.gov/pages/our-process. Relevant to
`
`this case, Samsung has developed and distributed Samsung Accused Products for civilian use and
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`public safety agencies that are not “for the government” and that are not subject to government
`
`contract. See, e.g, Ex. 5, https://insights.samsung.com/2020/11/10/bernalillo-county-uses-atak-to-
`
`improve-search-and-rescue/; Ex. 6, https://insights.samsung.com/2021/09/01/atak-enhances-
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`collaboration-and-awareness-for-public-safety-2/; Ex. 7, https://insights.samsung.com/2019/12/
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`8
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 13 of 20 PageID #: 1383
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`02/corona-fire-department-improves-situational-awareness-with-atak/. There is no evidence of
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`record that the Government has authorized or consented to Samsung’s development and
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`manufacture of the Samsung Accused Products.
`
`In Advanced Software Design Corp. v. Fed. Rsrv. Bank of St. Louis, 583 F.3d 1371, 1375
`
`(Fed. Cir. 2009), the Federal Circuit interpreted the term “for the government” to mean the
`
`government derives a benefit from the use or manufacture of the patented technology. The patented
`
`technology must be used “in furtherance and fulfillment of a stated Government policy,” which
`
`would serve the government’s interest, for the government’s benefit. See IRIS Corp. v. Japan
`
`Airlines Corp., 769 F.3d 1359, 1362 (Fed. Cir. 2014). However, if the government simply has an
`
`“interest in the program generally, or funds or reimburses all or part of its costs,” that interest is
`
`too remote to support a finding of a government benefit. Larson v. United States, 26 Cl. Ct. 365,
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`369 (1992). Accordingly, a mere interest by the government or funding of an infringing activity
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`does not establish that this activity is “for the government” within the meaning of § 1498(a).
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`Here, Samsung can point to no benefit derived by the Government for the use or
`
`manufacture of the patented technology. Samsung points to no furtherance or fulfillment of a stated
`
`Government policy through the Samsung Accused Products. Samsung does not allege that it is a
`
`Government contractor, that it was acting pursuant to a government contract, or that it was acting
`
`for the benefit of the Government. Cf. Sevenson Env’t Servs., Inc. v. Shaw Env’t, Inc., 477 F.3d
`
`1361, 1366 (Fed. Cir. 2007). “[I]n determining whether the use of a patented invention is for the
`
`Government’s benefit, the Court must look at the purpose of the action.” Riles v. Amerada Hess
`
`Corp., 999 F. Supp. 938, 940 (S.D. Tex. 1998). Samsung does not argue that that “the purpose of
`
`Defendant’s actions was to further Government interests.” Id. “In addition, the Court may also
`
`look to whether the United States has an actual interest in the type of device selected to be used or
`
`9
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`

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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 14 of 20 PageID #: 1384
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`manufactured for the Government.” Id. Here, there is no evidence to suggest that Samsung is
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`required to manufacture the Samsung Accused Products in a certain manner, nor does the
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`Government require or conditional approve of manufacture on particular procedures. See id. (“The
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`Government simply makes the land available and receives a royalty for doing so.”).
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`Samsung also fails to show any authorization or consent by the Government regarding the
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`manufacture of the Samsung Accused Products. In Advanced Software, the Federal Circuit held
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`that, despite no explicit written “authorization or consent,” the Treasury had agreed to “participate
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`with the Reserve Banks in testing and then in using the Fiserv system and software constituted
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`authorization or consent to use the technology and accept liability for patent infringement if such
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`should be present” where the Treasury corresponded with the Reserve Banks, and unequivocal
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`statements on behalf of the Treasury regarding the use of this technology. 583 F.3d at 1376. Here,
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`Samsung does not point to any explicit written authorization or consent, any correspondence, or
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`any statements regarding the TAK suite for the Samsung Accused Products.
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`For example, Samsung discloses that the Samsung Galaxy S20 Tactical Edition “combines
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`proven hardware with an open and secure Android operating system to enable a diverse ecosystem
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`of tactical partners.” See Ex. 8. While Samsung points to several third-parties that work with the
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`Government, it does not point to the U.S. Government as a “tactical partner” in offering the
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`Samsung Accused Products:
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`10
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 15 of 20 PageID #: 1385
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`Id.; see also Ex. 9 (“We are a people-centric, technology enabled, mission focused company
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`recognized for delivering innovative solutions that support and defend the U.S. Government and
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`her allies.”); Ex. 10 (“Viasat is a global communications company that believes everyone and
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`everything can be connected.”); Ex. 11 (“iGov’s mission is to provide mission-centric solutions
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`for our Federal customers.”). Samsung also states that the Galaxy S20 Tactical Edition is a
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`“powerful military smartphone built for operators in the defense sectors,” and that its military
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`smartphone is” enabled for use in classified communications,” but does not state that the Samsung
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`Accused Products are manufactured exclusively for or at the direction of the U.S. Government.
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`See Ex. 12, Samsung S20 Tactical Edition Brochure; Ex. 8, Military Smartphone.
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`Ҥ1498(a) stands for the more limited proposition waiving immunity for third-party
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`infringements that are actually done for the United States Government, and of course, authorized
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`or consented to by the Government.” Riles, 999 F. Supp. at 941 (emphasis added). Samsung has
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`failed to demonstrate that the acts of infringement by Samsung were “actually done” for the U.S.
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`Government, or authorized, or consented to by the Government. Accordingly, Samsung has not
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`met its burden to establish its affirmative defense under Section 1498(a). In fact, Samsung’s public
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`11
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 16 of 20 PageID #: 1386
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`statements demonstrate the existence of acts of infringement (including manufactures, tests, uses,
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`sales, and offers for sale) with respect to the Samsung Accused Products that were expressly done
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`for non-Federal Government customers such as civilians, local departments, and public safety
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`organizations. See, e.g., Ex. 5-7. Partial dismissal at this early pre-discovery stage would be
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`premature, contrary to law, and highly prejudicial to AGIS.
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`B.
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`Samsung Has Not Met its Burden to Show AGIS’s Claims are Barred for
`Claim Splitting
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`Samsung has failed to meet its burden to show that AGIS’s claims against the Samsung
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`Accused Products and Samsung Knox are barred for claim splitting. Samsung relies on its assertion
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`that because certain Samsung devices were accused in AGIS I and the present action, that the
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`products were already at issue. However, “[i]n this discussion of claim preclusion, unless the
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`context indicates otherwise, the unmodified word ‘claim’ is synonymous with ‘cause of action.’”
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`Hallco, 256 F.3d at 1294.
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`Samsung incorrectly characterizes the causes of action as infringement merely of
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`“Samsung’s Galaxy Devices.” However, a cause of action is defined as the “transactional facts
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`from which it arises, and we consider the extent of the factual overlap between the two alleged
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`claims at issue.” Gillig v. Nike, Inc., 602 F.3d 1354, 1363 (Fed. Cir. 2010). Here, the alleged claims
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`at issue differ where the Accused Products differ. Specifically, AGIS I involved allegations of
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`infringement of the Google applications. Ex. 2, In re Google LLC, No. 2022-0140, Dkt. 2-1 at 26
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`(Fed. Cir. Apr. 4, 2022) (Samsung representing that “the accused products in the Samsung case
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`are, after all, Google products.”). In this case, AGIS’s discovery requests expressly define the
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`Accused Products as excluding the Google applications accused before the NDCA and ITC. Ex.
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`13, AGIS’s First Set of Interrogatories to Defendants at 4 (“For the avoidance of doubt, the term
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`“Accused Products” does not include the Google Find My Device application, the Samsung Find
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`12
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`Case 2:22-cv-00263-JRG-RSP Document 42 Filed 01/10/23 Page 17 of 20 PageID #: 1387
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`My Mobile application, and the Google Maps Mobile application with Share Location feature.”).
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`The present action alleges infringement of the ’829, ’123, ’970, and ’838 Patents by a different set
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`of non-Google applications, including Samsung Knox, Samsung Tactical, TAK, ATAK, and
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`CivTAK.
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`Samsung’s misrepresents the Federal Circuit’s holding in PersonalWeb in arguing claim
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`preclusion applies where the same devices are at issue. This is incorrect. The Federal Circuit stated
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`that “[c]laim preclusion does not apply unless the products or processes are essentially the same.”
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`In re PersonalWeb Techs. LLC, 961 F.3d 1365, 1375 (Fed. Cir. 2020) (emphasis added). In
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`PersonalWeb, the Texas case “accused only the multipart upload functionality of Amazon’s S3
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`system” where the California cases involved “the ‘cache control’ functionality.” Id. Samsung
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`omits that PersonalWeb conceded that “’the conditional GET commands’ that are at issue in the
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`customer cases were identified in the infringement contentions in the Texas case.” Id. at 1376.
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`Further, the Federal Circuit held that PersonalWeb did not limit its infringement contentions in the
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`Texas case to the “multipart upload functionality.” Id. PersonalWeb “accused the use of
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`‘conditional operations’ in the Texas case.” Id. Accordingly, the Federal Circuit found that the
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`“complaints in the customer cases and the complaint in the Texas case relate to the same set of
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`transactions.”