Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 1 of 10 PageID #: 1626
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
`
`
`
`v.
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` Civil Action No. 2:22-cv-00263-JRG-RSP
`
`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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`REPLY IN SUPPORT OF DEFENDANTS’ MOTION TO STAY
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`

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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 2 of 10 PageID #: 1627
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 2
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`A. A Stay Is Warranted Under 28 U.S.C. § 1659(a) Because the Issues Are the Same .... 2
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`B. Alternatively, All Three Factors Weigh in Favor of a Discretionary Stay ................... 3
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`III.
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`CONCLUSION ................................................................................................................... 5
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`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 3 of 10 PageID #: 1628
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Connectel, LLC v. Cisco Systems, Inc.,
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`391 F. Supp. 526, 528 (E.D. Tex. 2005) ...................................................................................4
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`Saxon Innovations, LLC v. Palm, Inc.,
`Case No. 6:09-CV-272, 2009 WL 3755041 (E.D. Tex. Nov. 4, 2009) .....................................3
`
`SSL Servs., LLC v. Cisco Sys., Inc.,
`Case No. 2:15-CV-433-JRG-RSP, 2016 WL 3523871 (E.D. Tex. June 28, 2016) ...................5
`
`Zenith Electronics LLC v. Sony Corp.,
`C 11–02439 WHA, 2011 WL 2982377 (N.D. Cal. July 22, 2011) ................................................4
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`STATUTES
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`28 U.S.C. § 1659(a) .........................................................................................................1, 2, 3, 4, 5
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`OTHER AUTHORITIES
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`H.R. Rep. No. 103-826(I), as reprinted in 1994 U.S.C.C.A.N. 3773..........................................1, 4
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`ii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 4 of 10 PageID #: 1629
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`I.
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`INTRODUCTION
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`AGIS’s opposition to Samsung’s stay motion ignores the extensive overlap of issues
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`among AGIS’s ITC and district court lawsuits against Samsung and seeks to undermine the judicial
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`efficiency and fairness that 28 U.S.C. § 1659(a) was enacted to protect. The purpose behind §
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`1659(a) is to avoid exactly what AGIS is doing here—forcing Samsung to address different
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`infringement proceedings against the same “imported goods in two forums at the same time.” H.R.
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`Rep. No. 103-826(I), at 140, as reprinted in 1994 U.S.C.C.A.N. 3773. Samsung is currently
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`defending allegations from AGIS in three different jurisdictions, with the same four patents and
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`same accused products at issue in both the ITC and in this case.1 The manifest judicial inefficiency
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`caused by AGIS’s calculated campaign of harassment warrants a stay in this case.
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`First, a stay is mandatory because all the requirements under § 1659(a) are met, including
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`that the ITC case and this case involve the same patents and same accused products. AGIS’s
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`attempt to portray the two cases as relating to mutually exclusive allegedly infringing applications
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`and features is misleading and ignores the large net that AGIS casts with its infringement
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`allegations in each complaint. Second, even if a stay is not mandatory, AGIS’s assertion of
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`multiple infringement actions for the same patents against the same defendants and same products
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`is an unnecessary waste of judicial and party resources. AGIS has identified no prejudice that
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`would be caused by granting a stay of this early-stage case, and simplification of many, if not all,
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`of the key issues in this case after a stay is unrefuted. Thus, all of the factors this Court weighs
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`when deciding whether to enter a stay favor entry of one here.
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`1The three pending matters are (1) AGIS Software Dev. LLC v. Google LLC, No. 5-22-cv-04825
`(N.D. Cal) (formerly No. 2:19-cv-00361-JRG (E.D. Tex.)) (“AGIS I”); (2) this case (“AGIS II”),
`and (3) In re Certain Location-Sharing Systems, Related Software, Components Thereof, and
`Products Containing Same, No.337-TA-1347 (USITC) (“the ITC case”). Samsung intends to seek
`a stay of AGIS I within the next few days. On January 12, 2023, AGIS was asked whether it would
`oppose a stay in the AGIS I case based on the ITC case. AGIS has not yet given its position.
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`

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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 5 of 10 PageID #: 1630
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`II.
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`ARGUMENT
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`A. A Stay Is Warranted Under 28 U.S.C. § 1659(a) Because the Issues Are the Same
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`AGIS does not dispute that Samsung is a respondent in the ITC Proceeding, that the same
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`four patents asserted here are also asserted in the ITC case, or that all 264 Samsung Galaxy devices
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`accused of infringement here are also accused of infringement in the ITC case. AGIS argues,
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`however, that a stay under 28 U.S.C. § 1659(a) is not mandated because the “specific infringement
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`allegations” in both cases are directed towards different applications that are supported by the
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`accused Samsung Galaxy devices, and thus, the issues are not completely the same. But AGIS’s
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`assurances regarding the focus of each case are inconsistent with what AGIS has pled.
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`AGIS argues that in this case the “specific infringement allegations are against the
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`Samsung Knox application and third-party applications like TAK” and in the ITC case “certain
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`Google apps and/or services” are at issue. AGIS Opp. to Mot. to Stay, ECF 41 (hereinafter “Opp.”)
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`at 6. However, as pointed out in Samsung’s motion, the Amended Complaint of this case accuses
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`Samsung Galaxy devices which include software “not limited to” those specific applications. E.g.,
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`Am. Compl., ¶ 16 (emphasis added). Similarly, AGIS’s allegations in the ITC case are not limited
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`to “Google applications or Google software.” Opp., 1,7. Instead, AGIS’s ITC Complaint states
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`that the specific applications identified in the ITC Complaint are “representative examples” of
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`applications on Samsung’s allegedly infringing Galaxy devices—the same Galaxy devices AGIS
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`accuses here.2 Tellingly, AGIS does not address this explicit language used in its pleadings. Thus,
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`the scope of this case and the ITC case, as pled by AGIS, are identical; both complaints assert the
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`same four patents against the same Galaxy devices, albeit with different exemplary applications
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`identified in each complaint. A stay under § 1659(a) is therefore appropriate.
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`2 The ITC Complaint lists 265 products, including all 264 products alleged to infringe in this
`case. See ITC Compl., Exhibit 1, ECF 40-2, ¶¶ 149, 150.
`2
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`AGIS’s recent discovery requests in this case that “expressly stated that the accused
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`products do not include the Google applications accused before the . . . ITC,” Opp., 2, are
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`irrelevant. The requests simply narrow AGIS’s discovery requests, not its pleadings. And even if
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`AGIS had narrowed the allegations in its pleadings in this case, AGIS’s allegations in the ITC
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`Complaint are broad enough to encompass those “narrowed” allegations. The requests are also
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`further evidence of AGIS’s gamesmanship. Recognizing that a stay under § 1659(a) was imminent
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`after receiving a request via email on December 21, 2022 to meet and confer on Samsung’s
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`forthcoming motion, AGIS served the discovery requests the next day. See AGIS Interrogs., ECF
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`41-4, at 26. AGIS’s attempt to change the scope of its pleadings in this case upon learning that
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`Samsung would seek a stay is, in effect, a conscious admission of guilt.
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`AGIS points to no case law to support its argument that the Court should not rely on AGIS’s
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`pleadings to determine if the issues in the two cases are the same. The facts of Saxon Innovations,
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`LLC v. Palm, Inc. are very different from those presented here. In Saxon, the patent asserted
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`against Palm, the defendant in the district court case, was asserted against other respondents at the
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`ITC, but not Palm. Case No. 6:09-CV-272, 2009 WL 3755041, at *2 (E.D. Tex. Nov. 4, 2009).
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`The court reasoned that the issues in the two cases were not the same because the ITC would not
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`consider defendant’s alleged infringement of the patent at issue in the district court or consider
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`defendant’s theories of invalidity on the patent. By contrast, here the ITC will consider Samsung’s
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`alleged infringement of the same four patents asserted against the same Galaxy devices and will
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`also consider Samsung’s theories of invalidity for those patents.
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`B.
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`Alternatively, All Three Factors Weigh in Favor of a Discretionary Stay
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`Even if the Court determines that the issues in the ITC case and AGIS II are not the same
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`for purposes of § 1659(a), “Congress explicitly intended that district courts should consider using
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`their discretionary power to stay patent infringement litigation that is related to, but not duplicative
`3
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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 7 of 10 PageID #: 1632
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`of, an action before the ITC.” Zenith Elecs. LLC v. Sony Corp., C 11–02439 WHA, 2011 WL
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`2982377, at *2 (N.D. Cal. July 22, 2011) (citing H.R. Rep. No. 103–826(I), at 141 (“[t]he district
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`court may use its discretionary authority to stay any other claims in the action before it”)). Here,
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`all three discretionary stay factors weigh in favor of a stay.
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`First, AGIS has identified no prejudice or tactical disadvantage that staying this case
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`presents. AGIS states only that this action will be delayed 19 months if a stay is granted. Opp.,
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`7. However, as Samsung explained in its motion, AGIS is not Samsung’s competitor and can be
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`fully compensated for any alleged harm by monetary damages to the extent any allegations remain
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`after the stay. Mot. to Stay, ECF 40, 8. Conversely, forcing Samsung to litigate the same patents
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`and many, if not all, of same issues in multiple jurisdictions is prejudicial to Samsung and
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`inconsistent with the legislative purpose of § 1659(a) which was “to address the possibility that
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`infringement proceedings may be brought against imported goods in two forums at the same time.”
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`H.R. Rep. No. 103-826(I), at 140. Moreover, to the extent AGIS could identify any prejudice, it
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`would have only itself to blame. AGIS “brought these circumstances on [itself] by filing its
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`complaint in the ITC [shortly] after filing the present suit. [AGIS] could have and should have
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`anticipated the possibility (if not the probability) of Defendants seeking to stay the non-ITC portion
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`of this case.” Black Hills Media, LLC v. Samsung Electronics Co., Ltd., Case No. 2:13-CV-00379-
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`JRG, 2014 WL 12951780, at *1 (E.D. Tex. Mar. 14, 2014).
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`The absence of prejudice to AGIS is further underscored by AGIS’s failure to explain why
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`it did not include the publicly known TAK and Knox features in the prior AGIS I case. See
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`Connectel, LLC v. Cisco Systems, Inc., 391 F. Supp. 526, 528 (E.D. Tex. 2005) (“Plaintiffs are
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`expected to rigorously analyze all publicly available information before bringing suit and must
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`explain with great detail their theories of infringement.”). AGIS instead argues that it is Samsung’s
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`4
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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 8 of 10 PageID #: 1633
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`fault because Samsung should have identified them in AGIS I. Opp., 7. Yet, in its opposition to
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`Samsung’s co-pending motion to dismiss for improper claim splitting, AGIS insists the AGIS I
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`accused apps and features are not “essentially the same” as those accused in AGIS II, and that
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`AGIS’s infringement theories are different. AGIS Opp. to Mot. to Dismiss, ECF 42, 13-14.
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`AGIS’s diametrically opposed positions in briefs filed just minutes apart further highlights AGIS’s
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`gamesmanship and abuse of the judicial process.
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`Second, a stay will undoubtedly simplify the issues. In AGIS’s opposition, AGIS argues
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`that there will be no simplification of issues because “the ITC will not consider any arguments
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`regarding the accused applications and services in the present action at the ITC.” Opp., 7.
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`However, even assuming the scope of the accused device features would ultimately be different in
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`this case and in the ITC, AGIS ignores that the allegations in both cases relate to the exact same
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`patents and the exact same products. Thus, there are many issues that would be considered by
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`both the ITC and this Court absent a stay, including claim construction, invalidity, inventorship,
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`development and marketing of the accused devices, and overlapping (if not identical) issues of
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`infringement. Simplification of these issues is more than enough to warrant to a stay, and AGIS
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`points to no case law suggesting that a complete resolution of all issues in a case is necessary. To
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`the contrary, courts often stay district court cases pending resolution of inter partes review
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`proceedings which only relate to validity of a patent. E.g., SSL Servs., LLC v. Cisco Sys., Inc.,
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`Case No. 2:15-CV-433-JRG-RSP, 2016 WL 3523871, at *2 (E.D. Tex. June 28, 2016).
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`Third, AGIS does not dispute that this case is in its early stages, pointing out only that a
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`trial date in March 2024 has been set. Opp., 7. This factor also favors a stay.
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`III.
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`CONCLUSION
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`In view of the above, Samsung respectfully requests that the Court stay this case either
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`pursuant to 28 U.S.C. § 1659(a) or under its inherent powers.
`5
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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 9 of 10 PageID #: 1634
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`Dated: January 18, 2023
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`
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`Respectfully submitted,
`
`/s/ Neil P. Sirota
`
` 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
`
` 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
`
`Counsel for Defendants Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 44 Filed 01/18/23 Page 10 of 10 PageID #: 1635
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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 this 18th day of January, 2023, with a copy of this document via the
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`Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`Dated: January 18, 2023
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`/s/ Neil P. Sirota
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`7
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