Case 2:22-cv-00263-JRG-RSP Document 45 Filed 01/25/23 Page 1 of 9 PageID #: 1636
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`Case No. 2:22-cv-00263-JRG-RSP
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S SUR-REPLY
`IN FURTHER OPPOSITION TO DEFENDANTS’ PARTIAL MOTION TO DISMISS
`PLAINTIFF’S AMENDED COMPLAINT UNDER RULE 12(B)(6) (DKT. 39)
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`Case 2:22-cv-00263-JRG-RSP Document 45 Filed 01/25/23 Page 2 of 9 PageID #: 1637
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 2
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`A.
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`B.
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`Samsung Has Not Met its Burden to Show 28 U.S.C. § 1498(a) Applies .............. 2
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`Samsung Has Not Met its Burden to Show Improper Claim Splitting ................... 3
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`III.
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`CONCLUSION ................................................................................................................... 4
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`i
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`Case 2:22-cv-00263-JRG-RSP Document 45 Filed 01/25/23 Page 3 of 9 PageID #: 1638
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`In re PersonalWeb Techs. LLC,
`961 F.3d 1365 (Fed. Cir. 2020)..................................................................................................4
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`Riles v. Amerada Hess Corp.,
`999 F. Supp. 938 (S.D. Tex. 1998) ............................................................................................3
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`Statutes
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`28 U.S.C. § 1498(a) .....................................................................................................................2, 3
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`ii
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`Case 2:22-cv-00263-JRG-RSP Document 45 Filed 01/25/23 Page 4 of 9 PageID #: 1639
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
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`undersigned counsel, hereby submits this sur-reply in further 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)
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`(Dkt. 39) (the “Motion”).
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`Even under Samsung’s incorrect interpretation of the law, Samsung’s unsupported
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`allegation that certain Samsung Accused Products are “manufactured by” the United States is not
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`dispositive of AGIS’s claims related to Tactical accused functionalities. Samsung does not dispute
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`that the Samsung Accused Products are used, manufactured, sold, offered for sale, and imported
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`into the United States by Samsung. This is because the Samsung Accused Products are Samsung’s
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`own implementations of the claimed inventions (for example, the Samsung-manufactured
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`Samsung Tactical S20 with the Samsung Tactical software and situational-awareness functionality
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`of which ATAK-CIV is an example) which are not “manufactured by” the U.S. government. The
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`law is not intended to permit Samsung to avoid claims by stripping down claims to a non-accused,
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`isolated instance of a portion of the accused functionalities. Samsung’s arguments mischaracterize
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`the analysis this Court must conduct in considering whether this suit should have been brought in
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`the U.S. Court of Federal Claims.
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`Because the Government does not make Samsung products, it is undisputed that this
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`analysis requires a determination of whether the Samsung Accused Products are developed
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`exclusively “for the Government” and with the authorization and consent of the Government.
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`Samsung has not met its burden here. Samsung neither points to any explicit authorization by the
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`U.S. Government, a contract executed between Samsung and the U.S. Government, or any other
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`authorization or consent clause which would reveal that the Samsung Accused Products are
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`Case 2:22-cv-00263-JRG-RSP Document 45 Filed 01/25/23 Page 5 of 9 PageID #: 1640
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`exclusively developed for the U.S. Government and with the authorization and consent of the
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`Government.
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`Samsung’s claims of claim splitting are similarly unsupported. This case does not involve
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`the same cause of action and no claims are “essentially the same” as those in the AGIS-Samsung I
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`and AGIS-ITC litigations. As shown in AGIS’s response and sur-reply to Samsung’s motion to
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`stay, the accused products and applications are not the same. Samsung has admitted that the issues
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`in the AGIS-Samsung I case involved the “Accused Google Applications” which are also at issue
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`in the AGIS-ITC case. Samsung has relied on this fact in its unopposed motion to stay the AGIS-
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`Samsung I case pending resolution of the AGIS-ITC investigation.
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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.
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`ARGUMENT
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`A.
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`Samsung Has Not Met its Burden to Show 28 U.S.C. § 1498(a) Applies
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`Samsung relies solely on the language of 28 U.S.C. § 1498(a) to argue that this Court
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`should dismiss AGIS’s claims of infringement against the Samsung Accused Products that relate
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`to the Tactical accused functionalities. See Dkt. 43, “Reply”at 1-2 (“Samsung’s motion is based
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`on scenario (2)—i.e., manufacture by the United States Government of the allegedly infringing
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`TAK suite of apps.”); see id. (“AGIS’s opposition instead rebuts an argument Samsung never
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`made—that Samsung’s Galaxy devices are manufactured for the United States Government.”).
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`In doing so, Samsung ignores that the proper analysis under § 1498(a) requires that the accused
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`products must be manufactured at the direction of the Government or that it has received
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`authorization or consent to manufacture the Samsung Accused Products exclusively for the
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`Government.
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`2
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`In response to AGIS’s opposition, Samsung still fails to identify any agreement between
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`Samsung and the U.S. Government for development and manufacture of the Samsung Accused
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`Products, any contract between Samsung and the U.S. Government, or any consent or authorization
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`by the U.S. Government for manufacture of the Samsung Accused Products. Samsung has
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`declined the opportunity to come forward with evidence that the U.S. Government has authorized
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`or consented to Samsung’s development and manufacture of the Samsung Accused Products. See
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`Dkt. 42 (“Opp.”) at 9-10. Incorrectly casting § 1498(a) as grounds for dismissal (by merely
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`alleging the U.S. Government develops portions of the Tactical accused functionalities) ignores
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`that Ҥ 1498(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.” Id. at 11 (quoting Riles v. Amerada Hess Corp., 999 F. Supp.
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`938, 941 (S.D. Tex. 1998)).
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`Accordingly, AGIS respectfully requests Samsung’s Motion to dismiss claims under
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`§ 1498(a) be denied.
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`B.
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`Samsung Has Not Met its Burden to Show Improper Claim Splitting
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`Samsung has failed to meet its burden to show improper claim splitting. Like its motion
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`to stay, Samsung attempts to mischaracterize the infringement allegations as “making, using,
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`selling and importation of the same Samsung Galaxy devices.” Reply at 3. However, AGIS’s
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`infringement allegations in AGIS-Samsung I involved Google applications and services, whereas
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`AGIS-Samsung II involves Samsung Knox and the Tactical accused functionalities. Further, in
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`the present case, AGIS does not accuse any Google functionalities, and AGIS expressly excluded
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`the Google functionalities accused in the AGIS-Samsung I and AGIS-ITC litigations from the scope
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`of the present case. Opp. at 12.
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`3
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`Further, Samsung’s attempts to compare the PersonalWeb Techs. case are unsupported
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`where the Federal Circuit stated that PersonalWeb did not limit its infringement contentions in the
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`Texas case to the “multipart upload functionality” and “accused the use of ‘conditional operations’
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`in the Texas case.” In re PersonalWeb Techs. LLC, 961 F.3d 1365, 1376 (Fed. Cir. 2020). The
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`Federal Circuit therefore held that the “complaints in the customer cases and the complaint in the
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`Texas case relate to the same set of transactions.” Id. Here, Samsung Knox is accused and was
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`not identified, nor accused, in AGIS-Samsung I. Further, the accused functionalities and
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`applications are not merely “different features of the same product,” but contain different
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`infringement allegations. Reply at 4. Samsung does not make an effort to demonstrate that
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`Samsung is “essentially the same,” but rather, relies on the Samsung devices to argue claim
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`splitting. Opp. at 13-14.
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`Accordingly, Samsung’s claims of improper claim splitting are not warranted and
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`Samsung’s Motion should be denied.
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`III. CONCLUSION
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`For the foregoing reasons, none of the factors weigh in favor of a dismissal and AGIS
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`respectfully requests that the Court deny Samsung’s Partial Motion to Dismiss Plaintiff’s
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`Amended Complaint Under Rule 12(b)(6) (Dkt. 39) in its entirety.
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`Dated: January 25, 2023
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`Respectfully submitted,
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` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
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`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF,
`AGIS SOFTWARE DEVELOPMENT LLC
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 25, 2023, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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