Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 1 of 8 PageID #: 1645
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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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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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S SUR-REPLY IN
`FURTHER OPPOSITION TO DEFENDANTS SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA, INC.’S MOTION TO STAY (DKT. 40)
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`Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 2 of 8 PageID #: 1646
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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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`The Issues in the AGIS-ITC Litigation and AGIS-Samsung II Are Not the
`Same ...................................................................................................................... 2
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`A Discretionary Stay is Not Warranted ................................................................ 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 46 Filed 01/25/23 Page 3 of 8 PageID #: 1647
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`I.
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`INTRODUCTION
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`Samsung cannot use the AGIS ITC investigation as grounds to stay unrelated proceedings
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`concerning different issues. AGIS has already agreed to a stay of the AGIS-Samsung I litigation
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`pending the AGIS ITC litigation where the proceedings involve “essentially the same” issues
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`concerning the infringement of the same Asserted Patents and the same accused Google
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`applications. See AGIS Software Dev. LLC v. Samsung Elec. Co., No. 5:22-cv-04825, Dkt. 165
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`(N.D. Cal. Jan. 19, 2023). The NDCA subsequently granted Samsung’s unopposed motion to stay
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`AGIS-Samsung I. See AGIS Software Dev. LLC v. Samsung Elec. Co., No. 5:22-cv-04825, Dkt.
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`166 (N.D. Cal. Jan. 20, 2023). Accordingly, the “unnecessary waste of judicial and party
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`resources” alleged by Samsung (Dkt. 44 at 1) is unsupported where the parallel district court
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`litigation involving common infringement claims has already been stayed.
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`There is no dispute that the Google applications accused in the AGIS ITC case are not
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`“essentially the same” as Samsung Knox and Samsung Tactical products (including the non-
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`Google situational awareness functionalities). Compare AGIS I, No. 2:19-cv-00362-JRG, Dkt. 1
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`(E.D. Tex. Nov. 4, 2019) with Dkt. 29.
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`There is no dispute that the AGIS ITC case revolves around Google applications. Samsung
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`previously represented to this Court and to the Federal Circuit that the issues in AGIS-Samsung I
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`(which are the same issues presented in the AGIS ITC case) center around Google applications and
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`that “the accused products in the Samsung case are, after all, Google products.” See Ex. B, In re
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`Google LLC, No. 2022-0140, Dkt. 2-1 at 26 (Fed. Cir. Apr. 4, 2022); see also AGIS-Samsung I,
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`AGIS Software Dev. LLC v. Google LLC, No. 2:19-cv-00361-JRG, Dkt. 46 at 2 (E.D. Tex. Mar.
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`9, 2020); Ex. A, In re Google LLC, No. 2022-0126, Dkt. 2-1 at 23 (Fed. Cir. Feb. 23, 2022). This
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`representation is consistent with Samsung’s pleadings in AGIS-Samsung I, where Samsung did not
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`Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 4 of 8 PageID #: 1648
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`identify the instant Samsung Accused Products as accused in the prior litigation. Dkt. 41 (“Opp.”)
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`at 7.
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`There is no dispute that AGIS does not accuse Google applications in this case. See
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`generally Dkt. 29. None of the claims in this case revolve around Google applications. AGIS has
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`made that fact unmistakably clear and expressed. Ex. C at 4 (“For the avoidance of doubt, the
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`term ‘Accused Products’ does not include the Google Find My Device application, the Samsung
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`Find My Mobile application, and the Google Maps Mobile application with Share Location
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`feature.”).
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`Accordingly, Samsung’s Motion should be denied because, based on Samsung’s prior
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`representation, the present issues are not “essentially the same” to the issues in the AGIS ITC
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`litigation.
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`II.
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`ARGUMENT
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`A.
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`The Issues in the AGIS-ITC Litigation and AGIS-Samsung II Are Not the
`Same
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`Samsung relies on its unsupported argument that AGIS’s Amended Complaint is “not
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`limited to” the Samsung Knox and Tactical applications and software accused in this case and that
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`the AGIS-ITC case identifies “representative examples” of the accused products and applications.
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`Samsung’s speculation that AGIS will later amend its infringement allegations such that there is
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`complete overlap between the AGIS-Samsung II and AGIS-ITC litigations is unfounded. Samsung
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`admits that the exemplary applications identified in each complaint are different. Dkt. 44 (“Reply”)
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`at 2.
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`It is undisputed that the AGIS-ITC case involves applications and services developed by
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`Google. This was the basis for Samsung’s unopposed stay in the parallel AGIS-Samsung I
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`litigation which involves the same Google applications and services. To argue now that the AGIS-
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`Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 5 of 8 PageID #: 1649
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`Samsung II case could involve the same accused products and functionalities in the future if AGIS
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`attempts to amend its infringement allegations as a basis for a stay is mere speculation. Samsung’s
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`further rejection of AGIS’s arguments by arguing AGIS’s discovery requests do not accurately
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`reflect the scope of the case is unsupported. AGIS’s Amended Complaint does not identify and
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`accused the Google applications and services.
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`Accordingly, Samsung’s Motion should be denied.
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`B.
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`A Discretionary Stay is Not Warranted
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`The Court should decline to institute a discretionary stay where (1) a stay will unduly
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`prejudice or present a clear tactical disadvantage to AGIS; (2) a stay will not simplify the issues in
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`question and trial of the case; and (3) a trial date has been set. Opp. at 7.
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`First, as shown above, the accused products and functionalities are not identical and thus,
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`would result in a delay of 19 months here. See Saxon Innovations, LLC v. Palm, Inc., No. 6:09-
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`cv-272, 2009 WL 3755041, at *2 (E.D. Tex. Nov. 4, 2009) (“Granting Palm’s request would
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`prejudice Saxon by delaying this claim of infringement by at least eight months.”). Samsung’s
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`unopposed stay of the AGIS-Samsung I case was stayed pending the resolution of the AGIS-ITC
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`litigation where the same accused products and functionalities are at issue. Samsung Knox and
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`the Tactical applications and services are not at issue in the AGIS-ITC litigation. Accordingly,
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`AGIS would be forced to delay its infringement allegations against the Samsung Knox and Tactical
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`applications and services pending an ITC investigation involving different accused products and
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`functionalities. Samsung’s claims that AGIS allegedly should have included the Samsung Knox
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`and Tactical applications and services merely highlight that the accused products and applications
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`are not the same.
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`Second, a stay will not simplify the issues in question and trial of the case. Determinations
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`by the ITC are not binding on this Court. See Saxon, 2009 WL at 3755041, at *2. In addition, the
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`Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 6 of 8 PageID #: 1650
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`ITC will not consider arguments or theories regarding infringement by the Samsung Knox and
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`Tactical applications and services where they are not asserted in the AGIS-ITC investigation.
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`Third, a trial date has been set in this case. See Opp. at 7.
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`Accordingly, a discretionary stay is not warranted.
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`III. CONCLUSION
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`For all the foregoing reasons, AGIS respectfully requests that the Court deny Samsung’s
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`Motion 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: afabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`Texas State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas 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
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`Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 7 of 8 PageID #: 1651
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`Facsimile: (903) 923-9099
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:22-cv-00263-JRG-RSP Document 46 Filed 01/25/23 Page 8 of 8 PageID #: 1652
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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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