Case 2:22-cv-00263-JRG-RSP Document 54 Filed 04/08/23 Page 1 of 4 PageID #: 1747
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT
`LLC,
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` Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO.,
`LTD., ET AL.,
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` Defendants.
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`§
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`CIVIL ACTION NO. 2:22-CV-00263-JRG-RSP
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`REPORT AND RECOMMENDATION
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`Before the Court, defendants Samsung Electronics Co., Ltd. and Samsung Electronics
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`America, Inc. (“Samsung”) move to dismiss for failure to state a claim. Dkt. No. 39. For the
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`following reasons, the motion should be DENIED.
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`Plaintiff AGIS Software Development, LLC filed suit against Samsung alleging
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`infringement of US Patent Nos. 8,213,970 (“ ‘970 patent”); 9,467,838 (“ ‘838 patent”); 9,749,829
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`(“ ‘829 patent”); and 9,820,123 (“ ‘123 patent”). The ‘970 patent is generally directed to
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`communication networks for forced message alert. Id. (Abstract). The remaining patents are
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`continuations claiming priority to the same parent, share the same specification, and are generally
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`directed to ad hoc communication networks. Compare ‘123 patent (Related U.S. Application
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`Data), with ‘838 patent and ‘829 patent; ‘123 patent (Abstract).
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`Samsung previously moved to dismiss for failure to state a claim. Dkt. No. 22. AGIS
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`subsequently filed an amended complaint, which accuses Samsung of the
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`… manufacture, use, sell, offer for sale, and/or import into the United States the
`Samsung Tactical, TAK, ATAK, and CivTAK, applications, products, and
`solutions, which also include related servers and services for supporting Samsung
`Tactical, TAK, ATAK, and CivTAK and Samsung Knox (collectively, the
`“Accused Products”). Further, Defendants manufacture, use, sell, offer for sale,
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`Case 2:22-cv-00263-JRG-RSP Document 54 Filed 04/08/23 Page 2 of 4 PageID #: 1748
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`and/or import into the United States electronic devices, all of which are configured
`and/or adapted with certain map-based communication applications, products, and
`solutions such as Samsung Tactical, TAK, ATAK, and CivTAK and Samsung
`Knox …
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`Dkt. No. 29 ¶ 16. The complaint proceeds to list many Samsung mobile devices. Id. The
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`application “TAK” refers to “Team Awareness Kit,” a suite of cellular applications. Samsung
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`reurged its motion to dismiss, Dkt. No. 391, which is fully briefed, Dkt. Nos. 42 (response), 43
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`(reply), and 45 (sur-reply). Additionally, a hearing on the motion was held Thursday March 30,
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`2023. Dkt. No. 50. During the hearing, AGIS clarified that the amended complaint should be read
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`as accusing only those Samsung mobile devices loaded with Samsung Tactical, TAK, ATAK,
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`CivTAK and Samsung Knox.
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`Samsung’s motion to dismiss includes two parts. In the first, Samsung seeks dismissal of
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`AGIS’s allegation related to a suite of cellular applications collectively known as “Team
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`Awareness Kit” (“TAK”) pursuant to 28 U.S.C. § 1498(a). Broadly speaking, § 1498(a) is an
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`affirmative defense for government contractors whose product “is used or manufactured by or for
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`the United States.” See Manville Sales Corp. v. Paramount Sys. Inc., 917 F.2d 544, 554 (Fed. Cir.
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`1990) (§ 1498(a) establishes an affirmative defense, not a jurisdictional bar). Under § 1498(a), the
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`accused infringer bears the burden of establishing that the infringing use is “for the Government”
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`and “with authorization and consent of the Government.” Sevenson Envt’l Servs., Inc. v. Shaw
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`Envt’l, Inc., 477 F.3d 1361, 1365 (Fed. Cir. 2007).
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`1 In light of the amended complaint and the reurging of the motion to dismiss, Samsung’s first
`motion to dismiss, Dkt. No. 22, should be DENIED AS MOOT. See Bosarge v. Mississippi
`Bureau of Narcotics, 796 F.3d 435, 440 (5th Cir. 2015) (“An amended complaint supersedes the
`original complaint and renders it of no legal effect unless the amended complaint specifically refers
`to and adopts or incorporates by reference the earlier pleading.” (quoting King v. Dogan, 31 F.3d
`344, 346 (5th Cir. 1994)).
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`Case 2:22-cv-00263-JRG-RSP Document 54 Filed 04/08/23 Page 3 of 4 PageID #: 1749
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`Samsung argues that the complaint demonstrates that TAK was originally developed by
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`the Air Force, has been approved for public use by Department of Defense standards, and is a
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`Government-off-the-Shelf (“GOTS”) software application. Dkt. No. 39 p 8-10. Samsung then
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`seeks judicial notice of Department of Defense policy for public use and the government’s
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`definition of GOTS as a product developed and used by the government. Id. AGIS argues that
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`whether the Air Force originally developed TAK is immaterial because new iterations of TAK are
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`now developed by a private company, PAR Government. AGIS further argues that the civilian
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`versions of TAK are not “for the Government” or “with authorization and consent of the
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`Government.” This creates a dispute of facts, which at the pleadings phase, especially concerning
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`an affirmative defense, must favor the plaintiff.
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`In the second part of Samsung’s motion to dismiss, Samsung argues that AGIS has engaged
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`in impermissible claim splitting in light of a previously filed case between the parties alleging
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`infringement of two of the patents in suit against a nearly identical list of Samsung mobile devices.
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`See Compare Dkt. No. 29 ¶ 16 with AGIS Software Development LLC v. Samsung Electronics Co.
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`Ltd, et al., Civil Action No. 2:19-cv-00362 (“AGIS I”), Dkt. No. 1 ¶ 15. However, as AGIS made
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`clear during the hearing, the instant action does not accuse mobile devices merely capable of
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`running “TAK” or related programs but rather mobile devices on which “TAK” or related
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`programs has been loaded. In other words, infringement requires both the phone and the
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`application in order to infringe.
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`For these reasons, it is the recommendation of the undersigned that Samsung’s motion to
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`dismiss, Dkt. No. 39, be DENIED.
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`A party’s failure to file written objections
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`to
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`the findings, conclusions, and
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`recommendations contained in this report within 14 days bars that party from de novo review by
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`Case 2:22-cv-00263-JRG-RSP Document 54 Filed 04/08/23 Page 4 of 4 PageID #: 1750
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`the District Judge of those findings, conclusions, and recommendations and, except on grounds of
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`plain error, from appellate review of unobjected-to factual findings and legal conclusions accepted
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`and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see Douglass v. United Servs. Auto.
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`Ass’n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc). Any objection to this Report and
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`Recommendation must be filed in ECF under the event “Objection to Report and
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`Recommendations [cv, respoth]” or it may not be considered by the District Judge.
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`4
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 8th day of April, 2023.
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