Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 1 of 11 PageID #: 1751
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`
`
`v.
`
` Civil Action No. 2:22-cv-00263-JRG-RSP
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
` JURY TRIAL DEMANDED
`
`Defendants.
`
`DEFENDANTS’ OBJECTIONS TO THE MAGISTRATE JUDGE’S
` REPORT AND RECOMMENDATION ENTERED APRIL 10, 2023
`
`

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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 2 of 11 PageID #: 1752
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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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`STANDARD OF REVIEW ................................................................................................ 3
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`ARGUMENT ...................................................................................................................... 3
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`A.
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`B.
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`AGIS’s Assertion of the Same Patents Against the Same Products in Two
`Different Cases is Improper Claim Splitting .......................................................... 3
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`The Report Erred in Not Dismissing AGIS’s Claims of Infringement of
`the ’829 and ’123 Patents Against Products at Issue in AGIS I .............................. 6
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`III.
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`CONCLUSION ................................................................................................................... 8
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 3 of 11 PageID #: 1753
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`The Samsung defendants respectfully submit that the District Court should reconsider the
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`portion of the Report and Recommendation of the United States Magistrate Judge, Dkt. No. 54
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`(“Report”), recommending denial of Samsung’s motion to dismiss Counts III and IV of the
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`Amended Complaint alleging that Samsung infringes U.S. Pat. Nos. 9,749,829 (“’829 Patent”) and
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`9,820,123 (“’123 Patent”), respectively. Those counts should be dismissed, at least in part, due to
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`improper claim splitting for the following reasons:
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` The ’829 and ’123 Patents were asserted against Samsung in a prior suit (AGIS I1) alleging
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`infringement by a list of Samsung Galaxy products that is substantively identical to the list
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`of Samsung Galaxy products accused here. See Report, 3.
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` While the accused Samsung Galaxy products are the same in both cases, AGIS identifies
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`different allegedly infringing apps purportedly pre-loaded on the Samsung Galaxy
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`products. In AGIS I, AGIS’s complaint identified a list of Samsung Galaxy products along
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`with Google’s Find My Device and Google Maps and Samsung’s Find My Mobile apps
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`which were alleged to be pre-loaded on the products. In this case, AGIS’s Amended
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`Complaint identifies the same list of Samsung Galaxy products along with the U.S.
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`Government’s Team Awareness Kit (TAK) apps and Samsung’s Knox app which are also
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`alleged to be pre-loaded on the products.
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` Taking the allegations of both complaints as true for purposes of the motion to dismiss,
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`and recognizing that AGIS identifies the same Samsung Galaxy products in both
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`complaints, all of the identified Samsung Galaxy products, according to AGIS, have the
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`five apps accused in both cases pre-loaded on them when sold to consumers.
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` Samsung moved to dismiss Counts III and IV of AGIS’s Amended Complaint because
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`1 AGIS Software Dev. LLC v. Samsung Elec. Co., No. 5:22-cv-04825-BLF (N.D. Cal), originally
`2:19-cv-00362-JRG (E.D. Tex.) prior to transfer.
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`

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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 4 of 11 PageID #: 1754
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`AGIS accused the same products in both AGIS I and this case, and splitting infringement
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`allegations directed to different features of the same product across multiple suits is
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`improper. In re PersonalWeb Techs. LLC, 961 F.3d 1365, 1373, 1375 (Fed. Cir. 2020).
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` During the hearing, AGIS represented that it is not alleging infringement against all of the
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`same products at issue in AGIS I, and that the allegations in its complaints that all the
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`accused Galaxy products have all five apps pre-loaded on them is not necessarily true.
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`AGIS represented that in this case it is only accusing those Galaxy products with either or
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`both of TAK and Knox pre-loaded when sold to consumers. In other words, AGIS
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`narrowed its allegations to exclude Galaxy products without TAK or Knox pre-loaded on
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`them.
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` The Report recommends denying Samsung’s motion based on AGIS’s representation that
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`the universe of accused products is in fact narrower than set forth in its Amended
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`Complaint. See Report, 2, 3. This was error.
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` While AGIS’s representation narrows the scope of accused products here to exclude
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`Galaxy products without TAK or Knox pre-loaded, it does not resolve AGIS’s improper
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`claim splitting because AGIS still accuses products in this case that were also accused in
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`AGIS I. For example, Galaxy products sold with at least one AGIS I-accused app, e.g.,
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`Google Maps, and at least one app accused in this case, e.g., Knox, pre-loaded on them are
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`accused in this case and were also accused in AGIS I.
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` The Report should have recommended granting Samsung’s motion as to those Galaxy
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`products accused in both this case and AGIS I. In other words, Counts III and IV should
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`be dismissed as to all Samsung Galaxy products with either TAK or Knox pre-loaded
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`when sold to consumers to the extent those products also have any app accused in AGIS
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`I—Find My Device, Google Maps or Find My Mobile—pre-loaded.
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`2
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`

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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 5 of 11 PageID #: 1755
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`I.
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`STANDARD OF REVIEW
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`A party may serve and file specific, written objections to a Report and Recommendation
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`of a Magistrate Judge. 28 U.S.C. § 636(b); Fed. R. Civ. P. 72(b); L.R. CV-72(c). If a party files
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`objections, the District Court conducts a de novo review of the Report and Recommendation. Id.
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`The District Court may accept, reject, or modify the Report and Recommendation, in whole or in
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`part. 28 U.S.C. § 636(b)(1)(C).
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`II.
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`ARGUMENT
`
`A.
`
`AGIS’s Assertion of the Same Patents Against the Same Products in Two
`Different Cases is Improper Claim Splitting
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`AGIS’s allegations of infringement of the ’829 and ’123 Patents in Counts III and IV of its
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`Amended Complaint in this action are based on the same allegedly infringing transactions at issue
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`in AGIS I—i.e., the making, using, selling and importation of 264 specifically identified Samsung
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`Galaxy products that were also alleged in AGIS I to infringe the same two patents. See Mot., Dkt.
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`39, 3-4 (citing Am. Compl., Dkt 1, ¶ 15; AGIS I Compl, Dkt. 39, Ex. A, ¶ 15). The allegations of
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`infringement of the ’829 and ’123 Patents in this case with respect to products at issue in AGIS I
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`are therefore barred by the doctrine of claim splitting. PersonalWeb, 961 F.3d at 1375 (plaintiff
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`must “raise in a single lawsuit all grounds of recovery arising from a particular transaction”); see
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`also Mot., Dkt. 39, 6-7, 11-14.
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`In AGIS I, AGIS alleged infringement of the ’829 and ’123 Patents based on two Google
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`apps (Find My Device and Google Maps) and one Samsung app (Find My Mobile) alleged to be
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`pre-loaded on 269 Samsung’s Galaxy products. See Opp., Dkt. 42, 2-3; AGIS I Compl, Dkt. 39,
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`Ex. A, ¶ 15 (accused products are “pre-configured or adapted with” “Google Maps [and] Find My
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`Device”).2 Here, AGIS’s Amended Complaint alleges infringement based on the U.S.
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`2 Find My Mobile was added in AGIS’s infringement contentions using similar language.
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`3
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`

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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 6 of 11 PageID #: 1756
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`Government’s Team Awareness Kit (“TAK”) apps and Samsung’s Knox app, also alleged to be
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`pre-loaded on a substantively identical list Samsung Galaxy products. See Mot., Dkt. 39, 3-4
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`(citing Am. Compl., Dkt. 1, ¶ 16 (accused products are “configured and/or adapted with” “TAK,
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`ATAK, and CivTAK and Samsung Knox”)). In opposing Samsung’s motion to dismiss due to
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`improper claim splitting, AGIS argued that the differences in the accused product features (i.e.,
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`apps) at issue in the earlier AGIS I suit and the current suit mean that claim splitting does not apply.
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`See Opp., Dkt. 42, 12-14. But the Federal Circuit has expressly rejected this argument.
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`As explained in Samsung’s motion, in In re PersonalWeb Techs. LLC, 961 F.3d 1365, 1375
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`(Fed. Cir. 2020), PersonalWeb accused the same product, Amazon’s S3 system, in successive
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`lawsuits, and argued that the functionalities accused in the successive lawsuits were entirely
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`different features, and thus, different “products.” See Mot., Dkt. 39, 12-13. Specifically, in the
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`first lawsuit, PersonalWeb “accused only multipart upload functionality of Amazon’s S3 system”
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`and subsequently in a second lawsuit accused “cache control functionality, an entirely different
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`feature of Amazon’s S3 system.” PersonalWeb Techs, 961 F.3d at 1375 (emphasis added). The
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`court nevertheless ruled the second lawsuit as improper claim splitting, reasoning that “[a]t most,
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`PersonalWeb has shown that it emphasized different facts in support of a different theory of
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`infringement in the prior case. But that is not enough to avoid claim preclusion.” 3 Id. at 1376.
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`This is precisely the same tack AGIS took here. See, e.g., Opp., 12 (“AGIS I involved
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`allegations of infringement of the Google applications. . . . The present action alleges infringement
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`of the ’829, ’123, ’970, and ’838 Patents by a different set of non-Google applications . . . .”).
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`AGIS attempted to characterize its infringement allegations against different features (i.e., apps)
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`3 As also noted in Samsung’s motion, and not disputed by AGIS, claim preclusion principles are
`applicable to claim splitting, but do not require a prior judgment. Mot., 13 n.6; Opp. at 5-6.
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`4
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`

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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 7 of 11 PageID #: 1757
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`of the same products as different claims properly brought in different lawsuits. However, AGIS’s
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`allegations in this lawsuit, even if they raise different facts and different theories of infringement
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`than in AGIS I, are not enough to avoid claim preclusion. PersonalWeb, 961 F.3d at 1376.
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`In
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`its Opposition, AGIS attempted
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`to distinguish PersonalWeb by completely
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`mischaracterizing it. First, AGIS correctly identified a discussion in PersonalWeb where the court
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`determined that, contrary to PersonalWeb’s position, there was some overlap in the features of the
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`Amazon S3 product that were accused in the prior and current cases. Opp., 13 (citing
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`PersonalWeb, 961 F.3d at 1376). But AGIS then argued: “Accordingly, the Federal Circuit found
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`that ‘complaints in the customer cases and the complaint in the Texas case relate to the same set
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`of transactions.’” Opp., 13 (quoting but not citing PersonalWeb, 961 F.3d at 1376) (emphasis
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`added). This is the opposite of what the Federal Circuit said. Rather than relying on the
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`overlapping allegations in the two cases to find claim preclusion, the Federal Circuit stated that
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`the overlap is irrelevant because the same products are accused in both cases:
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`In any event, regardless of the breadth of the specific infringement theories
`PersonalWeb pursued in the [prior] Texas case, it is clear that the complaints in the
`customer cases and the complaint in the Texas case relate to the same set of
`transactions. In the Texas case, PersonalWeb alleged that it had been injured by acts
`of infringement consisting of the manufacture, use, sale, importation, and/or offer for
`sale of the Amazon S3 product. Every alleged act of infringement in the eight
`customer cases before us is likewise based on the use of the same Amazon S3 product.
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`At most, PersonalWeb has shown that it emphasized different facts in support of a
`different theory of infringement in the prior case. But that is not enough to avoid
`claim preclusion.
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`PersonalWeb, 961 F.3d at 1376 (emphasis added). Thus, different accused features or apps on the
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`same accused Galaxy products are not different accused products for purposes of claim splitting.
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`If the same product that was accused in AGIS I is also accused in this case, the infringement claim
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`against that product is barred by the doctrine of claim splitting even if different features are
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`accused. Id.
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`5
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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 8 of 11 PageID #: 1758
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`B.
`
`The Report Erred in Not Dismissing AGIS’s Claims of Infringement of the
`’829 and ’123 Patents Against Products at Issue in AGIS I
`
`At the hearing on Samsung’s motion to dismiss, AGIS represented that it is not alleging
`
`infringement against all of the same products at issue in AGIS I. Rather, despite identifying in its
`
`Amended Complaint a list of 264 products that is substantively identical to the accused products
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`it identified in the AGIS I complaint, AGIS explained in response to questioning from the Court
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`that the allegations in its Amended Complaint should be interpreted as extending only to those
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`products on which the accused TAK or Knox apps are pre-loaded when sold to consumers, and
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`not devices that are merely capable of running these apps. See Hearing Tr., Ex. A, at 43:4-23,
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`45:7-16; see also id. at 54:24-55:9; Report, 3.4
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`In recommending denial of Samsung’s motion, the Report relied on AGIS’s representation
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`that the scope of the accused products in this case is different than the scope of the accused products
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`in AGIS I. Report, 3. This was error because AGIS’s representation, while narrowing its accused
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`set of Samsung Galaxy products in this case, does not resolve AGIS’s improper claim splitting.
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`To the extent there is any overlap in the accused products in AGIS I and this case—i.e., products
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`that have pre-loaded on them at least one app that was accused in AGIS I and one app accused
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`here—the allegations against that set of overlapping products with respect to the ’829 and ’123
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`patents must be dismissed in this case due to claim splitting. AGIS acknowledged as much, noting
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`during its narrowing of accused products at the hearing that in “the list of devices in Paragraph 16
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`of our [Amended] Complaint . . . there may be, you know, 30 of them each that have been sold
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`with TAK which were not at issue in AGIS I.” Hearing Tr., Ex. A at 43:14-18 (emphasis added).
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`4 Neither the cited colloquy nor the Report, p. 3, refers specifically to the Knox app, instead
`referring to “TAK and related applications.” Samsung understands this to include Knox. See, e.g.,
`Hearing Tr., Ex. A, at 40:13-14. But to the extent the Report does not address Knox, that was an
`error to which Samsung objects. Both TAK and Knox are accused and were identified in the
`briefing, and should therefore be expressly included in the order resolving the motion.
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`6
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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 9 of 11 PageID #: 1759
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`Examples of products potentially at issue in this case and the scope of what must be
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`excluded are illustrated below:
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`AGIS’s infringement claims against the set of products that have both AGIS I-accused
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`features (i.e., the Find My Device, Google Maps and/or Find My Mobile apps) and currently
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`accused features (i.e., the TAK and/or Knox apps) involve the same set of allegedly infringing
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`transactions—i.e., the making, using, selling and importation of those products—and cannot be
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`split between two cases. See PersonalWeb, 961 F.3d at 1375 (“Regardless of the number of
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`substantive theories available to a party and regardless of the differences in the evidence needed
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`to support each of those theories, a party may not split a single claim into separate grounds of
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`7
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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 10 of 11 PageID #: 1760
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`recovery and raise those separate grounds in successive lawsuits.”) (citations omitted). All claims
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`for infringement of the ’829 and ’123 Patents against products with at least one AGIS I-accused
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`app pre-loaded must therefore be dismissed.
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`III.
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`CONCLUSION
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`For the foregoing reasons, Samsung respectfully submits that the Court should review and
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`reconsider the Report and grant Samsung’s Partial Motion to Dismiss Counts III and IV of AGIS’s
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`Amended Complaint as to all products with at least one of the Find My Device, Google Maps and
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`Find My Mobile apps accused in AGIS I pre-loaded when sold to customers.
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`Dated: April 24, 2022
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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.
`
`8
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`Case 2:22-cv-00263-JRG-RSP Document 55 Filed 04/24/23 Page 11 of 11 PageID #: 1761
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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 April 24, 2023, with a copy of this document via the Court’s CM/ECF
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`system.
`
`/s/ Neil P. Sirota
`Neil P. Sirota
`
`9
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`