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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`v.
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS, AMERICA,
`INC.,
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`Defendants.
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`Case 2:22-cv-00263-JRG-RSP Document 60 Filed 05/08/23 Page 1 of 5 PageID #: 1801
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE TO
`DEFENDANTS’ OBJECTIONS TO THE MAGISTRATE JUDGE’S REPORT AND
`RECOMMENDATION ENTERED APRIL 10, 2023 (DKT. 55)
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`Case 2:22-cv-00263-JRG-RSP Document 60 Filed 05/08/23 Page 2 of 5 PageID #: 1802
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`Pursuant to Federal Rule of Civil Procedure 72 and Local Rule CV-72(b), Plaintiff AGIS
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`Software Development LLC (“AGIS” or “Plaintiff”) hereby responds to Defendants Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc.’s (collectively, “Defendants” or
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`“Samsung”) request for reconsideration of the portion of the Report and Recommendation of U.S.
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`Magistrate Judge (Dkt. 54) recommending denial of Samsung’s motion to dismiss Counts III and
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`IV of the Amended Complaint (Dkt. 55).
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`The Court’s Report and Recommendation correctly found that “as AGIS made clear during
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`the hearing, the instant action does not accuse mobile devices merely capable of running ‘TAK’
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`or related programs but rather mobile devices on which ‘TAK’ or related programs ha[ve] been
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`loaded. In other words, infringement requires both the phone and the application in order to
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`infringe.” Dkt. 54 at 3.
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`Defendants fail to identify any error in the Report and Recommendation. Instead,
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`Defendants attempt to manufacture a limitation on discovery based on a mischaracterization of the
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`hearing record.
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`For example, Defendants incorrectly submit that AGIS represented that it accuses only
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`devices “pre-loaded” with the applications. See Dkt. 55 at 1. This allegation is inconsistent with
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`the hearing record in which AGIS expressly clarified that it was accusing devices “loaded” with
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`the accused software and that AGIS was not limiting its contentions to devices “pre-loaded” with
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`the accused software. Dkt. 55-1 at 53:17-18; id. at 54:2-5 (“So I just want to make sure that there
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`is no confusion about the word ‘pre-loading.’ You know, we said loaded. It’s the device with the
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`software. We didn’t say pre-loaded.”).AGIS stated that it did not want to say, “that our allegations
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`are narrowed to a version of the software assembled in Korea with ATAK on it that then crosses
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`the border.” Id. at 53:19-21. As submitted by AGIS, “[t]here may be a phone that is imported and
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`Case 2:22-cv-00263-JRG-RSP Document 60 Filed 05/08/23 Page 3 of 5 PageID #: 1803
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`then loaded by a third party with the software at the direction of Samsung where the direct infringer
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`is the one putting the software, installing the software, where Samsung is the induced infringer,
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`inducing infringement.” Id. at 53:22-54:1.
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`In response to AGIS’s clarification during the hearing, both the Court and Samsung’s
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`counsel
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`indicated
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`their understanding of AGIS’s position. The Court’s Report and
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`Recommendation correctly reflects the distinction that AGIS is not accusing the devices alone, as
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`Samsung alleges, but rather the devices that are loaded with the accused services, including
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`Samsung Tactical, TAK, ATAK, CivTAK, and Samsung Knox (Dkt. 54 at 2-3), (“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 programs
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`ha[ve] been loaded. In other words, infringement requires both the phone and the application in
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`order to infringe.”).
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`AGIS submits that the Court’s Report and Recommendation is appropriate because it
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`correctly reflects the hearing record and because it does not prematurely close off any path to
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`relevant discovery of the Accused Products. Defendants’ attempt to limit discovery to devices
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`shipped by Samsung pre-loaded with the accused applications and services is improper. For
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`example, as AGIS made clear during the hearing, there may be third parties that load the relevant
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`software to make and/or use the infringing Accused Products at the direction or with the assistance
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`of Defendants. See Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1355-56 (Fed. Cir. 2018) (“For
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`an allegation of induced infringement to survive a motion to dismiss, a complaint must plead facts
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`plausibly showing that the accused infringer ‘specifically intended [another party] to infringe [the
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`patent] and knew that the [other party]’s acts constituted infringement.”) (citing Lifetime Indus.,
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`Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017)).
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`2
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`Case 2:22-cv-00263-JRG-RSP Document 60 Filed 05/08/23 Page 4 of 5 PageID #: 1804
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`Defendants have failed to demonstrate that the Magistrate Judge erred in the Report and
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`Recommendation regarding its motion to dismiss. Accordingly, Defendants’ objections should be
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`overruled and Defendants’ request that the Court should review and reconsider the Report should
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`be denied.
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`Dated: May 8, 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
`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
`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
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`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
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`3
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`Case 2:22-cv-00263-JRG-RSP Document 60 Filed 05/08/23 Page 5 of 5 PageID #: 1805
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on May 8, 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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