Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 1 of 8 PageID #: 3795
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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
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`JURY TRIAL DEMANDED
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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.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED
`MOTION FOR LEAVE TO AMEND ITS DISCLOSURE OF ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
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`Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 2 of 8 PageID #: 3796
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“AGIS”) respectfully moves this Court for
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`leave to amend its Infringement Contentions pursuant to P.R. 3-6(b) (the “Motion”). Plaintiff
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`seeks leave to supplement its Infringement Contentions to address functionalities in Defendants
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`Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc.’s (“SEA”)
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`(collectively, “Samsung” or “Defendants”) Accused Products pursuant to AGIS’s timely filed
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`Amended Complaint pursuant to this Court’s Docket Control Order, attached hereto as Exhibits E
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`and G. Other than removing unasserted claims, the remaining Exhibits A-D and F have not been
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`changed. A redlined copy of AGIS’s Disclosures of Asserted Claims and Infringement Contentions
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`is attached for the Court’s reference is attached hereto as Exhibit H.
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`AGIS first noticed this Motion the same day that the Second Amended Complaint was
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`filed. However, Defendants delayed in the necessary meet and confer with AGIS necessary for
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`filing of this Motion until today. Accordingly, AGIS’s Motion is timely and in accordance with
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`the filing of the Second Amended Complaint.
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`II.
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`LEGAL STANDARDS
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`Local Patent Rule 3-1 requires a Plaintiff to state “[s]eparately for each asserted claim,
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`each accused apparatus, product, device, process, method, act, or other instrumentality (‘Accused
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`Instrumentality’) of each opposing party of which the party is aware[,]” “[a] chart identifying
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`specifically where each element of each asserted claim is found within each Accused
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`Instrumentality, including for each element that such party contends is governed by 35 U.S.C. §
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`112(¶ 6), the identity of the structure(s), act(s) or material(s) in the Accused Instrumentality that
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`performs the claimed function.” P.R. 3-1.
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`Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 3 of 8 PageID #: 3797
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`Local Patent Rule 3-6 requires a party seeking to amend or supplement any Infringement
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`Contentions, “other than as expressly permitted in P.R. 3-6(a), may be made only by order of the
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`Court, which shall be entered only upon a showing of good cause.” P.R. 3-6(b).
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`The Court considers four factors in determining whether good cause is shown: “(1) the
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`explanation for the failure to timely move for leave to amend, (2) the importance of what the Court
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`is excluding, (3) the potential prejudice if the Court allows the thing that would be excluded, and
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`(4) the availability of a continuance to cure such prejudice.” S&W Enterprises, L.L.C. v. South
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`Trust Bank of Alabama, NA, 315 F.3d 533, 536 (5th Cir. 2003).
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`III.
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`DISCUSSION
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`The good cause factors weigh in favor of granting AGIS’s motion for leave. AGIS seeks
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`to supplement its infringement contentions to address functionalities in Defendants’ Accused
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`Products pursuant to AGIS’s Amended Complaint.
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`First, AGIS seeks to supplement its infringement contentions in accordance with the
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`Second Amended Complaint, and accordingly there is no failure to meet the deadline. On June 16,
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`2023, AGIS filed its Second Amended Complaint pursuant to the deadline set forth by this Court
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`in the First Amended Docket Control Order. See Dkt. 66 at 5. AGIS was diligent in seeking to
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`amend its infringement contentions. AGIS immediately noticed this Motion on the same date,
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`June 16, 2023 but was unable to file due to Defendants’ delay in responding to AGIS’ repeated
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`requests to meet and confer regarding the Motion. AGIS now files this Motion on the same date
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`of the meet-and-confer teleconference in which Samsung finally confirmed that it opposes this
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`Motion. Accordingly, the requested supplementation is timely and in accordance with the Second
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`Amended Complaint, which was filed in compliance with this Court’s Docket Control Order.
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`Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 4 of 8 PageID #: 3798
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`Second, AGIS’s supplementation is important to this case where not allowing this
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`supplementation may result in additional litigation to settle AGIS’s claims against Samsung, rather
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`than resolving these infringement claims in this suit. See Commonwealth Sci. and Industrial
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`Research Org. v. Mediatek Inc., No. 6:12-cv-578, 2014 WL 12616679, at *2 (E.D. Tex. Aug. 4,
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`2014) (“However, it is important for the Court and the parties to deal with all possible infringement
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`claims under the ’069 Patent in the instant case, rather than requiring additional litigation.
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`Accordingly, CSIRO’s proposed amendments are important and favor granting leave under factor
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`2.”). In the Second Amended Complaint, AGIS stated that the Accused Products “include Find
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`My Device, an application provided on all Samsung devices with Android operating systems,
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`including but not limited to the above-listed Accused Products.” Dkt. 69 at 9.
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`Third, it would be prejudicial to exclude the supplementation to AGIS’s infringement
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`contentions and there is no potential prejudice against Defendants. Commonwealth Sci. and
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`Industrial Research Org., 2014 WL 12616679, at *2 (“Under factor 3, Defendants face little
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`prejudice based on CSIRO’s proposed amendments. The only prejudice identified by Defendants
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`is an obligation to respond to additional discovery requests. CSIRO’s discovery requests
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`concerning 802.11ac are already relevant since that revision is included in CSIRO’s amended
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`complaint.”). Like Commonwealth Sci. and Industrial Research Org., there would be no prejudice
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`to Defendants who would already be required to respond to additional discovery requests relevant
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`to Find My Device as this revision is included in AGIS’s Second Amended Complaint. AGIS’s
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`Second Amended Complaint clarified that any allegations against Find My Device are limited to
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`U.S. Patent Nos. 8,213,970 and 9,467,838. Id. at 9, n.4. The Second Amended Complaint did not
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`include any additional patents or claims. Accordingly, Defendants will not suffer any significant
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`harm from the proposed supplementation.
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`3
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`Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 5 of 8 PageID #: 3799
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`Fourth, AGIS submits that a continuance is not necessary where parties have not exchanged
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`any claim construction briefing, the Court has not yet ruled on claim construction, the final pre-
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`trial election of asserted claims and prior art is nearly four months away, and the deadline to
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`complete fact discovery is October 12, 2023. Commonwealth Sci. and Industrial Research Org.,
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`2014 WL 12616679, at *2 (“Finally, CSIRO’s proposed amendments demonstrate no need for a
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`continuance.”).
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`Accordingly, AGIS has demonstrated good cause for leave to amend its infringement
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`contentions and respectfully requests the Court grant its motion for leave.
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`Dated: June 28, 2023
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`Respectfully submitted,
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` /s/ Vincent J. Rubino, III
`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
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`Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 6 of 8 PageID #: 3800
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`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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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on June 28, 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/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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`Case 2:22-cv-00263-JRG-RSP Document 72 Filed 06/28/23 Page 8 of 8 PageID #: 3802
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`CERTIFICATE OF CONFERENCE
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`The undersigned hereby certifies that counsel for Plaintiff has met and conferred with
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`counsel for Defendants on June 28, 2023, and counsel for Defendants have indicated they oppose
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`this motion.
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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