Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 1 of 8 PageID #: 5201
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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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`PLAINTIFF’S OPPOSED MOTION FOR LEAVE TO AMEND P.R. 4-3 DISCLOSURES
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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 82 Filed 07/11/23 Page 2 of 8 PageID #: 5202
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”) respectfully moves
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`this Court for leave to amend the P.R. 4-3 Disclosures. Defendants Samsung Electronics Co., Ltd.
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`and Samsung Electronics America, Inc. (collectively, “Defendants”) oppose this motion.
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`Pursuant to the Court’s First Amended Docket Control Order (Dkt. No. 66), the parties
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`submitted the Joint P.R. 4-3 Claim Construction and Prehearing Statement, which provided the
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`parties’ agreed and disputed terms. See Dkt. 67. Following the parties’ submission of the P.R. 4-
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`3 Disclosure, an additional dispute arose regarding the agreed construction of the “group” term.
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`Specifically, with respect to the agreed construction of “group” to mean “more than two
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`participants associated together,” the parties disagree on whether the term “participants” should be
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`interpreted to exclude “devices.” Accordingly, Plaintiff respectfully requests leave to submit an
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`amended P.R. 4-3 Disclosure with respect to the “participants” term within the agreed construction
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`of “group.”
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`II. LEGAL STANDARDS
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`Pursuant to Patent Local Rule 4-3, parties are to submit a “Joint Claim Construction and
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`Prehearing Statement, which shall contain the following information: (1) The construction of those
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`claim terms, phrases, or clauses on which the parties agree; (2) Each party’s proposed claim
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`construction or indefiniteness position for each disputed claim term, phrase, or clause, together
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`with an identification of all reference from the specification or prosecution history that support
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`that position, and an identification of any extrinsic evidence known to the party on which it intends
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`to rely either to support its position or to oppose any other party’s position, including, but not
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`limited to, as permitted by law, dictionary definitions, citations to learned treatises and prior art,
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`and testimony of percipient and expert witnesses.”
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`Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 3 of 8 PageID #: 5203
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`The Court considers four factors in determining whether good cause is shown: “(1)
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`explanation for failure to timely move for leave to amend, (2) importance of the amendment, (3)
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`potential prejudice in allowing amendment, and (4) availability of continuance to cure such
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`prejudice.” S&W Enterprises, L.L.C. v. South Trust Bank of Alabama, NA, 315 F.3d 533, 536 (5th
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`Cir. 2003).
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`III. DISCUSSION
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`The good cause factors weigh in favor of granting AGIS’s motion to amend the P.R. 4-3
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`Disclosures.
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`First, AGIS seeks to amend its P.R. 4-3 Disclosures to address a dispute regarding the
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`“group” term. While the First Amended Docket Control Order set forth a deadline of June 16,
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`2023 to comply with P.R. 4-3 Disclosures, the parties have not submitted any claim construction
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`briefing. See Dkt. 66. Any amendments come ahead of the briefing schedule and claim
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`construction hearing, and thus, parties would have sufficient opportunity to address any disputes
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`in its briefing. AGIS did not delay because it raised this issue shortly after the construction was
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`entered. See Dkt. 70.
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`Three days after the June 16, 2023 deadline, AGIS requested that Defendants Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Defendants”) confirm
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`that “devices fall within the scope of ‘participants’ and that Samsung will not argue that
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`‘participants’ must be limited to users.” See Ex. A, Email from E. Iturralde to Defendants, dated
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`June 19, 2023. AGIS also disclosed that its position is that “devices fall within the scope of the
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`‘participants.’” Id. Confirming the parties’ material dispute over the scope of the “participants”
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`term, Defendants expressly disagreed with AGIS’s position. Ex. B, Email from N. Sirota to AGIS,
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`dated June 22, 2023. Regardless of any attempt to argue that, as a matter of procedure or timing,
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`Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 4 of 8 PageID #: 5204
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`the Court should not include this dispute in the claim construction proceedings, the fact remains
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`that the parties’ now dispute the scope of “participants” and there is plenty of time for the Court
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`to hear the parties’ positions and resolve the dispute. The parties and the Court stand to gain
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`nothing from avoiding this potential O2 Micro issue. Ex. C, Email from E. Iturralde to Defendants,
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`dated June 28, 2023. Despite Samsung’s confirmation of a material dispute and the pre-briefing
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`and pre-hearing stage of the case, Defendants inexplicably maintained that the issue should not be
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`included in this case. To the extent Samsung argues delay or untimeliness, AGIS raised this issue
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`on June 19, 2023 and provided Samsung ample opportunity to consider the issue. AGIS provided
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`Samsung with a draft joint motion setting forth the parties’ positions. Samsung declined and
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`delayed conferring on the issue until July 10, 2023. AGIS now files this motion for leave one day
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`after receiving a final confirmation of Samsung’s position of opposition.
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`Second, AGIS’s amendment is important to this case where any claim construction issues
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`must be addressed prior to discovery, expert reports, and dispositive motions. As AGIS stated to
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`Defendants, “this issue is relevant to infringement because Samsung intends to advance a non-
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`infringement argument based on at interpretation that ‘devices’ are not within the scope of
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`‘participant.’” Ex. D, AGIS’s position is not speculative. In a co-pending case, Defendants’ co-
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`counsel, which also represents Google in the co-pending case, pursued non-infringement
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`arguments alleging that the same agreed construction of the term “group” to mean “more than two
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`participants associated together” should be further interpreted to exclude “devices”. AGIS
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`Software Development LLC v. Google LLC, No. 5:22-CV-04826-BLF, Dkt. 434 at 4 (N.D. Cal.
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`Apr. 3, 2023) (“Thus, the ‘group’ limitations require (1) joining a group of more than two users
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`with devices and (2) sharing location information bidirectionally among them.”); id. at 12 (“FMD
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`can only be used by a single user and does not support location sharing between different users.”);
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`Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 5 of 8 PageID #: 5205
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`id. at 13 (“To the extent AGIS argues that in situations where a user has more than two devices,
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`those devices—of the same single user—constitute a ‘group,’ that argument is foreclosed by the
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`construction of ‘group’ as requiring ‘more than two participants,’ which refers to human users, not
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`devices . . .”). AGIS timely raised this issue to the Defendants here shortly before it filed its
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`briefing in opposition to Google LLC’s summary judgment motion. See AGIS Software
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`Development LLC v. Google LLC, No. 5:22-CV-04826-BLF, Dkt. 452 (N.D. Cal. June 14, 2023).
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`Defendants confirmed the dispute and rejected AGIS’s offer to stipulate that Defendants would
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`not raise such non-infringement arguments in this case. Ex. E. Given the material dispute, which
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`involves three of four Asserted Patents and all Accused Products, AGIS submits that a construction
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`is necessary.
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`Third, it would be prejudicial to exclude the construction of “group” from claim
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`construction where there is a dispute that requires resolution by this Court. The “group” term
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`appears in three of the four Asserted Patents and requires construction for infringement. See, e.g.,
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`Dkt. 72-3 at A-18 – A-33, 72-4 at B-19 – B-42, 72-7 at D1-18 – D1-33, 72-8 at D2-5 – D2-24.
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`See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008)
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`(“[C]laim construction requires the court to determine what claim scope is appropriate in the
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`context of the patents-in-suit.”); id. (“Rather, ‘[c]laim construction is a matter of resolution of
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`disputed meanings and technical scope, to clarify and when necessary to explain what the patentee
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`covered by the claims, for use in the determination of infringement. When the parties present a
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`fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”)
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`(internal citations omitted). There is no prejudice to Defendants where parties have not yet briefed
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`the disputed claim terms and the Court will not hold the Markman hearing until September 6, 2023.
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`Rather, it would only be prejudicial if the parties expend additional resources on arguing past each
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`Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 6 of 8 PageID #: 5206
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`other on the interpretation of a disputed construction term and later submit additional briefing and
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`supplemental reports addressing the same dispute presently known to the parties. The most
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`efficient and non-prejudicial path forward is for the Court to hear the issue at the September 6,
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`2023 Markman hearing.
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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 held a claim construction hearing or issued
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`a claim construction order, and there is sufficient time for parties to address any disputes with
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`respect to the “group” term. Any delay has been the result of Defendants deliberate attempt to
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`drag this issue out after AGIS raised the issue on June 19, 2023. Defendants have stated that they
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`disagree with AGIS’s position.
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`Accordingly, AGIS has demonstrated good cause to amend the P.R. 4-3 Disclosures and
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`respectfully requests the Court grant its motion for leave.
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`In addition, given the deadline in this Court’s First Amended Docket Control Order for
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`AGIS’s Opening Claim Construction Brief (Dkt. 66), AGIS has requested an expedited briefing
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`schedule for the instant motion. Defendants have indicated they oppose.
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`Dated: July 11, 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
`FABRICANT LLP
`411 Theodore Fremd Avenue
`Suite 206 South
`Rye, New York 10580
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`Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 7 of 8 PageID #: 5207
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`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`Samuel F. Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`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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`Case 2:22-cv-00263-JRG-RSP Document 82 Filed 07/11/23 Page 8 of 8 PageID #: 5208
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on July 11, 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/ Aflred R. Fabricant
` Alfred R. Fabricant
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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 July 10, 2023, and counsel for Defendants have indicated they oppose.
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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