Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 1 of 21 PageID #: 5245
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`Plaintiff,
`
`v.
`
`CIVIL ACTION NO. 2:22-cv-263-JRG
`(LEAD CASE)
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`JURY TRIAL DEMANDED
`
`Defendant.
`
`
`
`SAMSUNG’S RESPONSE TO PLAINTIFF AGIS SOFTWARE DEVELOPMENT
`LLC’S OPPOSED MOTION FOR LEAVE TO AMEND ITS DISCLOSURE OF
`ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`
`
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 2 of 21 PageID #: 5246
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`TABLE OF CONTENTS
`
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................ 2
`
`A.
`
`B.
`
`AGIS’s Past Litigations ......................................................................................... 2
`
`AGIS’s Allegations in This Litigation ................................................................... 4
`
`III.
`
`LEGAL STANDARD ........................................................................................................ 6
`
`IV.
`
`ARGUMENT ..................................................................................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`AGIS Did Not Act Diligently In Pursuing Its Allegations Against FMD ............. 7
`
`AGIS Does Not Provide A Reasonable Justification For Omitting FMD
`From Its Original Infringement Contentions ......................................................... 9
`
`AGIS’s Delay of this Requested Amendment Undermines Its Importance ........ 10
`
`Granting Leave to Amend Would Prejudice Samsung ........................................ 11
`
`A Continuance Would Not Cure The Prejudice Caused By AGIS’s Delay ........ 13
`
`V.
`
`CONCLUSION ................................................................................................................ 14
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 3 of 21 PageID #: 5247
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`Cases
`
`Commonwealth Sci. & Indus. Research Organisation v. Mediatek Inc.,
`No. 6:12-CV-578, 2014 WL 12616679 (E.D. Tex. Aug. 4, 2014) ..........................................12
`
`Finesse Wireless LLC v. AT&T Mobility LLC,
`No. 2:21-CV-00316-JRG-RSP, 2022 WL 16636930 (E.D. Tex. Nov. 2, 2022) .................7, 11
`
`Glob. Sessions LP v. Travelocity.com LP,
`No. 6:10CV671 ........................................................................................................................10
`
`In re Google LLC,
`No. 2022-140-42, 2022 WL 1613192 (Fed. Cir. May 23, 2022) ...............................................3
`
`Keranos, LLC v. Silicon Storage Tech., Inc.,
`797 F.3d 1025 (Fed. Cir. 2015)..................................................................................................6
`
`Oyster Optics, LLC v. Coriant (USA) Inc.,
`No. 2:16-CV-01302-JRG, 2018 WL 11448685 (E.D. Tex. Jan. 8, 2018) .......................6, 7, 10
`
`Packet Intelligence LLC, v. Netscout Sys., Inc.,
`No. 2:16-CV-230-JRG, 2017 WL 2531591 (E.D. Tex. Apr. 27, 2017)
`..................................................................................................................................7, 11, 12, 13
`
`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08-CV-144, 2009 WL 2590101 (E.D. Tex. Aug. 18, 2009) ......................................9, 13
`
`Statutes
`
`28 U.S.C. § 1498(a) .........................................................................................................................4
`
`Other Authorities
`
`Local Patent Rule 3-6.......................................................................................................................9
`
`Local Patent Rule 4-3.......................................................................................................................5
`
`
`
`
`ii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 4 of 21 PageID #: 5248
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`TABLE OF EXHIBITS
`
`
`B (Dkt. 72-3)
`
`C (Dkt. 72-4)
`
`D (Dkt. 72-5)
`
`E (Dkt. 72-6)
`
`F (Dkt. 72-7)
`
`G (Dkt. 72-8)
`
`H (Dkt. 72-9)
`
`Document
`Ex. Number
`Plaintiff’s Exhibits Filed With Plaintiff’s Opening Brief (Dkt. 72)
`A (Dkt. 72-2)
`AGIS’s Amended Disclosure of Asserted Claims and Infringement
`Contentions
`AGIS’s Amended Exhibit A for U.S. Patent No. 9,820, 123 to its Disclosure
`of Asserted Claims and Infringement Contentions
`AGIS’s Amended Exhibit B for U.S. Patent No. 9,749,829 to its Disclosure
`of Asserted Claims and Infringement Contentions
`AGIS’s Amended Exhibit C1 for U.S. Patent No. 8,213,970 to its
`Disclosure of Asserted Claims and Infringement Contentions
`AGIS’s New Exhibit C2 for U.S. Patent No. 8,213,970 to its Disclosure of
`Asserted Claims and Infringement Contentions
`AGIS’s Amended Exhibit D1 for U.S. Patent No. 9,467,838 to its
`Disclosure of Asserted Claims and Infringement Contentions
`AGIS’s New Exhibit D2 for U.S. Patent No. 9,467,838 to its Disclosure of
`Asserted Claims and Infringement Contentions
`Redline of AGIS’s Amended Disclosure of Asserted Claims and
`Infringement Contentions
`Defendants’ Additional Exhibits Filed With This Brief
`1
`List of AGIS District Court and ITC Cases Pulled from Docket Navigator
`2
`AGIS’s 2017 Complaint Against ZTE
`3
`AGIS’s 2017 Complaint Against Apple
`4
`AGIS’s 2017 Complaint Against LG
`5
`AGIS’s 2017 Complaint Against HTC
`6
`AGIS’s 2017 Complaint Against Huawei
`7
`AGIS’s 2019 Complaint Against Google (Google I)
`8
`AGIS’s 2019 Complaint Against Samsung (Samsung I)
`9
`AGIS’s 2019 Complaint Against Waze
`10
`AGIS’s 2022 ITC Complaint against Google, Samsung, and 11 Other
`Respondents
`Initial Determination on AGIS’s June 15, 2023 Motion to Terminate ITC
`Investigation
`AGIS’s 2023 Complaint Against Google (Google II)
`Google’s Unopposed Motion to Stay the Google II Case
`AGIS Email Chain Noticing Samsung of its Intention to File the Pending
`Motion for Leave
`AGIS Email Chain Raising “Group” Claim Construction Issue
`AGIS Supplemental Claim Construction Brief on “Group” from the ITC
`Investigation
`AGIS Infringement Claim Chart from the Google I Case for FMD for the
`’970 Patent
`AGIS Infringement Claim Chart from the Google I Case for FMD for the
`’838 Patent
`
`11
`
`12
`13
`14
`
`15
`16
`
`17
`
`18
`
`
`
`iii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 5 of 21 PageID #: 5249
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`
`
`I.
`
`INTRODUCTION
`
`AGIS’s belated attempt to inject into this case infringement theories that it has known about
`
`and been litigating for six years should be denied. AGIS seeks leave to amend its infringement
`
`contentions to add a new accused product, Google’s Find My Device (“FMD”) application, but its
`
`motion omits any mention of AGIS’s six-year history of litigations against FMD across dozens of
`
`cases and its prior representations to this Court, just a few months ago, that this case does not
`
`concern FMD. Since 2017, AGIS has asserted its patents, including U.S. Patent Nos. 9,467,838
`
`(“’838 Patent”) and 8,213,970 (“’970 Patent”), across 35 different district court and International
`
`Trade Commission (“ITC”) cases, including three previous cases against Samsung. From the
`
`beginning, AGIS asserted the ’838 and ’970 Patents and related patents against FMD. Yet, when
`
`AGIS filed this case a year ago, AGIS affirmatively chose not to accuse FMD to avoid stay and
`
`dismissal. In fact, in January 2023, in opposing Samsung’s motions to stay and dismiss this case
`
`because of claim splitting and redundancies with other pending cases against Samsung, AGIS
`
`represented that this case does not concern Google software, including FMD, and that AGIS’s
`
`claims against FMD were separately being addressed in its other cases.
`
`Against this backdrop, AGIS cannot meet its burden of demonstrating good cause to add
`
`new infringement allegations against FMD. At the outset, AGIS has been far from diligent in
`
`proposing to add these FMD allegations, given that it has known about them for at least six years
`
`and intentionally omitted them from this case when it was filed a year ago to avert a stay or
`
`dismissal. AGIS also lacks good cause under the four factors that courts in this District consider
`
`in evaluating motions to amend contentions: (1) AGIS offers no justification for its delay in adding
`
`FMD allegations, which AGIS has litigated in other cases since 2017; (2) AGIS’s deliberate
`
`omission of FMD from this case and prior representations that this case does not concern FMD
`
`belie AGIS’s claims about the importance of the proposed amendment; (3) Samsung would be
`
`1
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`

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`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 6 of 21 PageID #: 5250
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`
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`prejudiced by having to defend against entirely new claims a year into the case and after the parties
`
`have already finalized their claim construction positions and with the deadline for substantial
`
`completion of document production nearing; and (4) a continuance would not cure the prejudice
`
`and would instead create a risk that claim construction would need to be reopened and discovery
`
`expanded. The Court should thus deny AGIS’s motion for leave to add allegations against FMD.
`
`II.
`
`FACTUAL BACKGROUND
`
`On June 21, 2017, AGIS began its patent-assertion campaign, which remains ongoing
`
`today and has expanded into 35 different district court and ITC cases. Ex. 1, List of AGIS Cases.
`
`A.
`
`AGIS’s Past Litigations
`
`In its first round of lawsuits filed in 2017, AGIS sued ZTE, LG, HTC, Huawei, and Apple
`
`for alleged infringement of the ’838 and ’970 Patents, among other patents. Ex. 2, ZTE Complaint
`
`¶¶ 1, 7-10; Ex. 3, Apple Complaint ¶¶ 1, 6-9; Ex. 4, LG Complaint ¶¶ 1, 6-9; Ex. 5, HTC Complaint
`
`¶¶ 1, 6-9; Ex. 6, Huawei Complaint ¶¶ 1, 8-11. In each of the ZTE, LG, HTC, and Huawei
`
`complaints, AGIS alleged infringement of the ’838 and ’970 Patents based on FMD. Ex. 2, ZTE
`
`Compliant ¶¶ 21, 56; Ex. 4, LG Complaint ¶¶ 20, 55; Ex. 5, HTC Complaint ¶¶ 20, 55; Ex. 6,
`
`Huawei Complaint ¶¶ 22, 57. Each of these cases settled in 2019.
`
`Later in 2019, AGIS filed a second round of lawsuits, this time against Samsung, Google,
`
`and Waze. Ex. 7, Google I Complaint; Ex. 8, Samsung I Complaint; Ex. 9 Waze Complaint. AGIS
`
`asserted the ’838 and ’970 Patents against Google and alleged infringement of the ’970 Patent
`
`based on FMD. Ex. 7, Google I Complaint ¶¶ 1, 92-93. Against Samsung, AGIS alleged that
`
`Samsung devices running FMD infringed U.S. Patent No. 9,749,829 (“’829 Patent”), which is
`
`related to the ’970 and ’838 Patents. Ex. 8, Samsung I Complaint ¶¶ 1, 21, 35-36. This second
`
`round of cases proceeded in this Court until the Federal Circuit ordered transfer to the Northern
`
`2
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`

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`
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`District of California (“NDCA”) on May 23, 2022. In re Google LLC, No. 2022-140-42, 2022
`
`WL 1613192, at *1 (Fed. Cir. May 23, 2022). Each case is currently pending in NDCA.1
`
`On July 14, 2022, AGIS filed this case as a second lawsuit against Samsung asserting the
`
`’838 and ’970 Patents and three other patents, while maintaining its litigation against Samsung in
`
`the NDCA against FMD. Dkt. 1. AGIS’s Original Complaint did not assert any claims based on
`
`FMD or any other Google-developed software. See id.
`
`On November 16, 2022, AGIS filed an ITC action against Google, Samsung, and eleven
`
`other respondents. Ex. 10, ITC Complaint. Against all respondents, including Samsung, AGIS
`
`alleged infringement of five patents, including the ’838 and ’970 Patents, and asserted the ’970
`
`Patent against FMD. Id. ¶¶ 3. On June 15, 2023—just one day before informing Samsung of its
`
`intention to amend its infringement contentions in this case—AGIS moved to terminate its ITC
`
`investigation. Ex. 11, Initial Determination on AGIS Motion to Terminate ITC Investigation.
`
`On March 1, 2023, AGIS filed another action against Google, this time in the Western
`
`District of Texas (“WDTX”), asserting the ’970 Patent against FMD. Ex. 12, Google II Complaint,
`
`¶¶ 1, 14. Google filed an unopposed motion to stay pending the outcome of the ITC investigation.
`
`Ex. 13, Unopposed Motion to Stay Google II, at 3 n.1.
`
`The table below summarizes the numerous litigations where AGIS has asserted
`
`infringement claims based on FMD:
`
`Defendants
`
`ZTE, LG Electronics, HTC,
`Huawei
`
`Forum /
`Filing Date
`EDTX /
`June 2017
`
`Patents
`
`Status
`
`’970, ’838,
`’251, ’055,
`
`Settled before trial in 2019.
`
`
`1 If the Court is inclined to grant AGIS leave to amend its contentions to add allegations against
`FMD, Samsung intends to move to sever and transfer those allegations to NDCA, following the
`Federal Circuit’s guidance. Samsung has proposed to AGIS severance and transfer of the FMD
`allegations to AGIS, but AGIS rejected that proposal.
`
`3
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`

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`
`
`
`
`Defendants
`
`Google
`
`Samsung
`
`Google, Samsung, OnePlus, TCL,
`Lenovo, Sony, HMD, ASUS,
`BLU, Panasonic, Kyocera,
`Xiaomi, Caterpillar
`
`Forum /
`Filing Date
`NDCA /
`Nov. 2019
`
`NDCA /
`Nov. 2019
`ITC /
`Nov. 2022
`
`OnePlus, TCL, Lenovo, Sony,
`HMD, ASUS, BLU, Panasonic,
`Kyocera, Xiaomi, Caterpillar
`
`EDTX /
`Nov. 2022
`
`Google
`
`WDTX /
`Mar. 2023
`
`Patents
`
`Status
`
`’970, ’838,
`’055, ’251,
`’829, ’123
`
`Transferred from EDTX to
`NDCA. Actively pending.
`
`’970 Patent voluntarily
`dismissed on April 10, 2023.
`’123, ’829 Transferred from EDTX to
`NDCA. Currently stayed.
`Terminated and withdrawn
`by AGIS in June 2023.
`
`Caterpillar, Xiaomi, Kyocera,
`and Oneplus settled before
`termination.
`Stayed pending ITC.
`
`’970, ’838,
`’251, ’829,
`’123
`
`
`’970, ’838,
`’251, ’829,
`’123
`
`’970
`
`Stayed pending ITC. AGIS
`has agreed to transfer to
`NDCA following stay.
`
`B.
`
`AGIS’s Allegations in This Litigation
`
`AGIS filed this case against Samsung nearly a year ago in July 2022, asserting the ’838
`
`and ’970 Patents, along with three other patents and while maintaining its litigation against FMD
`
`against Samsung in the NDCA. Dkt. 1. AGIS’s Original Complaint alleged infringement based
`
`on Samsung devices running the TAK, ATAK, and CivTAK software applications, which were
`
`developed by the U.S. government. Id. ¶ 16. Shortly after Samsung informed AGIS that the claims
`
`against those government applications triggered a defense under 28 U.S.C. § 1498(a), AGIS filed
`
`its First Amended Complaint adding allegations against Samsung’s Knox software, running on
`
`Samsung devices. Dkt. 29 ¶ 16. In neither complaint did AGIS make any claims against FMD or
`
`any Google-developed software.
`
`4
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`

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`
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`In fact, AGIS has repeatedly disclaimed that FMD is part of this case to avoid a stay or
`
`dismissal in view AGIS’s other litigations. Just a few months ago, in opposing Samsung’s motion
`
`to stay this case, AGIS unequivocally represented that this case does not concern “Google
`
`applications,” including FMD:
`
`The accused products for the instant AGIS-Samsung II case do not concern the
`Google applications. Neither the complaint nor the amended complaint refers to
`any Google applications. In fact, prior to the filing of Samsung’s Motion, AGIS’s
`discovery requests expressly stated that the accused products do not include the
`Google applications accused before the NDCA and ITC. (Dkt. 41 at 2.) (emphasis
`added)
`
`AGIS similarly asserted in its opposition to a motion to dismiss filed by Samsung that
`
`“[t]he present action alleges infringement . . . by a . . . set of non-Google applications.” Dkt. 42 at
`
`17. To support these representations, AGIS cited the definition of “Accused Products” in its
`
`interrogatories to Samsung: “the term ‘Accused Products’ does not include the Google Find My
`
`Device application.” Dkt. 41-4 at 4; Dkt. 42-14 at 4.
`
`On June 16, 2023, the parties filed their Local Patent Rule 4-3 statement, which included
`
`the parties’ final claim construction proposals. Dkt. 67. That same day, the parties filed a joint
`
`motion requesting that the Court adopt their agreed constructions, which the Court granted on June
`
`21, 2023. Dkt. 68, 70. The parties’ agreed to constructions included the term “group” as meaning
`
`“more than two participants associated together.” Dkt. 68.
`
`Also on June 16, just one day after moving to terminate its ITC investigation, AGIS filed
`
`its Second Amended Complaint, asserting for the first time in this case, infringement allegations
`
`against FMD for the ’838 and ’970 Patents. Dkt. 69, ¶¶ 25, 36.
`
`Shortly thereafter, AGIS asked Samsung whether it would oppose a motion for leave to
`
`amend its infringement contentions to add allegations against FMD for the ’838 and ’970 Patents.
`
`Ex. 14, AGIS Email Chain Noticing Samsung of Its Motion for Leave. Samsung requested a copy
`
`5
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`

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`
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`of AGIS’s amended contentions, which AGIS did not provide until June 23. Id. The parties then
`
`met and conferred on June 28, and AGIS filed its motion for leave later that day. Dkt. 72.
`
`Three days later on June 19, AGIS also tried to raise a new claim construction issue for the
`
`previously-construed “group” term in the ’838 Patent. Ex. 15, AGIS Email Chain Raising Group
`
`Claim Construction Issue. AGIS asserted that “participants” in the agreed construction of “group”
`
`should be construed to include “devices.” Id. Unsurprisingly, this is the same position that AGIS
`
`took in the ITC investigation as the interpretation of “participants” was relevant to non-
`
`infringement issues for FMD. Ex. 16, AGIS Supplemental Claim Construction Brief on Group.
`
`Samsung has asked AGIS to explain why the meaning of “participants” is relevant to issues in this
`
`case because AGIS had never raised the interpretation issue before and the interpretation of
`
`“participants” only appeared relevant to FMD. Ex. 15, AGIS Email Chain Raising Group Claim
`
`Construction Issue. In a later telephonic meet and confer, AGIS explained that the term
`
`“participants” is relevant to its allegations against FMD, and AGIS has filed an opposed motion
`
`for leave to construe “participants.” Dkt. 82.
`
`III. LEGAL STANDARD
`
`Local Patent Rule (“PR”) 3-1 requires that “a party claiming patent infringement must
`
`serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions.’”
`
`“Amendment or supplementation of any Infringement Contentions or Invalidity Contentions[] . . .
`
`may be made only by order of the Court, which shall be entered only upon a showing of good
`
`cause.” Local PR 3-6(b).
`
`A showing of good cause “requires a showing of diligence.” Oyster Optics, LLC v. Coriant
`
`(USA) Inc., No. 2:16-CV-01302-JRG, 2018 WL 11448685, at *1 (E.D. Tex. Jan. 8, 2018); see also
`
`Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015). Accordingly,
`
`courts in this District deny leave to amend infringement contentions where a plaintiff’s “actions
`
`6
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`

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`
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`fall short of the required diligence.” See Finesse Wireless LLC v. AT&T Mobility LLC, No. 2:21-
`
`CV-00316-JRG-RSP, 2022 WL 16636930, at *3 (E.D. Tex. Nov. 2, 2022). In addition to
`
`considering diligence, when determining whether there is good cause to amend infringement
`
`contentions, courts in this District also consider four factors: “(1) the explanation for the failure to
`
`meet the deadline; (2) the importance of the thing that would be excluded if the proposed
`
`amendment is not allowed; (3) potential prejudice in allowing the thing that would be excluded;
`
`and (4) the availability of a continuance to cure such prejudice.” Id. at *2.
`
`IV. ARGUMENT
`
`AGIS has not acted diligently in seeking to add its allegations against FMD, and its motion
`
`for leave should be denied on that basis alone. Additionally, the other four factors that this District
`
`considers in evaluating good cause all weigh against granting leave.
`
`A.
`
`AGIS Did Not Act Diligently In Pursuing Its Allegations Against FMD
`
`Far from acting diligently, AGIS made an affirmative decision not to include FMD in either
`
`of its original Complaint or its First Amended Complaint before changing course a year after this
`
`suit began, as part of an orchestrated strategy to avoid a stay or dismissal of this case in view of its
`
`other overlapping cases against Samsung. Courts in this district have found that plaintiffs were
`
`not diligent when they had access to, or could have sought, information necessary to supplement
`
`their contentions and could have supplemented their contentions sooner. See Oyster Optics, 2018
`
`WL 11448685, at *2 (finding lack of diligence where the products sought to be added to the
`
`contentions were listed in the complaint); Packet Intelligence LLC, v. Netscout Sys., Inc., No. 2:16-
`
`CV-230-JRG, 2017 WL 2531591, at *3 (E.D. Tex. Apr. 27, 2017) (finding lack of diligence where
`
`plaintiff could have sought the information sooner in discovery); Finesse, 2022 WL 16636930, at
`
`*3 (finding lack of diligence where a plaintiff waited eight months to amend its infringement
`
`7
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`

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`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 12 of 21 PageID #: 5256
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`
`
`contentions even though it had access to the information added in the amendment during those
`
`months).
`
`AGIS’s litigation history demonstrates that AGIS has known about its infringement
`
`theories against FMD since at least 2017 when it sued LG, HTC, Huawei, and ZTE for alleged
`
`infringement of the ’838 and ’970 Patents based on FMD. Ex. 2, ZTE Compliant ¶¶ 21, 56; Ex.
`
`4, LG Complaint ¶¶ 20, 55; Ex. 5, HTC Complaint ¶¶ 20, 55; Ex. 6, Huawei Complaint ¶¶ 22, 57.
`
`AGIS then continued to pursue its litigation campaign against FMD with its 2019 suits against
`
`Google, asserting that FMD infringes the ’838 and ’970 Patents and against Samsung that FMD
`
`running on Samsung devices infringes the related ’829 Patent. Ex. 7, Google I Complaint ¶¶ 1,92-
`
`93; Ex. 8, Samsung I Complaint ¶¶ 1, 21, 35-36. And just over two weeks before AGIS served its
`
`original infringement contentions in this case, on December 1, 2022, AGIS filed an ITC complaint
`
`against Samsung (as well as Google and eleven other companies) alleging that Samsung devices
`
`infringe the ’970 Patent (as well as the ’829 Patent) because they allegedly run FMD software.
`
`Ex. 10, ITC Complaint. Thus, despite knowing of its FMD infringement theories since well before
`
`its original infringement contentions were due and concurrently asserting FMD against Samsung
`
`in other cases, AGIS delayed until now, a year into this case, to seek to add these allegations
`
`against FMD. AGIS’s delay has been driven by gamesmanship, as it represented that this lawsuit
`
`does not concern FMD to avoid a stay pending the ITC action, only then to recently switch course
`
`after AGIS withdrew its ITC action and after the parties finalized their claim construction
`
`proposals in this case. And notably, AGIS’s proposed infringement claim charts for FMD appear
`
`to duplicate its infringement charts in prior cases. See Ex. 17, AGIS Infringement Claim Chart for
`
`FMD for the ’970 Patent; Ex. 18, AGIS Infringement Claim Chart for FMD for the ’838 Patent.
`
`8
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`Case 2:22-cv-00263-JRG-RSP Document 85 Filed 07/13/23 Page 13 of 21 PageID #: 5257
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`
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`These facts present the exact opposite of a scenario where AGIS only recently uncovered
`
`new information about FMD. Rather, AGIS has known about—and has been continuously
`
`litigating—its FMD infringement theories for at least six years but deliberately chose to not assert
`
`them until a year into the case. AGIS’s motion for leave should be denied based on AGIS’s
`
`purposeful lack of diligence and gamesmanship. See Realtime Data, LLC v. Packeteer, Inc., No.
`
`6:08-CV-144, 2009 WL 2590101, at *5 (E.D. Tex. Aug. 18, 2009) (“Waiting nine months after
`
`serving the Original Infringement Contentions to seek leave to amend is not a reasonable period
`
`of time . . . .”).
`
`B.
`
`AGIS Does Not Provide A Reasonable Justification For Omitting FMD From
`Its Original Infringement Contentions
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`In its motion, AGIS fails to provide any reasonable justification for omitting its FMD
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`allegations from its original December 1, 2022 infringement contentions, nor could it since AGIS
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`has known about FMD since at least 2017 and AGIS strategically chose to omit FMD from this
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`case to avoid stay and dismissal. See Dkt. 72. AGIS’s only argument is that its proposed
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`amendments are timely because it provided notice of its motion to amend on the same day—the
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`deadline for amended pleadings—that it filed its Second Amended Complaint, which also added
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`allegations against FMD. Dkt. 72 at 2; Dkt. 66.
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`But AGIS cites no authority supporting its position that it has free reign to amend its
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`infringement contentions up to the deadline for amending pleadings. Indeed, AGIS’s position
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`contravenes Local PR 3-6, which provides that “[e]ach party’s ‘Infringement Contentions’ . . .
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`shall be deemed to be that party’s final contentions” except in the narrow situations where “the
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`Court’s Claim Construction Ruling so requires” or where the Court grants leave to amend “upon
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`a showing of good cause.” Rule 3-6 provides no exception allowing amendment of contentions
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`concurrently with an amended pleading. Oyster Optics, 2018 WL 11448685, at *2 (finding lack
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`of diligence where the products sought to be added to the contentions were listed in the complaint).
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`AGIS’s position also tries to key diligence off the wrong date—the date of its Second
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`Amended Complaint—rather than the earliest date when AGIS could have asserted its FMD
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`claims. See Glob. Sessions LP v. Travelocity.com LP, No. 6:10CV671 LED-JDL, 2012 WL
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`1903903, at *4 (E.D. Tex. May 25, 2012) (finding no diligence where the claims sought to be
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`added to the infringement contentions could have been included in the original infringement
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`contentions using publicly available information). AGIS knew about its claims against FMD for
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`years before December 1, 2022, when AGIS served its original contentions. AGIS could have
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`asserted its claims against FMD in its original infringement contentions, but strategically chose
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`not to while repeatedly representing to this Court that this case does not concern Google-developed
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`software such as FMD. Dkt. 41 at 2; Dkt. 42 at 17.
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`C.
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`AGIS’s Delay of this Requested Amendment Undermines Its Importance
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`AGIS’s deliberate decision to omit FMD from its original complaint and contentions, as
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`well as AGIS’s representations that it was not accusing FMD in this case, belie AGIS’s claim that
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`its belated request to add FMD now is important to this case. Dkt. 41 at 2; Dkt. 42 at 17.
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`AGIS argues that it is important for its FMD allegations to be injected into this case to
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`avoid having to file another lawsuit. AGIS’s purported concern over multiplying litigations is
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`disingenuous given its history. AGIS has now filed 35 district-court and ITC cases, including 27
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`different cases in Texas. Ex. 1, List of AGIS Cases. Three of those cases were filed against
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`Samsung—(1) AGIS’s 2019 case filed in this District accusing FMD, which has been transferred
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`to the NDCA; (2) AGIS’s ITC action filed in 2022, accusing FMD of infringing the ’970 Patent;
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`and (3) this case. Id. Similarly, AGIS has sued Google in four different cases, accusing FMD. Id.
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`Given AGIS’s clear history of choosing to multiply its litigations against Samsung, its claimed,
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`newfound concern for avoiding additional litigation rings hollow. If the FMD allegations were
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`important, they would have been in the case already. This factor thus favors denying leave.
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`D.
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`Granting Leave to Amend Would Prejudice Samsung
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`Because AGIS waited to seek leave to amend its infringement contentions until a year into
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`the case—after the parties finalized their claim construction proposals for their Local P.R. 4-3
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`submission and just five weeks before the deadline for substantial completion of document
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`productions—granting AGIS leave to add FMD would substantially prejudice Samsung. This
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`Court has found an amendment to be highly prejudicial where it attempts to add allegations that
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`are different than already-pending allegations close to the end of fact discovery. See Finesse, 2022
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`WL 16636930, at *3 (finding an amendment highly prejudicial where it added new accused
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`products that were different from the already accused products and was served just before the close
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`of fact discovery). Additionally, courts in this District have found amendments proposed after the
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`parties have already provided their final proposed constructions to be prejudicial. See Packet
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`Intelligence LLC, 2017 WL 2531591, at *3 (finding an amendment proposed two days before the
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`Markman hearing to be prejudicial to the defendants because it “penalizes them for narrowing the
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`scope of the disputed terms”).
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`AGIS’s proposed amendments would be prejudicial at this late date, particularly since they
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`would add allegations against functionality (i.e., FMD) that is not only entirely new and different
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`than the functionalities already asserted in this case, but that was also developed by a different
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`company (Google). Indeed, the prejudice to Samsung is confirmed by AGIS’s recent attempts to
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`inject a new dispute regarding the scope of the parties’ previously-agreed-to construction for the
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`“group” term. Days after providing notice of its intent to file its motion for leave, AGIS asked
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`Samsung for its position on the scope of the parties’ agreed construction for “group,” specifically
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`whether Samsung would agree that the word “participants” in the construction includes “devices.”
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`Ex. 15, AGIS Email Chain Raising Group Claim Construction Issue. This new claim construction
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`dispute is relevant only if FMD is part of this case. See id.; Ex. 16, AGIS Supplemental Claim
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`Construction Brief on Group. AGIS’s actions confirm that if the Court grants AGIS leave,
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`Samsung will either be penalized for having tried to narrow the number of disputed terms by
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`agreeing to the construction of “group” or forced to engage in supplemental claim-construction
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`proceedings—both outcomes that will prejudice Samsung. See Packet Intelligence LLC, 2017 WL
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`2531591, at *2, 2 n.2.
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`AGIS argues that granting leave would not be prejudicial because Samsung would only
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`have to respond to additional discovery requests relevant to FMD and cites Commonwealth Sci. &
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`Indus. Research Organisation v. Mediatek Inc., No. 6:12-CV-578, 2014 WL 12616679, at *2 (E.D.
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`Tex. Aug. 4, 2014). But AGIS disregards the additional prejudice that would result from needing
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`supplemental claim construction as discussed above. Commonwealth Sci. is also distinguishable
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`because it involved a situation where the products sought to be added (modem integrated circuit
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`chips using the “802.11ac” wireless standard) were similar to the products already accused in the
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`original infringement contentions (modem integrated circuit chips using the “802.11n” wireless
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`standard). See id. In contrast, here, AGIS is seeking leave to add allegations directed to FMD, a
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`Google-developed application that—as AGIS itself has emphasized in opposing Samsung’s
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`motions to stay and dismiss—is entirely different in operation from the TAK, ATAK, CivTAK,
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`and Knox applications that were developed by Samsung or other organizations and are accused in
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`the current infringement contentions. See Dkt. No. 72-9.
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`Commonwealth Sci. is further distinguishable because there, the plaintiff argued that the
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`defendants had improperly withheld discovery concerning the new products. See 2014 WL
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`12616679, at *2. The facts here present nearly the reverse situation. After Samsung’s motions to
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`Case 2:22-cv