Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 1 of 24 PageID #: 7406
`
`
`
`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
`MOTION TO DISMISS DEFENDANTS SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.’S NINTH COUNTERCLAIM AND TO
`STRIKE DEFENDANTS’ SIXTH AND SIXTEENTH AFFIRMATIVE DEFENSES
`
`
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 2 of 24 PageID #: 7407
`
`TABLE OF CONTENTS
`
`
`Page
`
`I.
`
`FACTUAL BACKGROUND ............................................................................................ 2
`
`A.
`
`B.
`
`C.
`
`The Federal Circuit’s Indefiniteness Finding In AGIS’s Life360 Litigation ........ 2
`
`The AGIS I Prosecution Bar Prohibited AGIS’s Litigation Attorneys From
`Participating In Claim Amendments In USPTO Proceedings ............................... 3
`
`AGIS’s Attorneys Participated In Claim Amendments Adding Limitations
`To The ’970 Patent Claims During Reexaminations ............................................. 4
`
`LEGAL STANDARDS ..................................................................................................... 6
`
`SAMSUNG HAS SUFFICIENTLY PLEADED INEQUITABLE CONDUCT,
`AND AGIS’S CHALLENGE IS UNTIMELY.................................................................. 7
`
`A.
`
`B.
`
`Samsung Has Sufficiently Pleaded Inequitable Conduct ....................................... 7
`
`AGIS’s Challenge To Samsung’s Inequitable Conduct Defense Is
`Untimely .............................................................................................................. 10
`
`II.
`
`III.
`
`IV.
`
`SAMSUNG HAS SUFFICIENTLY PLEADED UNCLEAN HANDS .......................... 11
`
`V.
`
`SAMSUNG HAS SUFFICIENTLY PLEADED ITS NINTH COUNTERCLAIM ....... 15
`
`VI.
`
`CONCLUSION ................................................................................................................ 15
`
`i
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 3 of 24 PageID #: 7408
`
`TABLE OF AUTHORITIES
`
`
`Page
`
`Cases
`
`Advanced Ground Info. Sys., Inc. v. Life360, Inc.,
`830 F.3d 1341 (Fed. Cir. 2016)..................................................................................................3
`
`Allergan USA, Inc. v. Sun Pharm. Indus. Ltd.,
`No. CV 19-1727-RGA, 2022 WL 11819975 (D. Del. Oct. 20, 2022) .....................................12
`
`In re BigCommerce, Inc.,
`890 F.3d 978 (Fed. Cir. 2018)..................................................................................................11
`
`Bot M8 LLC v. Sony Corp. of Am.,
`4 F.4th 1342 (Fed. Cir. 2021) ....................................................................................................6
`
`Capella Photonics, Inc. v. Infinera Corp.,
`No. 2:20-CV-00077-JRG, 2021 WL 765084 (E.D. Tex. Feb. 26, 2021) ............................7, 10
`
`Cellular Commc’ns Equip. LLC v. HTC Corp.,
`No. 6:13-CV-507, 2015 WL 11118110 (E.D. Tex. Mar. 27, 2015) ........................................13
`
`Cutsforth, Inc. v. LEMM Liquidating Co.,
`No. 12-CV-1200, 2013 WL 2455979 (D. Minn. June 6, 2013) .................................................8
`
`Diem LLC v. BigCommerce, Inc.,
`6:17-CV-186-JRG-JDL, 2017 WL 4693511, at *2 (E.D. Tex. July 6, 2017)..........................11
`
`Encap, LLC v. Scotts Co., LLC,
`No. 11-C-685, 2014 WL 6386965 (E.D. Wis. Nov. 14, 2014) ................................................13
`
`Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co.,
`No. 2:15-CV-1202-WCB, 2017 WL 275465 (E.D. Tex. Jan. 20, 2017) ...........................14, 15
`
`Exergen Corp. v. Wal-Mart Stores, Inc.,
`575 F.3d 1312 (Fed. Cir. 2009)..................................................................................................7
`
`Feitshans v. Kahn,
`No. 06 CIV. 2125, 2007 WL 998400 (S.D.N.Y. Apr. 2, 2007) ...............................................11
`
`Gilead Scis., Inc. v. Merck & Co.,
`888 F.3d 1231 (Fed. Cir. 2018)................................................................................................12
`
`Godo Kaisha IP Bridge 1 v. Telefonaktiebolaget LM Ericsson,
`No. 2:21-CV-00213-JRG, 2022 WL 2055232 (E.D. Tex. June 6, 2022) ........................6, 7, 13
`
`Graphics Properties Holdings, Inc. v. Google, Inc.,
`No. CV 12-1394-LPS, 2014 WL 6629021 (D. Del. Nov. 20, 2014) .........................................9
`
`ii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 4 of 24 PageID #: 7409
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`Hydradyne, LLC v. McCurdy,
`No. 2:13-CV-748-JRG, 2013 WL 12134083, at *1 (E.D. Tex. Dec. 3, 2013) ........................10
`
`Jazz Pharms., Inc. v. Roxane Lab’ys, Inc.,
`No. 2:10-CV-06108-ES-JAD, 2013 WL 6858765 (D.N.J. Dec. 30, 2013) .............................12
`
`Mulllenix v. Univ. of Tex. at Austin,
`No. 1:19-CV-1203-LY, 2021 WL 2172835 (W.D. Tex. Mar. 30, 2021) ................................11
`
`Nalco Co. v. Chem-Mod, LLC,
`883 F.3d 1337 (Fed. Cir. 2018)............................................................................................6, 15
`
`Natera, Inc. v. Genosity Inc.,
`No. CV 20-1352, 2022 WL 767602 (D. Del. Mar. 14, 2022)....................................................8
`
`Nilssen v. Osram Sylvania, Inc.,
`504 F.3d 1223 (Fed. Cir. 2007)..................................................................................................8
`
`Raytheon Co. v. Indigo Sys. Corp.,
`No. 4:07-cv-109, 2008 WL 5422874 (E.D. Tex. Dec. 29, 2008) ........................................7, 14
`
`Regeneron Pharm., Inc. v. Merus N.V.,
`864 F.3d 1343 (Fed. Cir. 2017)..................................................................................................8
`
`Woodfield v. Bowman,
`193 F.3d 354 (5th Cir. 1999) ...............................................................................................6, 14
`
`Yeti Coolers, LLC v. Rtic Coolers, LLC,
`No. 1:15-CV-00597-RP, 2016 WL 5956081, at *8 (W.D. Tex. Aug. 1, 2016).......................14
`
`Statutes
`
`35 U.S.C. § 112 ................................................................................................................................8
`
`Other Authorities
`
`Fed. R. Civ. P. 9(b) ..........................................................................................................................7
`
`Fed. R. Civ. P. 12 ...........................................................................................................................10
`
`Fed. R. Civ. P. 12(a)(1)(B) ............................................................................................................10
`
`Fed. R. Civ. P. 12(b) ................................................................................................................10, 11
`
`Fed. R. Civ. P. 12(b)(2)..................................................................................................................11
`
`iii
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 5 of 24 PageID #: 7410
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`
`Fed. R. Civ. P. 12(b)(6)....................................................................................................................6
`
`Fed. R. Civ. P. 12(f) .......................................................................................................................10
`
`
`
`
`iv
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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 6 of 24 PageID #: 7411
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`TABLE OF EXHIBITS
`
`
`Document
`Ex. Number
`Plaintiff’s Exhibits Filed With Plaintiff’s Opening Brief (Dkt. 72)
`1 (Dkt. 89-2)
`June 3, 2021 Response to Office Action in United States Patent and
`Trademark Office Reexamination No. 90/014,507 regarding U.S. Patent No.
`8,213,970
`
`
`
`v
`
`

`

`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 7 of 24 PageID #: 7412
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`
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`With its motion, AGIS attempts to hide its prior misconduct before this Court and the
`
`USPTO by seeking to strike or dismiss Samsung’s defenses and counterclaims of inequitable
`
`conduct and unclean hands. AGIS’s attempts at concealment should be rejected. Samsung’s
`
`Answer pleads over sixty paragraphs of specific facts establishing AGIS’s deceit to the USPTO
`
`and violation of this Court’s protective order during reexamination proceedings for the asserted
`
`U.S. 8,213,970 (“’970 Patent”). Samsung’s detailed allegations more than surpass the standard
`
`required for providing notice of its defenses, which is all that is required at the pleading stage.
`
`Samsung’s allegations easily meet the standard for pleading inequitable conduct. AGIS
`
`admits it never told the USPTO about the Federal Circuit’s indefiniteness finding from a prior
`
`AGIS litigation for the means-plus-function term “symbol generator” in a related patent, U.S.
`
`7,031,728 (“’728 Patent”). AGIS withheld that prior finding even as AGIS amended claims of the
`
`asserted ’970 Patent to add a similar means-plus-function term, “means for presenting a recipient
`
`symbol . . . ,” that shares the same function as the “symbol generator” term as admitted by AGIS’s
`
`expert, and even as AGIS pointed to the ’728 Patent as disclosing the structure for that function.
`
`Although AGIS disputes the materiality of the withheld information because the two terms do not
`
`use identical words, that is a dispute over the merits of the defense, not the adequacy of its pleading.
`
`Moreover, AGIS’s disputes about syntactic differences are contradicted by its prior statements
`
`equating the two phrases, as pleaded in Samsung’s answer. AGIS’s motion should also be denied
`
`because AGIS waited nearly two months—well beyond the required 21 days—after Samsung
`
`originally pleaded inequitable conduct to file this motion challenging Samsung’s defense.
`
`Samsung has similarly more than sufficiently pleaded unclean hands, including ample facts
`
`showing that AGIS’s litigation attorneys at Fabricant LLP violated the prosecution bar of this
`
`Court’s protective order in an earlier case involving the ’970 Patent and the same accused feature,
`
`1
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 8 of 24 PageID #: 7413
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`
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`Find My Device (“FMD”). Specifically, Samsung has pleaded that Fabricant attorneys received
`
`highly confidential technical documents and source code for FMD in district court litigation, and
`
`then participated in amending the claims of the ’970 Patent during a reexamination proceeding,
`
`including through interviews with examiner discussing those amendments. The examiner’s
`
`interview summaries plainly describe how Fabricant attorneys argued for allowance of those claim
`
`amendments, which led to the issuance of the amended claims that AGIS is asserting in this case.
`
`AGIS’s main rebuttal—that Fabricant attorneys were merely passive attendees during the
`
`interviews—contradicts the interview summaries and is, at best, a factual dispute that must be
`
`tested through discovery and trial and cannot be resolved at the pleading stage.
`
`For these reasons, the Court should deny AGIS’s motion to dismiss Samsung’s Ninth
`
`Counterclaim and Strike Samsung’s Sixth and Sixteenth Affirmative Defenses.
`
`I.
`
`FACTUAL BACKGROUND
`
`A.
`
`The Federal Circuit’s Indefiniteness Finding In AGIS’s Life360 Litigation
`
`The ’970 Patent asserted in this case has a long history. Dkt. 80 ¶ 113. In May 2014, AGIS
`
`sued Life360, Inc. asserting the ’728 Patent, which is a parent patent to the ‘970 Patent. Advanced
`
`Ground Information Systems, Inc. v. Life360, Inc., No. 9:14-CV-80651 (S.D. Fla.). During claim
`
`construction, Life360 argued that the term “symbol generator” in the ’728 Patent claims was a
`
`means-plus-function term and indefinite because the ’728 Patent specification did not disclose an
`
`algorithm for how the required symbols were generated and displayed. Dkt. 80 ¶ 114. The district
`
`court agreed, finding that “symbol generator” was a means-plus-function term that lacked structure
`
`because “[t]he disclosure of ‘software that coordinates the x and y coordinates on the LCD display
`
`touch screen” in the ’728 Patent described a “function, not structure.” Id. ¶¶ 115-16. The Federal
`
`Circuit affirmed, holding that “‘a map database and a database of geographically referenced fixed
`
`locations . . . with a specified latitude and longitude[,] . . . [and] [a] database with the constantly
`
`2
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 9 of 24 PageID #: 7414
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`
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`updated GPS location’ . . . only addresses the medium through which the symbols are generated”
`
`and does not disclose a sufficient supporting structure. Id. ¶¶ 117,123; Advanced Ground Info.
`
`Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349 (Fed. Cir. 2016).
`
`B.
`
`The AGIS I Prosecution Bar Prohibited AGIS’s Litigation Attorneys From
`Participating In Claim Amendments In USPTO Proceedings
`
`On November 4, 2019, years after the Federal Circuit invalidated the ’728 Patent, AGIS
`
`asserted the ’970 Patent (the ’728 Patent’s child) and other patents against Google and its FMD
`
`software. AGIS Software Development LLC v. Google LLC, Case No. 2:19-cv-000361-JRG
`
`(“AGIS 1”); Dkt. 80 (Answer) ¶¶ 157-158. AGIS also filed a parallel lawsuit suit against Samsung
`
`before this Court, asserting related patents against FMD. Id. ¶ 158. Both cases were later
`
`transferred to the Northern District of California. See id. ¶ 7.
`
`This Court’s protective order in AGIS I includes a prosecution bar in paragraph 11 that
`
`permitted litigation attorneys to participate in USPTO proceedings such as reexaminations. Id. ¶
`
`161; AGIS I, Dkt. 80-10 ¶ 11. But, crucially, the prosecution bar prohibited litigation attorneys
`
`who received highly confidential information from being involved in amending or introducing new
`
`patent claims in such proceedings. See id. Specifically, this Court ordered that “any attorney who
`
`obtains, receives, or otherwise learns, in whole or in part, the other Party’s HIGHLY SENSITIVE
`
`MATERIAL of a technical nature produced by another Party may not, directly or indirectly,
`
`advise, consult, or participate in the drafting of amended or substitute claims in the proceeding.”
`
`Dkt. 80 ¶ 161; Dkt. 80-10 at 12-13 (emphasis added). “Highly Sensitive Material” includes
`
`material designated “Restricted – Attorneys’ Eyes Only” and “Restricted – Confidential Source
`
`Code.” Dkt. 80 ¶ 161.
`
`Attorneys Vincent Rubino and Enrique Iturralde of Fabricant LLP were litigation counsel
`
`for AGIS, and they both received “Highly Sensitive Material” under the AGIS 1 protective order,
`
`3
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 10 of 24 PageID #: 7415
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`
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`including hundreds of engineering documents and specifications, source code, and testimony from
`
`Google engineers working on the accused products, including FMD. Id. ¶ 162. As one example,
`
`Mr. Rubino took the deposition of Jonathan Brunsman, a Google engineer who developed and
`
`worked on FMD, during which Mr. Rubino elicited testimony that was designated confidential and
`
`introduced confidential technical documents about FMD as deposition exhibits. Id.
`
`C.
`
`AGIS’s Attorneys Participated In Claim Amendments Adding Limitations
`To The ’970 Patent Claims During Reexaminations
`
`While AGIS 1 was pending in this Court, Google filed an ex parte re-examination request
`
`with the USPTO, challenging the validity of the ’970 Patent claims. Id. ¶ 163. AGIS’s litigation
`
`attorneys, Mr. Rubino and Mr. Iturralde, also represented AGIS in the reexamination. In violation
`
`of this Court’s protective order, both were involved in amending claims of the ’970 Patent, which
`
`AGIS asserts in this litigation. See id. ¶¶ 163, 165. Messrs. Rubino and Iturralde, together with
`
`an attorney from another firm (Mr. Jialing Zhong), participated in a May 17, 2021 examiner
`
`interview, for which the agenda included “proposed new claims 14-16.” Id. ¶ 163. The examiner’s
`
`interview summary confirms that “Patent Owner’s representatives” discussed proposed new
`
`claims 15 and 16 and “indicated that the corresponding disclosure is found in the ’728 patent.” Id.
`
`Mr. Iturralde later participated in another examiner interview where the sole agenda item was
`
`“entry of proposed amendments to claims 14-15 and new claims 16-21.” Id. ¶ 164.
`
`AGIS’s attorneys were successful in amending the ‘970 Patent claims. Limitations of the
`
`proposed new claims 14-16 were later incorporated into amended claims 2 and 10 that are asserted
`
`in this case, including a claim limitation reciting “means for presenting a recipient symbol on the
`
`geographical map corresponding to a correct geographical location of the recipient PDA/cell
`
`phone.” Id. ¶ 100, 102, 106. When discussing this limitation in an examiner interview, AGIS’s
`
`attorneys stated that the “corresponding structure” for the limitation was found in the ’728 Patent,
`
`4
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 11 of 24 PageID #: 7416
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`
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`which was incorporated by reference into the ’970 Patent disclosures. Id. ¶ 101. The AGIS
`
`attorneys at the interview had knowledge of the earlier Life360 litigation, and in fact, Vincent
`
`Rubino had even attended the Markman hearing in the Life360 case, where the indefiniteness of
`
`the “symbol generator” term in the ’728 Patent was argued. Id. ¶¶ 117, 124-36. Despite their
`
`knowledge and statements connecting the ’970 Patent newly-added means-plus-function term to
`
`the ’728 Patent, none of the AGIS attorneys disclosed the Life360 litigation.
`
`After the interview, the examiner found that the “means for presenting a recipient symbol
`
`. . . ” term was described in a disclosure in the ’970 Patent that was nearly identical to the disclosure
`
`in the ’728 Patent regarding “software that coordinates x and y coordinates” that the district court
`
`and Federal Circuit in the Life360 litigation found inadequate to describe the structure of the
`
`“symbol generator” term. Id. ¶¶ 122-23. The table below shows the similarities between the
`
`disclosure that the examiner cited from the ’970 Patent during the reexamination for the “means
`
`for presenting a recipient symbol . . . ” element and the disclosure that the district court and Federal
`
`Circuit found insufficient to support the “symbol generator” term in the Life360 litigation, with
`
`common text highlighted in green and the non-material differences highlighted in yellow. Despite
`
`the clear association that the examiners drew between the prior “symbol generator” term and the
`
`newly added “means for presenting a recipient symbol. . .” term, AGIS’s attorneys never disclosed
`
`the Life360 litigation or the prior indefiniteness finding to the examiner. Id. ¶¶ 117, 124-36.
`
`Column 5, lines 28-44 of the ’970 patent
`(relied upon by the examiners during the
`’970 reexamination)
`Also shown on
`the display screen 16,
`specifically the geographical display 16b, is a
`pair of different looking symbols 30 and 34, a
`small triangle and a small square, which are not
`labeled. These symbols 30 and 34 can
`represent communication net participants
`having cellular phones
`in
`the displayed
`
`Column 8, lines 35-50 of the ’728 patent
`(found in the Life360 litigation to be
`insufficient as supporting structure)
`Also shown on
`the display screen 16,
`specifically the geographical display 16b, is a
`pair of different looking symbols 30 and 34, a
`small triangle and a small square, which are not
`labeled. These symbols 30 and 34 can
`represent communication net cellular phone
`users in the displayed geographical area that
`
`5
`
`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 12 of 24 PageID #: 7417
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`
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`
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`geographical area that are part of the overall
`cellular phone communications net, each
`participant having the same device 10 used.
`The latitude and longitude of symbol 30 is
`associated within a database with a specific
`cell phone number and, if available, its IP
`address and E-mail address. The screen display
`16b, which is a touch screen, provides x and y
`coordinates of the screen 16b to the CPU’s
`software from a map in a geographical
`database. The software has an algorithm that
`relates the x and y coordinates to latitude and
`longitude and can access a communications net
`participant’s symbol or a fixed or movable
`entity’s symbol as being the one closest to that
`point.
`
`the overall cellular phone
`are part of
`communications net used in this invention
`wherein each of the users has a similar cellular
`phone to the one shown in FIG. 1. The latitude
`and longitude of symbol 30 is associated
`within a database along with a specific phone
`number. The screen display 16b, which is a
`touch screen, provides x and y coordinates of
`the screen 16b to the CPU’s software. The
`software has an algorithm that relates the x and
`y coordinates to latitude and longitude and can
`access a communications net participant’s
`symbol or an entity’s symbol as being the one
`closest to that point.
`
`II.
`
`LEGAL STANDARDS
`
`“To survive a motion to dismiss under Rule 12(b)(6), a complaint must ‘contain sufficient
`
`factual matter, accepted as true, to state a claim to relief that is plausible on its face.’” Bot M8
`
`LLC v. Sony Corp. of Am., 4 F.4th 1342, 1352 (Fed. Cir. 2021) (quoting Ashcroft v. Iqbal, 556
`
`U.S. 662, 678 (2009)). “The plausibility standard . . . simply calls for enough fact to raise a
`
`reasonable expectation that discovery will reveal evidence to support the plaintiff's allegations.”
`
`Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018).
`
`“An affirmative defense is subject to the same pleading requirements as is the complaint.”
`
`Woodfield v. Bowman, 193 F.3d 354, 362 (5th Cir. 1999). A defendant needs to “plead an
`
`affirmative defense with enough specificity or factual particularity to give the plaintiff ‘fair notice’
`
`of the defense that is being advanced.” Id. Courts should strike pleadings “sparingly” and should
`
`grant motions to strike “only when the pleading to be stricken has no possible relation to the
`
`controversy.” Godo Kaisha IP Bridge 1 v. Telefonaktiebolaget LM Ericsson, No. 2:21-CV-00213-
`
`JRG, 2022 WL 2055232, at *2 (E.D. Tex. June 6, 2022) (internal quotations omitted). “[I]f an
`
`affirmative defense raises either a question of fact or a question of law, the court must deny a
`
`6
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 13 of 24 PageID #: 7418
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`
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`motion to strike.” Id. at *2. “Motions to strike defenses are . . . generally disfavored and
`
`infrequently granted.” Raytheon Co. v. Indigo Sys. Corp., No. 4:07-cv-109, 2008 WL 5422874,
`
`at *1 (E.D. Tex. Dec. 29, 2008).
`
`While an unclean hands defense is subject to only a “fair notice” pleading standard,
`
`“inequitable conduct[] . . . must be [pleaded] with particularity under Rule 9(b).” Exergen Corp.
`
`v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009). But “[m]alice, intent, knowledge,
`
`and other conditions of a person’s mind may be alleged generally.” Fed. R. Civ. P. 9(b). Pleadings
`
`for inequitable conduct must include “allegations of underlying facts from which a court may
`
`reasonably infer that a specific individual (1) knew of the withheld material information or of the
`
`falsity of the material misrepresentation, and (2) withheld or misrepresented this information with
`
`a specific intent to deceive the PTO.” Exergen, 575 F.3d at 1328. When considering the
`
`sufficiency of inequitable conduct pleadings, “the Court must view the facts in the light most
`
`favorable to the pleading party.” Capella Photonics, Inc. v. Infinera Corp., No. 2:20-CV-00077-
`
`JRG, 2021 WL 765084, at *3 (E.D. Tex. Feb. 26, 2021).
`
`III.
`
`SAMSUNG HAS SUFFICIENTLY PLEADED INEQUITABLE CONDUCT, AND
`AGIS’S CHALLENGE IS UNTIMELY
`
`A.
`
`Samsung Has Sufficiently Pleaded Inequitable Conduct
`
`Samsung has pleaded sufficient facts, all of which are undisputed, to support its inequitable
`
`conduct defense. Samsung pleads, and AGIS does not dispute, that (1) the Federal Circuit affirmed
`
`the indefiniteness finding for the means-plus function term “symbol generator” in the ’728 Patent
`
`because the patent, in particular its disclosure at 8:35-50 failed to disclose adequate structure;
`
`(2) the cited disclosure is substantively identical to the disclosure at 5:28-44 in the asserted ’970
`
`Patent, which is a child of the ’728 Patent; and (3) AGIS never informed the USPTO about the
`
`prior indefiniteness finding even as the USPTO relied on 5:28-44 of the ’970 Patent as the part of
`
`7
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`

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`Case 2:22-cv-00263-JRG-RSP Document 98 Filed 08/07/23 Page 14 of 24 PageID #: 7419
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`
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`the specification that described a new limitation, “means for presenting a recipient symbol . . . ,”
`
`that AGIS added by amendment during reexamination.
`
`AGIS disputes only whether these undisputed facts satisfy the “but-for materiality” element
`
`of inequitable conduct. Mot. at 1. Withheld information is “but-for material if the PTO would not
`
`have allowed a claim had it been aware of the undisclosed” information. E.g., Regeneron Pharm.,
`
`Inc. v. Merus N.V., 864 F.3d 1343, 1350 (Fed. Cir. 2017). Previous litigation can be material to
`
`patentability, even if it involved only allegations of invalidity as to related patents. Natera, Inc.
`
`v. Genosity Inc., No. CV 20-1352, 2022 WL 767602, at *4-6 (D. Del. Mar. 14, 2022) (denying
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`motion to dismiss inequitable conduct defense that alleged that the inventor intended to deceive
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`PTO by failing to disclose documents from earlier litigation involving allegations that claims in a
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`related patent were invalid under § 112); Cutsforth, Inc. v. LEMM Liquidating Co., No. 12-CV-
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`1200, 2013 WL 2455979, at *7 (D. Minn. June 6, 2013) (denying motion to dismiss inequitable
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`conduct theory based on failure to disclose litigation documents suggesting that claims in related
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`patents were invalid); Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1234 (Fed. Cir. 2007)
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`(“[T]he existence of the litigation itself is material information that an examiner needs to have.”).
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`Here, Samsung’s Answer cites a prior Federal Circuit holding of invalidity. And it pleads
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`detailed facts regarding Messrs. Zhong, Rubino, and Iturralde’s knowledge of and failure to
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`disclose the Federal Circuit’s opinion, including that disclosures in the parent ’728 Patent did not
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`provide sufficient structure for the means-plus-function “symbol generator” term. Dkt. 80 ¶¶ 95-
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`147. AGIS’s attorneys withheld this information, even after the examiner relied on a nearly
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`identical disclosure in the ’970 Patent as providing supporting structure for the analogous “means
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`for presenting a recipient symbol . . . ” term. Id. ¶¶ 144-46.
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`8
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`AGIS does not dispute that Samsung pleaded all of these facts, instead arguing only that
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`AGIS disagrees with the conclusion that these facts state a defense of inequitable conduct.
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`Specifically, AGIS argues the withheld information was not material because the terms of the two,
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`related patents are not identical—“symbol generator” in the ’728 Patent from the Life360 case and
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`“means for presenting a recipient symbol . . . ” in the ’970 Patent asserted in this case. Dkt. 89 at
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`6-9. But as pleaded in the Answer, AGIS’s argument is contradicted by its prior representations
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`in the Life360 litigation equating the two terms’ meanings. See Dkt. 80 ¶ 119 (Answer explaining
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`that “[b]y AGIS’s own account in the earlier litigation, the ‘symbol generator’ as claimed in the
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`’728 patent is simply an alternative description for the ‘means for presenting a recipient symbol
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`. . .’ as recited in amended claim 2 of the ’970 patent following reexamination.”). For example,
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`AGIS argued in Life360 that the “symbol generator” from the ’728 Patent is a means-plus-function
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`element whose function is to “generate[] and display[] symbols on the display screen that represent
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`other participants.” Id. ¶ 119. Similarly, AGIS’s expert in that case testified that the “symbol
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`generator” “is the software that displays the symbols on the screen in the appropriate place.” Id.,
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`¶ 130. Thus, according to AGIS, the function of the “symbol generator” is substantively the same
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`as the function of the term, “means for presenting a recipient symbol . . .” in this case—i.e.,
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`presenting symbols for other participant’s devices at locations on a map.
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`At a minimum, and particularly in light of AGIS’s prior admissions, AGIS’s disagreements
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`about differences in claim language go to the merits of the inequitable conduct defense and, thus,
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`do not support dismissal at the pleading stage. Graphics Properties Holdings, Inc. v. Google, Inc.,
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`No. CV 12-1394-LPS, 2014 WL 6629021, at *2 (D. Del. Nov. 20, 2014) (granting motion to add
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`inequitable conduct as a defense and holding that “[w]hile it is true these are different claim terms,
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`they are at minimum related, and any differences between them do not render Defendant’s
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`9
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`inequitable conduct claims futile”). Indeed, at this stage, “the Court must view the facts in the
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`light most favorable to” Samsung. Capella, 2021 WL 765084, at *3. Considering the dozens of
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`paragraphs in Samsung’s Answer squarely addressing the materiality of the Life360 litigation,
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`Samsung has met its burden of pleading sufficient facts from which the Court may reasonably infer
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`that the Life360 litigation history was but-for material to the patentability of the ’970 Patent. Dkt.
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`80 ¶¶ 95-147.
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`AGIS cannot therefore rely on perfunctory, immaterial differences in claim language to try
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`to shield its deceit to the USPTO from discovery and investigation in this case. AGIS’s motion to
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`dismiss or strike the inequitable conduct defense should be denied.
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`B.
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`AGIS’s Challenge To Samsung’s Inequitable Conduct Defense Is Untimely
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`AGIS’s motion to strike should independently be denied as untimely. Pursuant to Rule 12
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`of the Federal Rules of Civil Procedure, AGIS was required to move to dismiss or strike any
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`Samsung defense or counterclaim within 21 days. See Rule 12(a)(1)(B) (“[a] party must serve an
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`answer to a counterclaim . . . within 21 days after being served with the pleading that states the
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`counterclaim” and “[a] motion asserting [the defense of failure to state a claim] must be made
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`before pleading if a responsive pleading is allowed”); Rule 12(f) (“[t]he court may strike . . . on
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`motion made by a party either before responding to the pleading or, if a response is not allowed,
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`within 21 days after being served with the pleading”).) Enforcing the 21-day deadline in
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`Hydradyne, LLC v. McCurdy, this Court rejected an untimely Rule 12(b) motion filed after that
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`deadline, remarking that “Rule 12 does not exist to provide an open-ended window for motions to
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`dismiss. In fact, it serves the opposite purpose.” No. 2:13-CV-748-JRG, 2013 WL 12134083, at
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`*1 (E.D. Tex. Dec. 3, 2013).
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`Samsung first pleaded its inequitable conduct defense on May 31, 2023, in its Answer to
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`AGIS’s First Amended Complaint (Dkt. 64 ¶¶ 87-139, Counterclaims ¶¶ 43-460), and AGIS did
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`not move against the defense (or related counterclaim) until filing this motion on July 21—almost
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`two months later. While Samsung filed an amended Answer on June 30, the later Answer made
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`no changes to the inequitable conduct defense or counterclaim pleadings. Compare Dkt. 80, ¶¶
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`95-147, Counterclaims ¶¶ 43-46, with Dkt. 64 ¶¶ 87-139, Counterclaims ¶¶ 43-46. This Court and
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`others have held that an amended pleading “will not revive the right to present by motion defenses
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`that were available but were not asserted in timely fashion prior to the amendment of the pleading.”
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`Mulllenix v. Univ. of Tex. at Austin, No. 1:19-CV-1203-LY, 2021 WL 2172835, at *2 (W.D. Tex.
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`Mar. 30, 2021); Feitshans v. Kahn, No. 06 CIV. 2125, 2007 WL 998400, at *2 (S.D.N.Y. Apr. 2,
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`2007) (denying as untimely, a motion to strike “three affirmative defenses included in defendants’
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`Amended Answer [that were] the same three a