Case 2:22-cv-00447-JRG Document 16 Filed 10/16/23 Page 1 of 4 PageID #: 180
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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-447-JRG
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`AGIS SOFTWARE DEVELOPMENT
`LLC,
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`Plaintiff,
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`v.
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`PANASONIC CORPORATION and
`PANASONIC CORPORATION OF
`NORTH AMERICA,
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`Defendants.
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`JOINT NOTICE REGARDING ITC DETERMINATION
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`Pursuant to the Court’s Order Granting Defendants’ Unopposed Motion to Stay Pending
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`ITC Determination (Dkt. No. 13), Plaintiff AGIS Software Development LLC (“AGIS”) and
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`Defendants, Panasonic Corporation and Panasonic Corporation of North America (collectively
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`“Panasonic”), respectfully submit this joint notice regarding the termination of AGIS’ ITC
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`investigation against Panasonic.
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`On June 15, 2023, AGIS withdrew its complaint and moved to terminate its ITC
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`investigation against Panasonic and other respondents. On June 20, 2023, Administrative Law
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`Judge (“ALJ”) Moore issued an Initial Determination that AGIS’s motion to terminate be
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`granted. On July 10, 2023, the ITC decided not to review ALJ Moore’s Initial Determination
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`and terminated AGIS’s ITC investigation in its entirety. On July 13, 2023, a notice of the ITC’s
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`decision was published in the Federal Register. Certain Location-Sharing Systems, 88 Fed. Reg.
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`44,840 (July 13, 2023). A copy of the notice is attached hereto as Exhibit A.
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`Panasonic appears specially to file this notice because AGIS has not yet served process
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`on Panasonic. By this special appearance, Panasonic does not waive, but respectfully reserves,
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`Case 2:22-cv-00447-JRG Document 16 Filed 10/16/23 Page 2 of 4 PageID #: 181
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`any of its objections and defenses to AGIS’s Complaint, including, but not limited to, any
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`defenses based on lack of jurisdiction, improper venue, inconvenient venue, insufficiency of
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`process, and insufficiency of service of process, and does not waive Panasonic’s right to seek
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`appropriate relief, including dismissal of the Complaint or venue transfer. Panasonic expressly
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`reserves all objections, defenses, and other rights in response to AGIS’s Complaint.
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`The parties respectfully apologize to the Court for the delay in filing this Notice and
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`provide the following reasons for the delay.
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`First, Plaintiff believed that the ITC proceeding was not complete because there remained
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`live, unresolved disputes related to third party Google’s contentions regarding the ITC protective
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`order and AGIS’s request for production in this Court of certain ITC discovery. Specifically, in
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`AGIS Software Development LLC v. Samsung Electronics Co. Ltd. et al, Case No. 2:22-cv-
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`00263-JRG-RSP (E.D. Tex.), Plaintiff requested production in this Court of the transcript and
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`exhibits for the June 15, 2023 deposition of Google engineer Sorin Dinu taken during the ITC
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`investigation. In response to Plaintiff’s stated intention to present the ITC discovery for the
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`Court’s consideration of AGIS’s Motion for Leave to Amend its Disclosure of Asserted Claims
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`and Infringement Contentions (Dkt. 94), Google responded by denying AGIS’s request and
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`stating their intention to seek relief under the ITC protective order to prevent the disclosure of
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`the ITC discovery. The parties understood that such motion practice would have occurred before
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`the ITC. While AGIS’s motion for leave was decided by Magistrate Judge Roy S. Payne on
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`August 24, 2023 (Dkt. 115), Samsung is seeking reconsideration (Dkt. 144) and numerous
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`requests to Google for ITC discovery held under the ITC protective order remain outstanding. In
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`recent correspondence, Google’s counsel (who also represents Samsung) cited unexpected delays
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`in preparing the ITC discovery for production in this Court as a reason for postponing production
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`Case 2:22-cv-00447-JRG Document 16 Filed 10/16/23 Page 3 of 4 PageID #: 182
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`from “late September to mid-October” to “the end of the month of October.” The question of
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`whether Google and/or AGIS will need to seek relief related to the ITC discovery remains open
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`and unresolved.
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`Second, during this period after termination of the ITC case, AGIS and Google engaged
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`in mediation efforts to resolve all outstanding disputes involving Google Maps and Find My
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`Device, which the parties agreed would extend to all district court cases stayed pending
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`resolution of the ITC case. These mediation efforts remain open.
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`Third, all parties have been awaiting resolution of Google’s motion for summary
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`judgment in the Northern District of California, particularly regarding an issue on validity of the
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`Asserted Patents which could have streamlined this case. See AGIS Software Development LLC
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`v. Google LLC, Case No. 5:22-cv-04826-BLF, Dkt. 471 (N.D. Cal. Oct. 10, 2023). On October
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`10, 2023, Counsel for AGIS, Google, and Samsung received courtesy copies of the NDCA Order
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`denying-in-part and granting-in-part defendants’ motion for summary judgment with an order
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`requesting proposed redactions to be filed by October 20, 2023. Id.
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`Wherefore, Plaintiff AGIS Software Development LLC and Defendants Panasonic
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`Corporation and Panasonic Corporation of North America respectfully submit this joint notice
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`and explanation for the delay in filing same.
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`Case 2:22-cv-00447-JRG Document 16 Filed 10/16/23 Page 4 of 4 PageID #: 183
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`Dated: October 16, 2023
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`Respectfully submitted,
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` By: /s/ Trey Yarbrough
`Trey Yarbrough
`Bar No. 22133500
`trey@yw-lawfirm.com
`YARBROUGH WILCOX, PLLC
`100 E. Ferguson, Suite 1015
`Tyler, Texas 75702
`903-595-3111 office
`903-595-0191 fax
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`ATTORNEY FOR DEFENDANTS
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`By: /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
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`Justin Kurt Truelove
`Texas Bar No. 24013653
`Email: kurt@truelovelawfirm.com
`TRUELOVE LAW FIRM, PLLC
`100 West Houston Street
`Marshall, Texas 75670
`Telephone: (903) 938-8321
`Facsimile: (903) 215-8510
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`ATTORNEYS FOR PLAINTIFF
`AGIS SOFTWARE DEVELOPMENT
`LLC
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on October 16, 2023.
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`/s/ Trey Yarbrough
`Trey Yarbrough
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