Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 1 of 11 PageID #: 3658
`
`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT
`LLC,
`
`Plaintiff,
`
`CIVIL ACTION NO. 2:19-cv-361-JRG
`(LEAD CASE)
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`AGIS SOFTWARE DEVELOPMENT
`LLC,
`
`Plaintiff,
`
`CIVIL ACTION NO. 2:19-cv-359-JRG
`
`v.
`
`JURY TRIAL DEMANDED
`
`WAZE MOBILE LIMITED,
`
`Defendant.
`
`AGIS SOFTWARE DEVELOPMENT
`LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO. LTD.
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`CIVIL ACTION NO. 2:19-cv-362-JRG
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`DEFENDANTS’ MOTION TO STAY PENDING
`RESOLUTION OF IN RE GOOGLE APPEAL
`
`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 2 of 11 PageID #: 3659
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`TABLE OF CONTENTS
`
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. 1
`
`BACKGROUND ............................................................................................................... 2
`
`A.
`
`B.
`
`Defendants’ Motions To Dismiss Or Transfer....................................................... 2
`
`The Substantive Proceedings ................................................................................. 3
`
`III.
`
`THE CASES SHOULD BE STAYED PENDING RESOLUTION OF MOTIONS
`TO DISMISS OR TRANSFER ......................................................................................... 3
`
`A.
`
`B.
`
`The Court Has Inherent Authority To Stay These Cases ....................................... 3
`
`All Relevant Factors Favor A Stay Pending Resolution Of Motions To
`Dismiss Or Transfer ............................................................................................... 4
`
`1.
`
`2.
`
`3.
`
`Factor One: A Stay Will Not Unduly Prejudice AGIS ............................. 4
`
`Factor Two: Defendants Will Suffer Hardship Absent A Stay................. 5
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`Factor Three: A Stay Will Conserve Judicial Resources .......................... 6
`
`C.
`
`In The Alternative, The Court Should Defer Decision On Defendants’
`Motions Pending Resolution Of In re Google ....................................................... 6
`
`IV.
`
`CONCLUSION .................................................................................................................. 7
`
`
`
`i
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`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 3 of 11 PageID #: 3660
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`TABLE OF AUTHORITIES
`
`
`Page(s)
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`Cases
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`AGIS Software Dev. LLC v. Apple, Inc.,
`2:17-cv-516 (E.D. Tex.) .............................................................................................................. 5
`
`AGIS Software Dev. LLC v. HTC Corp.,
`2:17-cv-514 (E.D. Tex.) .............................................................................................................. 5
`
`AGIS Software Dev. LLC v. Huawei Device USA Inc.,
`2:17-cv-513 (E.D. Tex.) .............................................................................................................. 5
`
`AGIS Software Dev. LLC v. LG Elec., Inc.,
`2:17-cv-515 (E.D. Tex.) .............................................................................................................. 5
`
`AGIS Software Dev. LLC v. ZTE Corp.,
`2:17-cv-517 (E.D. Tex.) .............................................................................................................. 5
`
`Evolutionary Intelligence LLC v. Sprint Nextel, Inc.,
`No. 6:12-cv-00791, 2013 WL 12162396 (E.D. Tex. Sept. 18, 2013) ........................................ 4
`
`In re Horseshoe Entm’t,
`337 F.3d 429 (5th Cir. 2003) ...................................................................................................... 6
`
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ............................................................................................. 6
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) .................................................................................................................... 3
`
`Moser v. Navistar Int’l Corp.,
`No. 4:17-CV-00598, 2018 WL 1169189 (E.D. Tex. Mar. 6, 2018) ........................................... 4
`
`Stragent LLC v. BMW of N. Am., LLC,
`No. 6:16-CV-446, 2017 WL 3709083 (E.D. Tex. July 11, 2017) .............................................. 4
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014) .............................................................................................. 4, 5
`
`
`
`
`
`ii
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`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 4 of 11 PageID #: 3661
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`
`
`I.
`
`INTRODUCTION
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`Google LLC (“Google”), Waze Mobile Limited (“Waze”), Samsung Electronics Co. Ltd.,
`
`and Samsung Electronics America, Inc. (collectively, “Samsung,” and collectively with Google
`
`and Waze, “Defendants”) respectfully move for a stay of all proceedings pending the resolution
`
`of In re Google, No. Case No. 20-144 (Fed. Cir.), the Federal Circuit mandamus proceeding that
`
`is reviewing the Court’s venue decision in Personalized Media Communications v. Google, Case
`
`No. 2:19-cv-00090-JRG (“PMC v. Google”). On September 2, AGIS filed an unopposed motion
`
`for supplemental briefing on Google’s Rule 12(b)(3) motion to dismiss or transfer for improper
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`venue in view of PMC v. Google and its supplemental brief, which simply regurgitated the
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`Court’s findings in its PMC v. Google decision (Dkt. 117, 118). The outcome of In re Google is
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`likely to be determinative of Google’s motion (Dkt. 28), which, in turn, also impacts pending
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`motions to transfer filed by Waze and Samsung (Dkt. 35, 38).
`
`This litigation remains in its early stages, and a stay is appropriate to allow venue-related
`
`issues to be decided before additional substantive proceedings take place. The stay Defendants
`
`seek is expected to be short—briefing is already complete in In re Google, suggesting that a
`
`decision will arrive in a few months. AGIS will not be prejudiced given the brief length of the
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`stay and early stage of the cases, and because it is a non-practicing entity. Conversely, absent a
`
`stay, Defendants will be prejudiced significantly by being compelled to engage in several critical
`
`case events scheduled for the next three months, including the Markman hearing, close of fact
`
`discovery, expert discovery, and dispositive motions. Similarly, judicial economy will be served
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`by waiting on the resolution of In re Google, which will inform the resolution of Defendants’
`
`motions. Because all factors favor a stay, Defendants’ motion should be granted. In the
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`alternative, Defendants request that the Court defer decision on their motions to dismiss and
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`transfer pending the resolution of In re Google.
`
`1
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`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 5 of 11 PageID #: 3662
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`
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`II.
`
`BACKGROUND
`
`A.
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`Defendants’ Motions To Dismiss Or Transfer
`
`On February 18, 2020, Google filed its motion to dismiss or transfer for improper venue
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`under FRCP 12(b)(3) and 28 U.S.C. § 1406(a) on the basis that Google had no “regular and
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`established place of business” in the District. Dkt. No. 25. On March 3, 2020, Samsung and
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`Waze filed their motions to transfer based on convenience under 28 U.S.C. § 1404(a). Dkt. Nos.
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`35, 38. Briefing on these motions was completed by April 28, 2020.
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`With Defendants’ motions still pending, on July 16, 2020, in PMC v. Google, this Court
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`found venue proper over Google in the Eastern District of Texas, finding that Google had a
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`“regular and established place of business” based on a facility owned by Communications Test
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`Design, Inc. (“CTDI”) in Flower Mound, Texas. See PMC v. Google, Dkt. No. 291. Google
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`filed a petition for a writ of mandamus on that decision on August 4, 2020, and briefing by the
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`parties on the mandamus proceedings was completed on August 17, 2020. See In re Google,
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`Dkt. No. 17. Based on prior proceedings, a decision is expected from the Federal Circuit in the
`
`next few months. See, e.g., In re Google LLC, No. 19-126 (oral argument set; four months
`
`between the conclusion of non-amicus briefing and order); In re Google LLC, No. 18-152 (no
`
`oral argument; one month between the conclusion of briefing and order).
`
`Concurrently, in view of the Court’s decision in PMC v. Google, on September 2, 2020,
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`AGIS moved unopposed for supplemental briefing on Google’s motion to transfer or dismiss.
`
`See Dkt. 117. That same day, AGIS filed its supplemental brief that presented the same grounds
`
`for venue as those addressed in this Court’s PMC v. Google’s decision, namely a repair facility
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`operated by CTDI in Flower Mound, Texas. Dkt. 118. Under AGIS’s unopposed motion,
`
`Google may file a responsive supplemental brief before September 17, 2020. Dkt. 117. Thus,
`
`the outcome of the mandamus petition is expected to be determinative of Google’s motion to
`
`2
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`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 6 of 11 PageID #: 3663
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`
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`dismiss or transfer and impact the venue analysis for the remaining Defendants’ transfer motions.
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`B.
`
`The Substantive Proceedings
`
`While Defendants’ transfer motions remain pending, the litigation has continued to
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`proceed. These cases remain in their early stages. The case schedule was set on April 8, 2020.
`
`Dkt. No. 68. AGIS served Infringement Contentions on March 23, 2020, and narrowed its
`
`asserted claims on May 8, 2020. Id. Defendants served invalidity contentions on June 8, 2020.
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`Id. Discovery has just begun, with the parties exchanging written discovery and producing
`
`documents. Only a single, third-party inventor deposition has been taken.
`
`In contrast, significant substantive proceedings are expected in the coming few months
`
`absent a stay. Claim construction briefing has recently begun, with a hearing set for October 2,
`
`2020. Dkt. 68. The deadline to complete fact discovery and file motions to compel is set for
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`November 3, and the close of expert discovery is set for December 18. Id. Dispositive motions
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`are due on December 23. Id. Pretrial disclosures are due January 19, 2021, a pretrial conference
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`is set for February 24, 2021, and trial is set for April 5, 2021. Id.
`
`III. THE CASES SHOULD BE STAYED PENDING RESOLUTION OF MOTIONS
`TO DISMISS OR TRANSFER
`
`A.
`
`The Court Has Inherent Authority To Stay These Cases
`
`“The power to stay proceedings is incidental to the power inherent in every court to
`
`control the disposition of the cases on its docket with economy of time and effort for itself, for
`
`counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936). This Court has
`
`found on multiple occasions that a short stay of proceedings pending resolution of a motion to
`
`dismiss or transfer to be an appropriate exercise of its inherent discretion. See, e.g., Secure
`
`Axcess, LLC v. Nintendo of Am. Inc., No. 2:13-cv-32-JRG, Dkt. 133 (E.D. Tex. Feb. 10, 2014);
`
`Solid State Storage Solutions, Inc. v. STEC, Inc., No. 2:11-cv-391-JRG-RSP, Dkt. 292 (E.D.
`
`3
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`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 7 of 11 PageID #: 3664
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`
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`Tex. Jan. 3, 2013).
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`This District considers the following factors when evaluating a request to stay relating to
`
`motions to dismiss or transfer: “(1) the potential prejudice to the nonmoving party from a brief
`
`stay; (2) the hardship and inequity to the moving party if the action is not stayed; and (3) the
`
`judicial resources that would be saved by avoiding duplicative litigation.” Evolutionary
`
`Intelligence LLC v. Sprint Nextel, Inc., No. 6:12-cv-00791, 2013 WL 12162396, at *1 (E.D. Tex.
`
`Sept. 18, 2013); Moser v. Navistar Int’l Corp., No. 4:17-CV-00598, 2018 WL 1169189, at *2
`
`(E.D. Tex. Mar. 6, 2018).
`
`B.
`
`All Relevant Factors Favor A Stay Pending Resolution Of Motions To
`Dismiss Or Transfer
`
`1.
`
`Factor One: A Stay Will Not Unduly Prejudice AGIS
`
`AGIS will not suffer any undue prejudice if the cases are stayed. Defendants are seeking
`
`a stay of a limited duration, only during the pendency of the proceedings in In re Google. As
`
`noted above, an order in that proceeding is expected in the next few months. A short delay alone
`
`is insufficient to show prejudice because that “interest is present in every patent case where a
`
`patentee is opposing a stay.” Stragent LLC v. BMW of N. Am., LLC, No. 6:16-CV-446, 2017 WL
`
`3709083, at *2 (E.D. Tex. July 11, 2017).
`
`Further, AGIS is a patent assertion entity that does not compete with Defendants, and
`
`thus will be fully compensated for any alleged harm by monetary damages. See VirtualAgility
`
`Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014) (noting “[a]stay will not
`
`diminish the monetary damages to which VA will be entitled if it succeeds in its infringement
`
`suit—it only delays realization of those damages”).
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`Any claim by AGIS of prejudice is undermined by its own lack of urgency in filing suit.
`
`AGIS filed its first round of litigation on the Asserted Patents in June 2017, when it sued Apple,
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`4
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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 8 of 11 PageID #: 3665
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`
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`LG, HTC, ZTE, and Huawei.1 AGIS then waited over two years before filing this second round
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`of actions against Defendants based on the same or similar accused software. See id. at 1320
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`(rejecting purported prejudice where “the evidence of competition is weak and the patentee’s
`
`delays in pursuing suit and seeking preliminary injunctive relief belie its claims that it will be
`
`unduly prejudiced by a stay”).
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`Finally, the cases remain at their early stages with fact discovery ongoing, only a single
`
`third-party inventor deposition having been taken, and claim construction proceedings have only
`
`just begun. As this Court has found, where a “case is in its early stages and claim construction
`
`briefing has just begun, a short stay of limited duration will not unduly prejudice or present a
`
`clear tactical disadvantage to the Plaintiff.” Secure Axcess, No. 2:13-cv-00032-JRG, Dkt. No.
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`133 at 1-2.
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`2.
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`Factor Two: Defendants Will Suffer Hardship Absent A Stay
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`Absent a stay, Defendants face concrete harm by being compelled to engage in expensive
`
`and substantive proceedings in possibly the wrong forum. The claim construction hearing is
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`scheduled before this Court on October 2, 2020. Dkt. 68. The close of fact discovery is set for
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`November 3, 2020, with numerous depositions expected to occur. Expert discovery concludes
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`on December 18, 2020, and dispositive motions are due on December 23, 2020.
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`Defendants acted in a timely fashion to obtain transfer well before significant substantive
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`proceedings were expected to occur, filing their motions in February and early March. Dkt. Nos.
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`28, 35, and 38. Google has agreed with AGIS in good faith to supplemental venue discovery and
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`briefing on Google’s motion in view of the intervening decision in PMC v. Google. The
`
`
`1 See AGIS Software Dev. LLC v. Apple, Inc., 2:17-cv-516 (E.D. Tex.); AGIS Software Dev. LLC
`v. HTC Corp., 2:17-cv-514 (E.D. Tex.); AGIS Software Dev. LLC v. Huawei Device USA Inc.,
`2:17-cv-513 (E.D. Tex.); AGIS Software Dev. LLC v. LG Elec., Inc., 2:17-cv-515 (E.D. Tex.);
`AGIS Software Dev. LLC v. ZTE Corp., 2:17-cv-517 (E.D. Tex.).
`
`5
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`

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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 9 of 11 PageID #: 3666
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`
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`resulting delay in resolving the transfer motions will cause these cases to move rapidly into a
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`period of several critical and costly phases in the next four months, including claim construction,
`
`deposition discovery, the close of discovery, including any discovery motions, expert discovery,
`
`and dispositive motion practice. Accordingly, a stay is appropriate to allow venue-related issues
`
`to be resolved before addressing substantive issues. See In re Nintendo Co., 544 F. App’x 934,
`
`941 (Fed. Cir. 2013) (“a trial court must first address whether it is a proper and convenient venue
`
`before addressing any substantive portion of the case”); In re Horseshoe Entm’t, 337 F.3d 429,
`
`433 (5th Cir. 2003) (“[I]n our view disposition of that [transfer] motion should have taken a top
`
`priority in the handling of this case by the ... District Court.”).
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`3.
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`Factor Three: A Stay Will Conserve Judicial Resources
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`A stay pending a decision on the motions to dismiss or transfer will conserve judicial
`
`resources, as it eliminates the risk of inconsistent rulings and redundant proceedings. AGIS’s
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`supplemental briefing is expected to address issues similar to those raised in PMC v. Google,
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`including whether Google has a “regular and established place of business” in this District based
`
`on the CTDI facility in Flower Mound, Texas. A stay would promote judicial efficiency by
`
`allowing the Court to await resolution of In re Google before issuing a ruling that might
`
`otherwise be inconsistent with the outcome of that Federal Circuit proceeding addressing the
`
`same issue. A stay will also avoid a potential waste of this Court’s resources with respect to
`
`issues of claim construction, discovery motions, and dispositive motions that may instead be
`
`properly addressed in another forum.
`
`C.
`
`In The Alternative, The Court Should Defer Decision On Defendants’
`Motions Pending Resolution Of In re Google
`
`In the alternative, Defendants request that the decision on their motions to dismiss or
`
`transfer be deferred pending the resolution of In re Google. As already noted, the outcome of
`
`6
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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 10 of 11 PageID #: 3667
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`
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`those proceedings are likely to be determinative of Google’s motion to dismiss or transfer here,
`
`which in turn also impacts the motions to transfer of Waze and Samsung.
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`IV. CONCLUSION
`
`For the foregoing reasons, these cases should be stayed pending the resolution of In re:
`
`Google LLC, Case No. 20-144. In the alternative, Defendants move to defer the decision on their
`
`motions pending the resolution of In re: Google LLC.
`
`Dated: September 8, 2020
`
`By: /s/ J. Mark Mann________________
`J. Mark Mann
`State Bar No. 12926150
`G. Blake Thompson
`State Bar No. 24042033
`MANN | TINDEL | THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`(903) 657-8540
`(903) 657-6003 (fax)
`
`Darin W. Snyder (Pro Hac Vice)
`dsnyder@omm.com
`Luann L. Simmons (Pro Hac Vice)
`lsimmons@omm.com
`David S. Almeling (Pro Hac Vice)
`dalmeling@omm.com
`Alexander B. Parker (Pro Hac Vice)
`aparker@omm.com
`Mark Liang (Pro Hac Vice)
`mliang@omm.com
`Bill Trac
`btrac@omm.com
`Andrew Bledsoe (Pro Hac Vice)
`abledsoe@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Tel: (415) 984-8700
`Fax: (415) 984-8701
`
`
`Attorneys for Defendants Google LLC, Waze
`Mobility Limited, Samsung Electronics Co.
`Ltd., and Samsung Electronics America, Inc.
`
`
`
`
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`7
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`Case 2:19-cv-00361-JRG Document 121 Filed 09/08/20 Page 11 of 11 PageID #: 3668
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who are deemed to have consented to electronic
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`service are being served with a copy of this document via electronic mail.
`
`Dated: September 8, 2020
`
`/s/ J. Mark Mann
`J. Mark Mann
`
`
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`CERTIFICATE OF CONFERENCE
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`On August 6, pursuant to Local Rule CV-7(h), counsel Mark Liang for Defendants met
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`and conferred with counsel Enrique Iturralde for Plaintiff, and counsel for Plaintiff indicated on
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`August 8, 2020 that Plaintiff is opposed to the relief sought by this Motion.
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`Dated: September 8, 2020
`
`/s/ J. Mark Mann
`J. Mark Mann
`
`
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`
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`8
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`