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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 1 of 21
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`Michael Liu Su (SBN 300590)
`michael.liu.su@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`Lionel M. Lavenue (pro hac vice)
`lionel.lavenue@finnegan.com
`Bradford C. Schulz (pro hac vice)
`bradford.schulz@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`Telephone:
`(571) 203-2700
`Facsimile:
`(202) 408-4400
`
`Attorneys for Plaintiff
`ZTE (USA) Inc.
`
`
`Sarah G. Hartman (Cal. Bar No. 281751)
`shartman@brownrudnick.com
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone:
`(212) 209-4800
`Facsimile:
`(212) 209-4801
`
`Attorneys for Defendant
`AGIS Software Development LLC
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`OAKLAND DIVISION
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`ZTE (USA) INC.,
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`Plaintiff,
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`v.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Defendant.
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`CASE NO. 4:18-cv-06185-HSG
`(Former Case No. 2:17-cv-00517-JRG)
`(E.D. Tex.)
`
`JOINT CASE MANAGEMENT
`STATEMENT & [PROPOSED] ORDER
`
`
`Date: January 15, 2019
`Time: 2:00 PM
`Location: Courtroom 2, 4th Floor
`Judge: Hon. Haywood S. Gilliam, Jr.
`
`
`JOINT CASE MANAGEMENT STATEMENT
`CASE NO. 4:18-CV-06185-HSG
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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 2 of 21
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`The parties to the above-entitled action jointly submit this JOINT CASE MANAGEMENT
`STATEMENT & PROPOSED ORDER pursuant to the Standing Order for All Judges of the
`Northern District of California and Civil Local Rule 16-9.
`JURISDICTION & SERVICE
`I.
`A.
`Plaintiff’s Statement:
`The above-captioned action is a Declaratory Judgment case under the patent laws of the
`United States, 35 U.S.C. § 1 et seq. and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202. In
`particular, Plaintiff ZTE (USA) Inc. (“ZTE”) seeks declaratory judgment from AGIS Software
`Development LLC (“AGIS” or “Defendant”) of non-infringement, invalidity, and/or
`unenforceability as to U.S. Patent Nos. 8,213,970; 9,408,055; 9,445,251; 9,467,838; and 9,749,829
`(collectively, the “Patents-in-Suit”). This Court has subject matter jurisdiction pursuant to 28 U.S.C.
`§§ 1331, 1338(a), the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, and the Patent Laws of
`the United States, 35 U.S.C. § 1 et seq.
`This case was originally filed in the Eastern District of Texas. See AGIS Software
`Development, LLC v. ZTE Corporation et al., 2:17-cv-00517-JRG (E.D. Tex.). Pursuant to ZTE’s
`motion to transfer, Dkt. No. 38, that court issued an Order on September 28, 2018, transferring the
`case to this District. See Dkt. No. 85. But before the case resumed in this District, AGIS dismissed
`the case in the Eastern District of Texas on October 9, 2018. See Dkt. No. 87. The same day, on
`October 9, 2018, ZTE filed this action seeking declaratory judgment from AGIS and the Patents-in-
`Suit. See Dkt. No. 1 (for 4:18-cv-06185 in N.D. Cal.). Additionally, AGIS waived service, setting a
`response date of December 31, 2018. See Dkt. No. 16 (for 4:18-cv-06185 in N.D. Cal.).
`On October 26, 2018, AGIS’s counsel requested that “ZTE immediately dismiss its
`complaint” because it allegedly suffers deficiencies towards AGIS Software and lacks case or
`controversy as to AGIS Inc. and AGIS Holdings. However, as discussed on October 30, 2018, ZTE
`informed AGIS that the declaratory judgment complaint is sufficient and that ZTE did not see any
`basis for dismissal. Further discussions did not occur until December 26, 2018, after the parties
`exchanged drafts of this Joint Case Management Statement. Following those discussions, and in
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`JOINT CASE MANAGEMENT STATEMENT
`CASE NO. 4:18-CV-06185-HSG
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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 3 of 21
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`order to simplify the issues in this case, ZTE filed a First Amended Complaint on December 31,
`2018, removing AGIS Inc. and AGIS Holdings as named defendants.
`There is an active case and controversy between the parties regarding the infringement,
`enforceability, and validity of AGIS’s patents, and Federal Circuit case law supports this declaratory
`judgment action in this District. See Jack Henry & Assocs., Inc. v. Plano Encryption Techs., No. 16-
`2700, Slip. Op. at 11-12 (Fed. Cir. Dec. 7, 2018) (finding that sending complaint letter to alleged
`infringers may be sufficient to establish minimum contacts in alleged infringers’ “home” district). In
`particular, this court has subject matter jurisdiction over AGIS. It is undisputed that AGIS Software
`owns the Patents-in-Suit and previously asserted the Patents-in-Suit against ZTE. See AGIS
`Software Dev., LLC v. ZTE Corp. et al., 2:17-cv-00517-JRG (E.D. Tex.). As such, subject matter
`jurisdiction is proper here for AGIS Software.
`Additionally, specific and general jurisdiction exist over AGIS in the Northern District of
`California. AGIS purposefully directed activities related to the design, development, licensing,
`marketing, and enforcement of the Patents-in-Suit and associated embodiments, such as the
`“LifeRing” software, in this District. See In re Apple, Inc., Brief for Appellant, dkt. 18-1 (Fed. Cir.
`2018) (No. 8-151). AGIS was established to conduct business for the “LifeRing” solution, either
`though merchandising or developing it. “On June 30, 2004, Mr. Beyer founded [AGIS Inc]” with its
`“primary business [] revolv[ing] around offering the ‘LifeRing’ solution which includes client-based
`applications and a server-based solution for enabling smartphone, tablet, and PC users to easily and
`rapidly establish secure ad hoc digital networks.” In re Apple, Inc., Brief for Appellant, dkt. 18-1
`(Fed. Cir. 2018) (No. 8-151). AGIS started the “LifeRing” solution and continued to develop it,
`leading to the Patents-in-Suit. Additionally, “LifeRing 5.0 and its predecessor versions have been
`offered and sold to military, defense, and first-responder customers, as well as private industry
`customers” within the Northern District of California. Id. Additionally:
`
`• Judge Gilstrap in the Eastern District of Texas already found jurisdiction and venue
`proper as to AGIS Software in the Northern District of California. See AGIS
`Software Dev., LLC v. ZTE Corp. et al., 2:17-cv-00517-JRG, Dkt. No. 85 (E.D. Tex.).
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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 4 of 21
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`• AGIS sought patent enforcement over California residents ZTE (TX), Inc.; Apple,
`Inc., and Life360, Inc. See AGIS Software Dev., LLC v. ZTE Corp. et al., 2:17-cv-
`00517-JRG, Dkt. No. 1 (E.D. Tex.); AGIS Software Dev., LLC v. Apple, Inc., 2:17-cv-
`00516-JRG, Dkt. No. 1 (E.D. Tex.); and Advanced Ground Info. Sys., Inc. v. Life360,
`Inc., 9:14-cv-80651-DMM, Dkt. No. 1 (S.D. Fla.); see also Jack Henry & Assocs.,
`No. 16-2700, Slip. Op. at 11-12 (finding that sending complaint letter to alleged
`infringers may be sufficient to establish minimum contacts in alleged infringers
`“home” district).
`
`• Upon information and belief, AGIS hired California attorneys for patent enforcement
`and depositions in the Northern District of California.
`
`• AGIS subpoenaed Google, Inc. in the Northern District of California and nearly
`exclusively relies on Google functionality and products in asserted infringement
`theories. See AGIS Software Dev., LLC v. ZTE Corp. et al., 2:17-cv-00517-JRG, Dkt.
`No. 84 (E.D. Tex.).
`
`• Upon information and belief, AGIS contacted Google, Inc. regarding licensing the
`LifeRing software and associated Patents-in-Suit.
`
`• Upon information and belief, AGIS purposefully sold the LifeRing software in the
`Northern District of California.
`
`• Upon information and belief, AGIS hired Anthony A. Wood to market the LifeRing
`software in the Northern District of California.
`The parties are not aware of any other parties that remain to be served.
`B.
`Defendant’s Statement:
`Plaintiff ZTE (USA) Inc.’s (“ZTE” or “Plaintiff”) First Amended Complaint against
`Defendant AGIS Software Development LLC (“AGIS Software” or "Defendant”), seeks a
`declaration of non-infringement, invalidity and/or unenforceability with respect to U.S. Patents Nos.
`8,213,970 (the “’970 Patent”); 9,408,055 (the “’055 Patent”); 9,445,251 (the “’251 Patent”);
`9,467,838 (the “’838 Patent”); and 9,749,829 (the “’829 Patent”) (collectively, the “Patents-in-
`Suit”).
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`CASE NO. 4:18-CV-06185-HSG
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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 5 of 21
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`The First Amended Complaint is deficient on the grounds that this Court cannot exercise
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`personal jurisdiction over AGIS Software because it is not “at home” in California, and because it
`has not purposefully directed any activities related to the enforcement or defense of the Patents-in-
`Suit at California sufficient to justify the exercise of personal jurisdiction over it in California in
`accordance with Due Process.
`In June 2017, AGIS Software filed a patent infringement action in the Eastern District of
`Texas, which, as amended, alleged infringement of the Patents-in-Suit against ZTE Corporation,
`ZTE (TX) and ZTE. AGIS Software Dev. LLC v. ZTE Corp, et al., Case No. 2:17-cv-517 (E.D.
`Tex.), Dkts. 1, 32 (the “ZTE Texas Case”). On September 28, 2018, Judge Gilstrap issued an order
`to transfer the ZTE Texas Case to the Northern District of California, in response to the defendant’s
`motion to dismiss or transfer for improper venue. See ZTE Texas Case, Dkt. 85. On October 8, 2018,
`prior to the transfer, AGIS Software filed a Notice of Voluntary Dismissal (id. Dkt. 86), which the
`court granted on October 9, 2018 (id. Dkt. 87). That same day, ZTE filed the instant action seeking a
`judicial declaration of non-infringement, invalidity, and/or unenforceability as to the Patents-in-Suit
`against AGIS Software, AGIS Holdings, Inc. (“AGIS Holdings”), and Advanced Ground
`Information Systems, Inc. (“AGIS, Inc.”). Dkt. 1. The defendants signed a waiver of service of the
`Complaint, which was filed on November 16, 2018. Dkt. 16.
`
`On October 26, 2018, Defendant’s counsel informed Plaintiff that this Court lacked subject
`matter jurisdiction with respect to AGIS, Inc. and AGIS Holdings (neither of which were involved in
`the ZTE Texas Case) because AGIS Software is the sole and exclusive owner of each of the Patents-
`in-Suit, and thus the only entity that has standing to sue for infringement and that can be sued for a
`declaration of non-infringement, invalidity and/or unenforceability of the Patents-in-Suit. See Trend
`Micro Inc. v. RPost Holdings, Inc., No. 13-CV-05227-WHO, 2014 WL 1365491, at *7 (N.D.Cal.
`Apr. 7, 2014) (in a declaratory relief action involving a patent, like the instant action, “the plaintiff
`lacks standing to sue if the defendant does not have a legal right to the patents in suit that would
`allow the defendant to sue the plaintiff for patent infringement”). However, Plaintiff refused to
`dismiss the Complaint against Agis Holdings and AGIS, Inc. Only after Defendants shared their
`portions of the joint case management statement with Plaintiff stating that Defendants intended to
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`JOINT CASE MANAGEMENT STATEMENT
`CASE NO. 4:18-CV-06185-HSG
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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 6 of 21
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`file a motion to dismiss for lack of subject matter jurisdiction as to AGIS, Inc. and AGIS Holdings
`(and lack of personal jurisdiction, as noted above), and a potential motion for sanctions on the same
`grounds, did Plaintiff agree to remove the baseless claims of subject matter jurisdiction against
`AGIS, Inc. and AGIS Holdings. On December 31, 2018, the deadline for Defendants to respond to
`the initial Complaint, Plaintiff filed its First Amended Complaint removing AGIS Holdings and
`AGIS, Inc. as defendants. Dkt. 18. Plaintiff served the First Amended Complaint on AGIS
`Software via electronic mail, as agreed to by the parties.
`FACTS
`II.
`A.
`Plaintiff’s Statement
`On June 21, 2017, AGIS filed its Complaint against ZTE in the Eastern District of Texas,
`alleging direct and indirect infringement of the ’970, ’055, ’251, and ’838 patents. Dkt. No. 1. On
`September 26, 2017, ZTE filed a motion to dismiss for improper venue, or in the alternative to
`transfer to the Northern District of California, arguing that the Complaint fails to state a plausible
`claim for direct, induced, or contributory infringement. Dkt. No. 28. On October 17, 2017, AGIS
`filed a first amended complaint adding another alleged infringing entity and a fifth asserted patent,
`the ’829 patent. Dkt. No. 32. ZTE filed another motion to dismiss, or in the alternative, to transfer
`to the Northern District of California on November 21, 2017. Dkt. No. 38. On September 28, 2018,
`Judge Gilstrap, of the Eastern District of Texas, transferred this case to this District. Dk. No. 85.
`AGIS then voluntarily dismissed the action on October 8, 2018. Dkt. No. 86 (ordered on October 9,
`2018). On October 9, 2018, ZTE filed this action seeking declaratory judgment from AGIS and the
`Patents-in-Suit. See Dkt. No. 1 (for 4:18-cv-06185 in N.D. Cal.). AGIS waived service, setting a
`response date of December 31, 2018. See Dkt. No. 16 (for 4:18-cv-06185 in N.D. Cal.). However,
`before AGIS responded to the original Complaint, and in order to simplify the issues in this case,
`ZTE filed a First Amended Complaint on December 31, 2018.
`ZTE does not import, use, offer for sale, or sell in the United States electronic devices that
`infringe the Patents-in-Suit. Such devices include ZTE products, running the Android operating
`system, such as Adamant, Agent, Anthem 4G, Aspect, Avail / Merit, Avid 4, Avid 4G, Avid Plus,
`Avid Plus / Avid 828, Avid Trio / ZFive 2, Awe / Emblem, Axon, Axon 7, Axon 7 Max, Axon 7
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`JOINT CASE MANAGEMENT STATEMENT
`CASE NO. 4:18-CV-06185-HSG
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`Case 4:18-cv-06185-HSG Document 20 Filed 01/08/19 Page 7 of 21
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`mini, Axon Elite, Axon Lux, Axon M, Axon Max, Axon Mini, Axon Pro / Axon, Blade A1, Blade
`A2, Blade A2 Plus, Blade A2S, Blade A3, Blade A910, Blade C, Blade D Lux, Blade D2, Blade D6,
`Blade E, Blade Force, Blade G2, Blade L, Blade L3, Blade L5 Plus, Blade Max 3, Blade Max 3 /
`Max Blue, Blade Q, Blade Q Maxi, Blade Q Mini, Blade Qlux 4G, Blade S6, Blade S6 Lux, Blade
`S6 Plus, Blade S7, Blade Spark, Blade V580, Blade V6, Blade V7, Blade V7 Lite, Blade V7 Max,
`Blade V7 Plus, Blade V8, Blade V8 Lite, Blade V8 Mini, Blade V8 Pro, Blade Vantage, Blade Vec
`3G, Blade Vec 4G, Blade X, Blade X Max, Blade X3, Blade X5, Blade X9, Blade Z Max, C78, C79,
`C88, CAPTR II / A210, Chorus, Citrine, Compel, Concord / Midnight, Concord II, CYMBAL LTE,
`Cymbal LTE (Verizon), Cymbal Z-320, Cymbal Z-320 / Cymbal LTE, Cymbal-C LTE, Cymbal-G
`LTE, CYMBAL-T, Cymbal-T LTE, Engage, Engage LT / Engage MT, Essenze C70, F160, Fanfare,
`Fanfare 2, Fanfare 3, Flash, Force, Fury / Director, Geek, Grand Memo II LTE, Grand S Flex, Grand
`S II, Grand S Pro, Grand S3, Grand X, Grand X 3, Grand X 4, Grand X 4, Grand X Max 2 / Imperial
`MAX, Grand X Max+, Grand X Quad Lite, Grand XMax, Groove, Hawkeye, Imperial, Imperial II,
`Jasper LTE, Kis 3 Max, Kis Flex, Majesty, Majesty Pro, Majesty Pro LTE, Majesty Pro Plus LTE,
`Maven 2, Maven 2 / Sonata 3, Maven 3 / Overture 3, Max, MAX Blue LTE, MAX XL, Max+,
`Memo, Midnight PRO LTE, MSGM8 II, N919D, Nubia M2, Nubia M2 Lite, Nubia M2 Play, Nubia
`My Prague, Nubia N1, Nubia N1 lite, Nubia N2, Nubia Prague S, Nubia X6, Nubia Z11, Nubia Z11
`Max, Nubia Z11 mini, Nubia Z11 mini S, Nubia Z17, Nubia Z17 Lite, Nubia Z17 mini, Nubia Z17
`miniS, Nubia Z17S, Nubia Z7, Nubia Z7 Max, Nubia Z7 mini, Nubia Z9 Classic, Nubia Z9 Elite,
`Nubia Z9 Exclusive, Nubia Z9 Max, Nubia Z9 mini, Obsidian, Open, Open C, Open II, Overture,
`Overture 2 / Maven, Prelude / Avail 2, Prelude+, Prestige, Prestige 2, Q519T, Quartz, R225, Reef,
`Render, Salute, Savvy, Score M / Score, Small Fresh 4, Small Fresh 5, Solar, Sonata / Radiant,
`Sonata 2 / Paragon, Sonata 3, Source, Speed, Star 1, Star 2, Tempo, Tempo X, TXTM8 3G, V3
`Energy Edition, V3 Extreme Edition, V3 Youth Edition, V5, V870, Valet, Vital / Supreme, Warp,
`Warp 4G, Warp 7, Warp Elite, Warp Sequent, Warp Sync, Whirl, Z221, Z222 / Z223, Z331, Z431 /
`Altair, Z432 / Altair 2, Z667 / Zinger / Prelude 2 / Flame / Whirl 2, Z998 / Unico LTE, ZFive 2 LTE,
`ZFive L LTE, Zinger, ZMax, Zmax 2, ZMAX 2 (Unlocked), ZMAX Champ LTE, ZMAX Grand /
`
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`JOINT CASE MANAGEMENT STATEMENT
`CASE NO. 4:18-CV-06185-HSG
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`Champ / Avid 916, ZMAX GRAND LTE ZMax Pro, Tempo, Axon 7, Axon 7 mini, Blade V8 Pro,
`ZMax Pro, and ZMax 2, and any variants thereof (collectively, the “Accused Products”).
`ZTE also alleges that the Patents-in-Suit are invalid and unenforceable. For instance, the
`Patents-in-Suit are invalid and unenforceable under 35 U.S.C. §§ 101, 102, 103, and 112.
`Additionally, the Patents-in-Suit are unenforceable due to AGIS’s inequitable conduct, in particular,
`AGIS’s unclean hands during prosecution of the Patents-in-Suit. AGIS continues to provide
`contradictory contentions with respect to the Patents-in-Suit’s priority dates and whether pre- or
`post-AIA (America Invents Act) law should apply.
`B.
`Defendant’s Statement
`AGIS Software previously filed a patent infringement action in the Eastern District of Texas
`
`alleging that ZTE and related entities infringed the Patents-in-Suit.
`See ZTE Texas Case, Dkts. 1, 32. AGIS, Inc. and AGIS Holdings were not involved in that action.
`That action was voluntarily dismissed. Id. Dkts. 86, 87. The same day, ZTE filed the instant action
`seeking a judicial declaration of non-infringement, invalidity, and/or unenforceability as to the
`Patents-in-Suit against AGIS Software, AGIS Holdings, and AGIS, Inc. Dkt. 1. Although
`Defendant’s counsel informed Plaintiff on October 26, 2018 that this Court lacked subject matter
`jurisdiction with respect to AGIS, Inc. and AGIS Holdings (neither of which were involved in the
`ZTE Texas Case) because AGIS Software is the sole and exclusive owner of each of the Patents-in-
`Suit, Plaintiff refused to dismiss the Complaint against Agis Holdings and AGIS, Inc. Only after
`Defendants shared their portions of the joint case management statement with Plaintiff stating that
`Defendants intended to file a motion to dismiss for lack of subject matter jurisdiction as to AGIS,
`Inc. and AGIS Holdings (and lack of personal jurisdiction, as noted above), and a potential motion
`for sanctions on the same grounds, did Plaintiff agree to remove the baseless claims of subject matter
`jurisdiction against AGIS, Inc. and AGIS Holdings. On December 31, 2018, the deadline for
`Defendants to respond to the initial Complaint, Plaintiff filed its First Amended Complaint removing
`AGIS Holdings and AGIS, Inc. as defendants. Dkt. 18.
` The First Amended Complaint nonetheless continues to be deficient on the grounds that this Court
`lacks personal jurisdiction over AGIS Software because AGIS Software is “at home” in California,
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`and it has not purposefully directed activities related to the enforcement or defense of the Patents-in-
`Suit at California sufficient to justify the exercise of personal jurisdiction over AGIS Software in
`California in accordance with Due Process.
`AGIS Software denies ZTE’s contention that it does not infringe the Patents-in-Suit. ZTE
`directly infringes each of the Patents-in-Suit by, among other things, making, using, selling, offering
`to sell, and importing into the United States electronic devices, such as Android based smartphones
`and tablets (including but not limited to the Tempo, Axon 7, Axon 7 mini, Blade V8 Pro, ZMax Pro,
`and ZMax 2), including but not limited to the Accused Products. See Dkt. 1 ¶ 25; see also ZTE
`Texas Case, Dkt. 32 ¶ 22. ZTE induces infringement by, among other things, instructing or
`otherwise inducing end users and/or resellers of the Accused Products that incorporate the Accused
`Products to directly infringe by using or selling those products or by making, using, or selling
`products that incorporate the Accused Products. ZTE contributorily infringes by, among other
`things, making, using, selling, offering to sell, and importing components of the Accused Products,
`including products that incorporate the Accused Products of those products, which have no
`substantial non-infringing uses.
`Additionally, AGIS Software denies ZTE’s contentions that the Patents-in-Suit are invalid
`under one or more grounds specified in 35 U.S.C. §§101, 102, 103, and/or 112, AGIS Software is
`not aware of any prior art that renders the claims of the Patents-in-Suit invalid by anticipation or
`obviousness, and the Patents-in-Suit cover patentable subject matter and comply with all of the
`statutory requirements of 35 U.S.C. §§ 101 and 112. AGIS Software also denies that ZTE is or will
`be entitled to any relief, including relief under 35 U.S.C. § 285.
`III. LEGAL ISSUES
`A.
`Plaintiff’s Statement
`ZTE alleges that the above-identified products, the Accused Products, do not infringe the
`Patents-in-Suit, that the Patents-in-Suit are invalid and/or unenforceable.
`B.
`Defendant’s Statement
`AGIS Software denies ZTE’s contentions that the Patents-in-Suit are invalid and/or
`enforceable, and denies that ZTE does not directly infringe, induce infringement, and/or
`
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`contributorily infringe each of the Patents-in-Suit. AGIS Software also contends that personal
`jurisdiction is not proper over it in California.
`IV. MOTIONS
`A.
`Plaintiff’s Statement
`Of the four Patents-in-Suit previously asserted by ZTE, three are already undergoing
`instituted inter partes review (“IPR”) proceedings. As described in the table below, several IPRs are
`already instituted and more yet are awaiting institution decisions. ZTE anticipates soon filing a
`motion to stay this case pending IPRs.
`
`Patent
`
`Asserted
`Claims1
`9,467,838 1, 5, 7, 10,
`15, 18, 19,
`20, 27, 38,
`40, 54
`
`9,445,251 1, 5, 6, 12,
`15, 19, 24,
`27, 29, 31,
`35
`
`9,408,055 1, 2, 7, 22,
`24, 28, 32,
`36, 42, 49,
`54
`8,213,970 1, 3, 5, 8
`
`Current IPR Challenges
`
`Apple (IPR2018-00819) challenging 1-84
`Google (IPR2018-01087) challenging 1, 4, 10, 12, 15,
`17-20, 54
`Google (IPR2018-01088) challenging 22-27, 34
`Google (IPR2018-01086) challenging 7, 22-27, 34, 44-
`47
`Google (IPR2018-01085) challenging 1, 4-6, 10-12, 14-
`15, 17-20, 37-40, 54
`Apple (IPR2018-00817) challenging 1-35
`Google (IPR2018-01083) challenging 1-2, 4-6, 8, 10,
`12, 22-24, 27, 29, 31-32, 35
`Google (IPR2018-01084) challenging 13-19, 21
`Google (IPR2018-01082) challenging 13-19, 21
`Google (IPR2018-01081) challenging 1-2, 4-6, 8, 10,
`12, 22-24, 27, 29, 31-32, 35
`Apple (IPR2018-00818) challenging 1-54
`Google (IPR2018-01080) challenging 1-2, 5-7, 14-15,
`17, 21-25, 27-28, 30, 32-34, 36-37, 40-43, 45, 49, 54
`
` Estimated Institution Dates
`
` November 7, 2018 - Instituted
` January 11, 2019
`
` December 10, 2018 - Denied
` December 5, 2018 - Denied
`
` November 19, 2018 - Denied
`
` October 3, 2018 - Denied
` January 11, 2019
`
` January 11, 2019
` November 20, 2018 - Denied
` November 20, 2018 - Denied
`
` October 4, 2018 - Denied
` December 4, 2018 – Instituted
`
`Apple (IPR2018-00821) challenging 1-13
`Google (IPR2018-01079) 1, 3-9
`(withdrawn) Apple (IPR2018-01471) challenging 1-68
`
` October 24, 2018 - Denied
` November 20, 2018 - Instituted
` February 28, 2019
`
`9,749,829
`
`AGIS’s counsel, on October 26, 2018, requested that “ZTE immediately dismiss its
`complaint,” and citing Kyocera International Inc. v. Semcon IP, Inc., 3:18-cv-1575-CAB-MDD,
`Dkt. No. 16 (S.D. Ca.), because it allegedly suffers deficiencies towards AGIS Software and lacks
`case or controversy as to AGIS Inc. and AGIS Holdings. On October 30, 2018, ZTE informed AGIS
`that the declaratory judgment complaint is sufficient, factually and legally. ZTE further noted that
`
`
`1 The asserted claims are based on the dismissed Eastern District of Texas case. 2:17-cv-
`00517-JRG (E.D. Tex.).
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`the case law, Kyocera International, is non-binding, non-precedential, and unavailing. Nonetheless,
`to simplify the issues in this case, ZTE filed a First Amended Complaint on December 31, 2018.
`Additionally, current Federal Circuit case law supports this declaratory judgment action. See Jack
`Henry & Assocs., No. 16-2700, Slip. Op. at 11-12 (finding that sending complaint letter to alleged
`infringers may be sufficient to establish minimum contacts in alleged infringers “home” district).
`B.
`Defendant’s Statement:
`AGIS Software anticipates filing a Motion to dismiss the Complaint. AGIS Software may
`also file a motion for sanctions under Rule 11(c) of the Federal Rules of Civil Procedure (“FRCP”).
`AMENDMENT OF PLEADINGS
`V.
`A.
`Plaintiff’s Statement
`Plaintiff proposes that the deadline to amend the complaint without leave of court be set for
`March 15, 2019.
`B.
`Defendant’s Statement
`The deadlines shall be as set forth in FRCP 15.
`EVIDENCE PRESERVATION
`The parties have reviewed the Guidelines Relating to the Discovery of Electronically Stored
`Information (“ESI Guidelines”), are in the process of meeting and conferring pursuant to Federal
`Rule of Civil Procedure 26(f), and are in the process of negotiating an ESI Order.
`VII. DISCLOSURES
`The parties will exchange Initial Disclosures on January 9, 2019.
`VIII. DISCOVERY
`AGIS Software has not yet answered the complaint against it. As such, no discovery has
`taken place. The parties are in the process of discussing discovery limits.
`A.
`Plaintiff’s Statement
`In discovery, ZTE will seek discovery relating to at least the following issues:
`
`VI.
`
`Invalidity of the Patents-in-Suit.
`•
`• AGIS activity in the Northern District of California supporting jurisdiction and venue.
`• AGIS’s licensing practice.
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`B.
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`Defendant’s Statement
`• AGIS Software intends to seek discovery on topics including but not limited to the
`following categories: the validity and enforceability of the Patents-in-Suit (including
`but not limited to secondary considerations), the Accused Products, ZTE’s licensing
`practices, knowledge of the Patents-in-Suit, marketing practices, sales and cost
`information.
`
`• To date, there has been no discovery, and no discovery disputes. AGIS Software does
`not anticipate seeking modifications to the discovery rules.
`
`X.
`
`
`•
`IX. CLASS ACTION
`Not applicable.
`RELATED CASES
`Pursuant to Patent L.R. 2-1, this case is related to AGIS Software Development, LLC v. ZTE
`Corporation et al., 2:17-cv-00517-JRG (E.D. Tex.) (dismissed).
`AGIS has also asserted the Patents-in-Suit in the following cases:
`
`• AGIS Software Development v. Huawei Device USA Inc. et al., No. 2:17-cv-00513
`(E.D. Tex.).
`
`• AGIS Software Development v. Apple, Inc., No. 2:17-cv-00516 (E.D. Tex.).
`• AGIS Software Development v. LG Electronics, Inc., No. 2:17-cv-00515 (E.D. Tex.).
`• AGIS Software Development v. HTC Corporation, No. 2:17-cv-00514 (E.D. Tex.).
`The following petition for inter partes reviews (“IPRs”) are also pending:
`
`• HTC Corporation et al. v. AGIS Software Development, IPR2019-00485.
`• Apple Inc. v. AGIS Software Development, IPR2019-00411.
`• Google et al. v. AGIS Software Development, IPR2018-01079.
`• Google et al. v. AGIS Software Development, IPR2018-01080.
`• Apple v. AGIS Software Development, IPR2019-00432.
`• Google et al. v. AGIS Software Development, IPR2018-01083.
`• Google et al. v. AGIS Software Development, IPR2018-01084.
`
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`• ZTE (USA) Inc. et al. v. AGIS Software Development, IPR2019-00389.
`• Google et al. v. AGIS Software Development, IPR2019-00403.
`• Google et al. v. AGIS Software Development, IPR2018-01087.
`• Apple Inc. v. AGIS Software Development, IPR2018-00819.
`XI. RELIEF
`A.
`Plaintiff’s Statement
`ZTE requests the Court:
`
`• Enter judgment in ZTE’s favor and against AGIS by finding that the Accused
`Devices do not infringe the Patents-in-Suit.
`
`• Find that each of the Patents-in-Suit is invalid.
`• Find that each of the Patents-in-Suit is unenforceable.
`• Find that ZTE should be awarded fees and costs.
`
`B.
`Defendant’s Statement
`AGIS Software intends to seek an order dismissing this action pursuant to FRCP 12(b)(1)
`and 12(b)(2). AGIS Software may also seek sanctions pursuant to FRCP 11(c). To the extent this
`action proceeds, AGIS Software requests that this Court enter judgment in favor of AGIS Software
`and against ZTE, finding that ZTE infringes the Patents-in-Suit, and that each of the Patents-in-Suit
`are valid and enforceable. AGIS Software further requests that the Court deny and all relief
`requested by ZTE, and instead, award AGIS Software their attorneys’ fees and costs.
`XII. SETTLEMENT AND ADR
`Pursuant to the District’s ADR Procedures Handbook, the parties propose to mediate this
`case within 90 days of referral to a mediator.
`XIII. CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES
`The parties do not consent to have a magistrate judge conduct all further proceedings
`including trial or entry of judgment.
`XIV. OTHER REFERENCES
`Not applicable.
`
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`XV. NARROWING OF ISSUES
`The parties anticipate that they might file motions for summary judgment.
`The parties do not request bifurcation of any issues.
`AGIS Software anticipates filing a Motion to Dismiss the complaint.
`XVI. EXPEDITED TRIAL PROCEDURE
`The parties do not believe this case is appropriate for the expedited trial procedures.
`XVII. SCHEDULING
`Proposed dates for designation of experts, discovery cutoff, hearing of dispositive motions,
`pretrial conference and trial.
`Please see the parties’ proposals in Attachment A hereto.
`XVIII. TRIAL
`The case will be tried to a jury. The parties expect the case to last four to five court days.
`XIX. DISCLOSURE OF NON-PARTY INTERESTED ENTITIES OR PERSONS
`A.
`Plaintiff’s Statement
`Other than the named parties, the only other entity with an interest in the subject matter of
`this controversy is ZTE Corporation, a publicly-held Chinese corporation and holding