Case 5:21-cv-03076-BLF Document 45 Filed 08/26/21 Page 1 of 20
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`Lisa K. Nguyen (Bar No. 244280)
`lisa.nguyen@lw.com
`Richard G. Frenkel (Bar No. 204133)
`rick.frenkel@lw.com
`Clara Wang (Bar No. 321496)
`clara.wang@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, CA 94025
`Telephone: (650) 328-4600
`Facsimile: (650) 463-2600
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`Alan M. Billharz (pro hac vice)
`alan.billharz@lw.com
`Tiffany C. Weston (pro hac vice)
`tiffany.weston@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW, Suite 1000
`Washington, DC 20004
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Attorneys for Plaintiff
`WhatsApp LLC
`
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`Alfred R. Fabricant (pro hac vice)
`afabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice)
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice)
`vrubino@fabricantllp.com
`Enrique Iturralde (pro hac vice)
`eiturralde@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`Benjamin T. Wang (CA SBN 228712)
`bwang@raklaw.com
`Minna Y. Chan (CA SBN 305941)
`mchan@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-9226
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`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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`SAN JOSE DIVISION
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`WHATSAPP LLC,
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`Plaintiff,
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`v.
`AGIS SOFTWARE DEVELOPMENT LLC,
`Defendant.
`
`Case No. 5:21-cv-03076-BLF
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`JOINT CASE MANAGEMENT
`STATEMENT & [PROPOSED] ORDER
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`Date: September 2, 2021
`Time: 11:00 a.m.
`Courtroom: 3, 5th Floor, San Jose
`Judge: Hon. Beth Labson Freeman
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`Complaint Filed: April 27, 2021
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`Case 5:21-cv-03076-BLF Document 45 Filed 08/26/21 Page 2 of 20
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`Pursuant to the Civil Local Rule 16-9 and the Court’s May 14, 2021 Notice (Dkt. No. 15),
`Plaintiff WhatsApp LLC (“WhatsApp”) and Defendant AGIS Software Development LLC
`(“AGIS Software”) submit this Joint Case Management Statement and [Proposed] Order.
`1.
`JURISDICTION AND SERVICE
`This Court has jurisdiction over the subject matter of this action under 28 U.S.C. §§ 1331,
`1338(a), 2201, and 2202 and the patent laws of the United States (35 U.S.C. § 1, et seq.).
`WhatsApp contends that venue is proper in this district and that the Court has personal jurisdiction
`over the parties. AGIS disputes that venue is proper in this district, and further disputes that the
`Court has personal jurisdiction over the parties. On August 23, 2021, AGIS moved the Court, for:
`(1) an order dismissing the Complaint for Declaratory Judgment filed by Plaintiff WhatsApp LLC
`(“WhatsApp” or “Plaintiff”) pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure; (2)
`an order dismissing the Complaint for Declaratory Judgment in favor of the first-filed action; or
`(3) in the alternative, an order staying this action pending a decision on WhatsApp’s motion to
`dismiss, or in the alternative, to transfer, which is currently pending in the Eastern District of
`Texas. Dkt. 37. AGIS’s motion to dismiss is currently scheduled for this Court’s next available
`hearing date on January 27, 2022. No parties remain to be served.
`2.
`FACTS
`WhatsApp’s Summary of Relevant Facts
`WhatsApp is a Delaware limited liability corporation with its principal place of business
`in Menlo Park, California. Per AGIS Software’s allegations in another litigation between the
`parties, AGIS Software is a Texas limited liability company, having its principal place of business
`at 100 W. Houston Street, Marshall, Texas 75670. According to Texas public records, AGIS
`Holdings, Inc. (“AGIS Holdings”) is the sole member of AGIS Software. According to Florida
`public records, AGIS Holdings is organized and exists under the laws of the State of Florida, and
`maintains its principal place of business at 92 Lighthouse Drive, Jupiter, FL 33469, which shares
`the same address with Advanced Ground Information Systems, Inc., a Florida corporation. On
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`information and belief, AGIS Software is an agent and alter ego of Advanced Ground Information
`Systems, Inc.
`On January 29, 2021, AGIS Software sued WhatsApp in the U.S. District Court for the
`Eastern District of Texas, alleging infringement of U.S. Patent Nos. 7,031,728 (“’728 Patent”),
`7,630,724 (“’724 Patent”), 9,408,055 (“’055 Patent”), 9,445,251 (“’251 Patent”), 9,467,838 (“’838
`Patent”), and 9,749,829 (“’829 Patent”) (collectively, the “Patents-in-Suit”). AGIS Software
`Development LLC v. WhatsApp, Inc., Case No. 2:21-cv-00029 (E.D. Tex. Jan. 29, 2021) (“Texas
`Action”), Dkt. No. 1 (“Texas Compl.”). AGIS Software alleges WhatsApp infringes the Patents-
`in-Suit by manufacturing, using, distributing, selling, offering for sale, and/or exporting from and
`importing into the United States the “WhatsApp and WhatsApp Messenger Applications and the
`related services and/or servers for the applications.” Texas Compl. ¶ 16. AGIS Software purports
`to own all right, title, and interest in the Patents-in-Suit. Id. ¶ 1. On April 16, 2021, the Texas
`district court consolidated the WhatsApp action with three other patent infringement actions filed
`by AGIS Software. AGIS Software Development LLC v. T-Mobile USA, Inc., Case No. 2:21-cv-
`00072, Dkt. No. 14 (E.D. Tex. Apr. 16, 2021) (Lead Case). On April 27, 2021, WhatsApp filed
`this declaratory judgment action and moved to dismiss the Eastern District of Texas litigation for
`improper venue. Id., Dkt. No. 34. WhatsApp’s motion to dismiss for improper venue is fully
`briefed and a hearing is currently scheduled for September 1, 2021.
`Several of the Patents-in-Suit are currently subject to pending petition for inter partes
`review (“IPR”) or subject to ex parte reexamination proceedings (“EPR”) before the U.S. Patent
`and Trademark Office. On June 24, 2021, WhatsApp filed petitions for IPR of the asserted claims
`of the ’728 Patent and ’724 Patent in Case Nos. IPR2021-01177 and IPR2021-01178, respectively.
`On July 30, 2021, WhatsApp filed a petition for IPR of all claims of the ’838 Patent in Case
`No. IPR2021-01327. All claims of the ’829 Patent are challenged in Case No. IPR2020-00870,
`filed May 22, 2020, currently subject to a petition for rehearing. Certain claims of the ’055 Patent
`are subject to pending Ex parte Reexamination No. 90/014,508, filed May 15, 2020.
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`An actual and justiciable controversy exists between WhatsApp and AGIS Software
`regarding the Patents-in-Suit. WhatsApp denies that the Patents-in-Suit are infringed through
`making, using, distributing, sale, offering for sale, exportation, or importation of WhatsApp
`Messenger or any other WhatsApp product or service. AGIS Software’s infringement allegations
`and related actions threaten actual and imminent injury to WhatsApp that can be redressed by
`judicial relief and warrant declaratory judgment.
`AGIS Software’s Summary of Relevant Facts
`On May 17, 2021, WhatsApp filed this action seeking declaratory judgment of non-
`infringement as to the Patents-in-Suit. See Dkt. 1. On August 23, 2021, AGIS moved the Court,
`for: (1) an order dismissing the Complaint for Declaratory Judgment filed by Plaintiff WhatsApp
`LLC (“WhatsApp” or “Plaintiff”) pursuant to Rule 12(b)(2) of the Federal Rules of Civil
`Procedure; (2) an order dismissing the Complaint for Declaratory Judgment in favor of the first-
`filed action; or (3) in the alternative, an order staying this action pending a decision on WhatsApp’s
`motion to dismiss, or in the alternative, to transfer, which is currently pending in the Eastern
`District of Texas. Dkt. 37. The Complaint is deficient on the grounds that this Court lacks personal
`jurisdiction over AGIS Software because AGIS Software is not “at home” in California, 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. In addition, pursuant to under 28 U.S.C. § 1404(a),
`AGIS intends to file a motion to transfer this action to the Eastern District of Texas on convenience
`grounds with an accompanying motion to stay this action pending resolution of the motions. If the
`Court denies each of AGIS’s motion to dismiss (Dkt. 37), AGIS’s forthcoming motion to transfer
`under 28 U.S.C. § 1404(a), and AGIS’s accompanying motions to stay this action pending
`resolution of the motions, AGIS Software expects to file an answer.
`Malcolm K. “Cap” Beyer, Jr., the CEO of AGIS Software and a named inventor of the
`Patents-in-Suit, is a graduate of the United States Naval Academy and a former U.S. Marine. Mr.
`Beyer founded Advanced Ground Information Systems, Inc. (“AGIS, Inc.”) shortly after the
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`September 11, 2001 terrorist attacks because he believed that many first responder and civilian
`lives could have been saved through the implementation of a better communication system. He
`envisioned and developed a new communication system that would use integrated software and
`hardware components on mobile devices to give users situational awareness superior to systems
`provided by conventional military and first responder radio systems. AGIS, Inc. developed
`prototypes that matured into its LifeRing system, which provides first responders, law
`enforcement, and military personnel with what is essentially a tactical operations center build into
`hand-held mobile devices. LifeRing applications and services provide the functionalities so that
`users can form and/or join networks or groups, share and view locations with other users, display
`symbols corresponding to locations (including locations of other users) on a map, and communicate
`with other users via text, voice, and multimedia-based communication. LifeRing users can also
`display map information, including symbols corresponding with users, entities, and locations, and
`form groups to track other users and communicate with other users, including through text
`messages and voice calls. The claimed inventions of the Patents-in-Suit are directed to these
`features. In this action, WhatsApp does not contend that the Patents-in-Suit are invalid under 35
`U.S.C. 101, 102, 103, and 112.
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`3.
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`LEGAL ISSUES
`The parties agree that the principal issues are likely to be as follows:
`1. WhatsApp’s allegations that the Patents-in-Suit are not infringed; and
`2. WhatsApp’s allegations that the Patents-in-Suit are unenforceable.
`In addition, WhatsApp believes the following issues are also principal to this dispute:
`• Construction of claim terms in the Patents-in-Suit;
`•
`Issues of law regarding prosecution history estoppel and/or argument-based
`estoppel relating to the Patents-in-Suit; and
`Issues of law regarding whether AGIS Software’s infringement allegations are
`precluded by prior license agreements, covenants not to sue, and/or patent
`exhaustion relating to the Patents-in-Suit.
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`•
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`4.
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`MOTIONS
`On August 23, 2021, AGIS moved the Court, for: (1) an order dismissing the Complaint
`for Declaratory Judgment filed by Plaintiff WhatsApp LLC (“WhatsApp” or “Plaintiff”) pursuant
`to Rule 12(b)(2) of the Federal Rules of Civil Procedure; (2) an order dismissing the Complaint
`for Declaratory Judgment in favor of the first-filed action; or (3) in the alternative, an order staying
`this action pending a decision on WhatsApp’s motion to dismiss, or in the alternative, to transfer,
`which is currently pending in the Eastern District of Texas. Dkt. 37. AGIS’s Motion to Dismiss is
`scheduled for the Court’s next available hearing date of January 27, 2022 at 9:00 A.M.
`In addition, pursuant to under 28 U.S.C. § 1404(a), AGIS intends to file a motion to transfer
`this action to the Eastern District of Texas on convenience grounds with an accompanying motion
`to stay this action pending resolution of the motions.1
`WhatsApp has not filed any motions as of the date of this statement. WhatsApp intends to
`file a motion for leave to conduct jurisdictional discovery. WhatsApp’s motion practice in Texas
`is described in Section 1 above.
`The parties also anticipate dispositive motions will be filed in this case, including summary
`judgment motions that may address issues of patent non-infringement and/or infringement, and
`patent unenforceability and/or enforceability, and/or remedies. The parties also reserve the right
`to file additional motions as the case develops and the need arises.
`WhatsApp anticipates filing an early motion for partial summary judgment that the
`majority of the accused activity is licensed and/or subject to patent exhaustion. WhatsApp also
`anticipates filing an early motion for partial summary judgment that AGIS Software is collaterally
`estopped from asserting the ’055 Patent.
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`1 WhatsApp does not believe such a motion would be proper if the Eastern District of Texas grants
`WhatsApp’s pending motion in that district to dismiss for lack of proper venue because the first
`prong of the §1404(a) analysis would not be met—whether a case could have been brought in that
`forum.
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`5.
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`6.
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`AMENDMENT OF PLEADINGS
`Pleadings may be amended subject to the terms of Fed. R. Civ. P. 15.
`EVIDENCE PRESERVATION
`Each party represents that it has reviewed the Guidelines Relating to the Discovery of
`Electronically Stored Information (“ESI Guidelines”). WhatsApp and AGIS Software have met
`and conferred pursuant to Fed. R. Civ. P. 26(f) and discussed reasonable and proportionate steps
`taken to preserve relevant evidence. Each party represents that it has instituted reasonable
`document retention procedures so as to maintain relevant documents, electronic or otherwise, until
`this dispute is resolved. The parties have also met and conferred regarding the production of ESI.
`The parties have agreed to continue to work cooperatively and in good faith to address any issues
`regarding ESI and, if appropriate, to present the Court with a stipulated ESI Discovery Order.
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`7.
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`DISCLOSURES
`WhatsApp and AGIS Software have not yet exchanged Initial Disclosures in the present
`case but have proposed deadlines for such exchange in Part 17 below.
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`8.
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`DISCOVERY
`A.
`Discovery Taken to Date
`No discovery has been taken in this case to date.
`B.
`Anticipated Scope of Discovery
`The parties, when appropriate, anticipate pursuing discovery related to the factual and legal
`issues raised by the pleadings in the form of requests for production of documents and things,
`requests for admission, interrogatories, depositions, and other forms of discovery authorized by
`the Federal Rules of Civil Procedure, including discovery of non-parties. The parties agree to
`confer in good faith to resolve disputes if the need arises.
`WhatsApp anticipates that it will require written and deposition discovery related to the
`Patents-in-Suit, including at least information regarding the prosecution of the Patents-in-Suit
`(including any applicable reexaminations) and AGIS Software’s licensing of the Patents-in-Suit.
`WhatsApp also anticipates that it will seek discovery regarding the nature of AGIS Software’s pre-
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`the Patents-in-Suit or related
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`suit investigation of the claimed infringement. WhatsApp also anticipates that it will pursue
`discovery of prior litigation involving the Patents-in-Suit.
`If the Court denies AGIS’s motion to dismiss (Dkt. 37), AGIS expects to file an answer.
`Regarding WhatsApp’s allegations of non-infringement, AGIS Software anticipates that it will
`seek written and deposition discovery concerning at least the following subjects:
`• WhatsApp’s knowledge of the Patents-in-Suit, if any;
`• The accused products;
`• WhatsApp’s development, production, testing, and distribution of the accused
`products;
`• WhatsApp’s prosecution of patents citing
`publications;
`• Sales, marketing, and related materials to WhatsApp’s allegations of non-
`infringement; and
`• WhatsApp’s business practices concerning patent clearance, freedom to operate,
`and due diligence associated with its products and services.
`The parties reserve all rights to seek modifications of such limits and agree to confer in
`good faith if a need arises for additional discovery.
`C.
`Discovery Plan
`Pursuant to Fed. R. Civ. P. 26(f), the parties propose the following discovery plan:
`(a)
`Initial Disclosures—Neither party proposes changes to the form or requirement for
`disclosures under Rule 26(a).
`(b)
`Interrogatories—The parties agree that each side shall be allowed to serve a
`maximum of 25 interrogatories on the other side.
`(c)
`Depositions—The parties may take up to 40 total hours of deposition of the other
`side. Depositions of experts, third parties, and inventors do not count against these limits.
`(d)
`Requests for Admission—The parties may serve 40 requests for admission on each
`side. In addition, the parties will be permitted to serve a reasonable number of requests for
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`admission that seek an admission as to the authenticity or admissibility of a particular document
`or thing.
`Electronic Service—The parties agree to accept service by e-mail. Each counsel
`(e)
`will establish an e-mail distribution list accessible through a single external e-mail address.
`Service by e-mail will be treated as service by hand delivery. The parties agree that service by e-
`mail by 11:59 P.M. Pacific time on a given day will be treated as service by personal delivery that
`day. Notwithstanding the foregoing, the parties further agree that documents filed publicly through
`the Court’s ECF system need not be separately served by email, and that ECF filing constitutes
`personal service as of the date and time such document was filed, and that documents filed under
`seal or manually must be served by email within a reasonable time following a related ECF filing,
`and that the email service of such documents shall relate back to the time of the related ECF filing.
`(f)
`Electronically Stored Information—Pursuant to the Court’s ESI Guidelines, the
`parties agree to cooperate to develop protocols to lessen the burden of producing electronic
`discovery. The parties are continuing to meet and confer to reach an agreed upon plan for
`electronic discovery and will submit an agreed electronic discovery plan or a joint submission
`highlighting any remaining disputed issues.
`(g)
`Protective Order— The parties agree that a protective order will be necessary, in
`light of the sensitive and proprietary information that will be exchanged during discovery. The
`parties intend to meet and confer on and submit a proposed Stipulated Protective Order to the
`Court.
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`Privilege Logs— The parties agree that privileged communications and documents
`(h)
`covered by work product protection and dated after the filing of the Texas Action need not be
`included in any privilege log.
`(g)
`Expert Discovery—The parties agree that the protections provided in Federal Rule
`of Civil Procedure 26(b)(4)(B) and (C) will equally apply to expert declarations as they do to
`expert reports, including both drafts of declarations and communications related to declarations.
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`Pursuant to Federal Rule of Civil Procedure 26(b)(4), draft expert reports, notes, outlines, and any
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`other writings leading up to an expert’s final report(s) are exempt from discovery. In addition, all
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`communications with and all materials generated by a testifying expert with respect to his work on this
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`action are exempt from discovery unless relied upon by the expert in forming his or her opinions. If
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`an expert produces a report, the expert must produce his or her final report and all materials on which
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`he or she relied.
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`The parties agree that depositions of experts shall not count toward the above limitations on
`depositions.
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`9.
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`CLASS ACTION
`This case is not a class action.
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`10.
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`RELATED CASES
`AGIS Software has asserted the Patents-in-Suit against WhatsApp in AGIS Software
`Development LLC v. WhatsApp, Inc., No. 2:21-cv-00029 (E.D. Tex. Jan. 29, 2021). WhatsApp
`has filed a motion to dismiss for improper venue in that case, which has been fully briefed and set
`for hearing on September 1, 2021.
`The following declaratory judgment actions involve one or more of the Patents-in-Suit and
`have been related to the instant case by order of the Court (Dkt. 43):
`• Smith Micro Software, Inc. v. AGIS Software Development LLC, No. 3:21-cv-
`03677-BLF (N.D. Cal. May 17, 2021) (“Smith Micro case”); and
`• Lyft, Inc. v. AGIS Software Development LLC, No. 4:21-cv-04653-BLF (N.D. Cal.
`June 16, 2021) (“Lyft case”).
`Further, one or more of the Patents-in-Suit have been asserted in the following patent
`infringement actions currently pending in the Eastern District of Texas:
`• AGIS Software Development LLC v. WhatsApp, Inc., No. 2:21-cv-00029 (E.D. Tex.
`Jan. 29, 2021)
` AGIS Software Development LLC v. Waze Mobile Limited, No. 2:19-cv-00359
`(E.D. Tex. Nov. 4, 2019)
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`Case 5:21-cv-03076-BLF Document 45 Filed 08/26/21 Page 11 of 20
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`• AGIS Software Development LLC v. Google LLC, No. 2:19-cv-00361 (E.D. Tex.
`Nov. 4, 2019)
`• AGIS Software Development LLC v. Samsung Electronics Co., Ltd., No. 2:19-cv-
`00362 (E.D. Tex. Nov. 4, 2019)
`• AGIS Software Development LLC v. Lyft, Inc., No. 2:21-cv-00024 (E.D. Tex. Jan.
`29, 2021)
`• AGIS Software Development LLC v. Uber Technologies Inc. d/b/a Uber, No. 2:21-
`cv-00026 (E.D. Tex. Jan. 29, 2021)
`• AGIS Software Development LLC v. T-Mobile USA, Inc., No. 2:21-cv-00072 (E.D.
`Tex. Mar. 3, 2021)
`Claim construction orders relating to one or more of the Patents-in-Suit have issued in the
`following cases:
`• Advanced Ground Information Systems, Inc. v. Life360, Inc., No. 9:14-cv-80651,
`Dkt. No. 77 (S.D. Fla. Nov. 21, 2014), aff’d, 830 F.3d 1341 (Fed. Cir. 2016)
`• AGIS Software Development LLC v. Huawei Device USA Inc., No. 2:17-cv-513,
`Dkt. No. 205 (E.D. Tex. Oct. 10, 2018)
`• AGIS Software Development LLC v. Google LLC, No. 2:19-cv-00361, Dkt. No. 147
`(E.D. Tex. Dec. 8, 2020)
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`11.
`
`RELIEF
`WhatsApp’s Statement: WhatsApp seeks the following relief in this action: (1) a judgment
`declaring that WhatsApp has not and is not infringing, directly or indirectly, contributorily or
`otherwise through its or its users’ activities in conjunction with WhatsApp Messenger or any other
`WhatsApp product, any claim of the ’728 Patent; (2) a judgment declaring that WhatsApp has not
`and is not infringing, directly or indirectly, contributorily or otherwise through its or its users’
`activities in conjunction with WhatsApp Messenger or any other WhatsApp product, any claim of
`the ’724 Patent; (3) a judgment declaring that WhatsApp has not and is not infringing, directly or
`indirectly, contributorily or otherwise through its or its users’ activities in conjunction with
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`WhatsApp Messenger or any other WhatsApp product, any claim of the ’055 Patent; (4) a
`judgment declaring that WhatsApp has not and is not infringing, directly or indirectly,
`contributorily or otherwise through its or its users’ activities in conjunction with WhatsApp
`Messenger or any other WhatsApp product, any claim of the ’251 Patent; (5) a judgment declaring
`that WhatsApp has not and is not infringing, directly or indirectly, contributorily or otherwise
`through its or its users’ activities in conjunction with WhatsApp Messenger or any other WhatsApp
`product, any claim of the ’838 Patent; (6) a judgment declaring that WhatsApp has not and is not
`infringing, directly or indirectly, contributorily or otherwise through its or its users’ activities in
`conjunction with WhatsApp Messenger or any other WhatsApp product, any claim of the ’829
`Patent.
`WhatsApp further seeks to enjoin AGIS Software, and all persons acting on its behalf or
`in concert with it, restraining them from further prosecuting or instituting any action against
`WhatsApp or WhatsApp’s users claiming infringement of the ’728 Patent, ’724 Patent,
`’055 Patent, ’251 Patent, ’838 Patent, and ’829 Patent, or for representing that WhatsApp’s
`products or services, or others’ use of WhatsApp’s products or services infringe the ’728 Patent,
`’055 Patent, ’724 Patent, ’251 Patent, ’838 Patent, and ’829 Patent.
`WhatsApp also seeks a finding and declaration that this is an exceptional case under
`35 U.S.C. § 285 and that WhatsApp shall be awarded costs and attorneys’ fees for this action.
`WhatsApp seeks such other and additional relief, in law or in equity, that the Court deems just and
`proper.
`AGIS’s Statement: If the Court denies AGIS’s motion to dismiss (Dkt. 37), AGIS expects
`to file an answer.
`12.
`SETTLEMENT AND ADR
`WhatsApp and AGIS Software have familiarized themselves and complied with the
`Court’s ADR Local Rules. The parties have agreed to private mediation by a mutually agreed-
`upon mediator. Dkt. No. 35. The parties have not stipulated to a deadline, and request discussion
`at the Case Management Conference. Id.
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`Case 5:21-cv-03076-BLF Document 45 Filed 08/26/21 Page 13 of 20
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`The parties have conducted preliminary discussions pursuant to F.R.E. 408 in the Texas
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`case.
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`13.
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`NO CONSENT TO MAGISTRATE JUDGE FOR ALL PURPOSES
`The parties do not consent to have a magistrate judge conduct all further proceedings
`including trial and entry of judgment.
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`14. OTHER REFERENCE
`The parties do not request reference to binding arbitration, a special master, or the Judicial
`Panel on Multidistrict Litigation.
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`15.
`
`NARROWING OF ISSUES
`The parties do not currently request any bifurcation of issues, claims or defenses. The
`parties each anticipate that they may file one or more motions for summary judgment or
`adjudication at the appropriate time that may narrow the issues in this case. The parties also
`anticipate that they will file motions in limine and may file stipulated facts at the appropriate time
`that will further expedite the presentation of evidence at trial. Further, WhatsApp anticipates filing
`an early motion for partial summary judgment that the majority of the accused activity is licensed
`and/or subject to patent exhaustion. WhatsApp also anticipates filing an early motion for partial
`summary judgment that AGIS Software is collaterally estopped from asserting the ’055 Patent.
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`16.
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`EXPEDITED TRIAL PROCEDURE
`The parties do not request an Expedited Trial under General Order No. 64.
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`17.
`PROPOSED SCHEDULE
`AGIS’s Statement: AGIS has not yet answered the Complaint. AGIS’s Motion to Dismiss (Dkt.
`37) is currently set for hearing on the Court’s next available hearing date of January 27, 2022.
`AGIS proposes a schedule that continues the default deadlines until after the Court issues its
`decision on AGIS’s Motion to Dismiss, and after AGIS files an answer if its Motion is denied.
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`Deadline
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`Initial Case Management
`Conference
`Fact Discovery Opens
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`WhatsApp’s Proposed Date AGIS Software’s Proposed
`Date
`September 2, 2021
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`September 2, 2021
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`September 16, 2021
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`Case 5:21-cv-03076-BLF Document 45 Filed 08/26/21 Page 14 of 20
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`WhatsApp’s Proposed Date AGIS Software’s Proposed
`Date
`February 17, 2022
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`September 16, 2021
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`September 16, 2021
`(+14 days from CMC)
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`February 17, 2022
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`November 1, 2021
`(+45 days from Infringement
`Contentions)
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`April 4, 2022
`(+45 days from Infringement
`Contentions)
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`October 28, 2021
`(+42 days after service of
`“Disclosure of Asserted
`Claims and Infringement
`Contentions” in actions where
`validity is not at issue)
`November 17, 2021
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`March 31, 2022
`(+42 days after service of
`“Disclosure of Asserted
`Claims and Infringement
`Contentions” in actions where
`validity is not at issue)
`April 14, 2022
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`November 18, 2021
`(+21 days from PLR 4-1
`Exchange of Lists)
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`April 21, 2022
`(+21 days from PLR 4-1
`Exchange of Lists)
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`December 21, 2021
`(+50 days from Invalidity
`Contentions)
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`May 23, 2022
`(+50 days from Invalidity
`Contentions)
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`December 30, 2021
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`May 31, 2022
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`December 30, 2021
`(+60 days from service of
`“Invalidity Contentions”)
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`June 2, 2022
`(+60 days from service of
`“Invalidity Contentions”)
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`January 20, 2022
`(+30 days from Damages
`Contentions)
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`June 22, 2022
`(+30 days from Damages
`Contentions)
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`JOINT CASE MANAGEMENT STATEMENT
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`Deadline
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`Deadline to Exchange Initial
`Disclosures
`Deadline for Defendants to
`Serve Infringement
`Contentions and
`Accompanying Production
`[Patent L.R. 3-1, 3-2]
`Deadline for Plaintiff to
`Produce Documentation
`Sufficient to Show Operation
`of Accused Instrumentalities
`Identified by Defendant
`[Patent L.R. 3-4]
`Deadline to Exchange Terms
`for Construction
`[Patent L.R. 4-1(a)]
`
`Meet and Confer to Limit
`Claim Terms to 10 Terms
`Likely to be Most Significant
`to the Dispute
`[Patent L.R. 4-1(b)]
`Deadline to Exchange
`Preliminary Constructions
`and Extrinsic Evidence
`[Patent L.R. 4-2]
`Deadline for Any Defendant
`Who Asserts a Counterclaim
`of Infringement to Serve
`Damages Contentions
`[Patent L.R. 3-8]
`Parties Meet and Confer to
`Narrow Issues and Prepare
`Joint Claim Construction and
`Prehearing Statement
`[Patent L.R. 4-2(c)]
`Deadline to File a Joint Claim
`Construction and Prehearing
`Statement
`
`[Patent L.R. 4-3]
`Deadline for Plaintiff to
`Serve Responsive Damages
`Contentions in Response to
`Any Damages Contentions
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