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`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 1 of 10
`
`BAKER BOTTS L.L.P.
`Jeremy J. Taylor (SBN 249075)
`jeremy.taylor@bakerbotts.com
`Arya Moshiri (SBN 324231)
`arya.moshiri@bakerbotts.com
`101 California St., Ste. 3600
`San Francisco, CA 94111
`Telephone: 415.291.6200
`Facsimile: 415.291.6300
`Bethany R. Salpietra (pro hac vice pending)
`bethany.salpietra@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: 214.953.6500
`Facsimile: 214.953.6503
`
`Attorneys for Plaintiff
`
`
`LYFT, INC.
`
`Plaintiffs,
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`Case No. 21-cv-4653
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`JURY TRIAL DEMANDED
`
`
`v.
`AGIS SOFTWARE DEVELOPMENT LLC,
`Defendant.
`
`
`
`
`
`
`
`Plaintiff Lyft, Inc. (“Lyft” ) hereby pleads the following claims for Declaratory Judgment
`
`against Defendant AGIS Software Development LLC (“AGIS Software”) and alleges as follows:
`
`THE PARTIES
`1.
`Lyft is a Delaware limited liability corporation with its principal place of business
`located at 185 Berry Street, Suite 5000, San Francisco, California 94107.
`2.
`On information and belief, AGIS Software is an agent and alter ego of Advanced
`Ground Information Systems, Inc. Per AGIS Software’s allegations in another litigation between
`the parties, AGIS Software is a Texas limited liability company, having its principal place of
`
`
`
`
`1
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 2 of 10
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`business at 100 W. Houston Street, Marshall, Texas 75670. Exhibit A ¶ 1. According to Texas
`public records, the sole member of AGIS Software is AGIS Holdings, Inc. (“AGIS Holdings”).
`According to Florida public records, AGIS Holdings is organized and existing under the laws of
`the State of Florida, and maintains its principal place of business at 92 Lighthouse Drive, Jupiter,
`FL 33469. It shares the same address with Advanced Ground Information Systems, Inc.,
`(“AGIS”) a corporation organized and existing under the laws of the State of Florida that also
`maintains its principal place of business at 92 Lighthouse Drive, Jupiter, FL 33469.
`JURISDICTION AND VENUE
`3.
`The Court has subject matter jurisdiction over Lyft’s declaratory judgment claims
`relating to patent non-infringement under 28 U.S.C. §§ 2201, 2202, 1331, and 1338(a).
`4.
`On January 29, 2021, AGIS Software sued Lyft for infringing United States Patent
`Nos. 7,031,728 (“’728 patent”), 7,630,724 (“’724 patent”), 8,213,970 (“’970 patent”), 10,299,100
`(“’100 patent”), and 10,341,838 (“’1,838 patent”) (collectively, “Patents-in-Suit”) in the United
`States District Court of the Eastern District of Texas by manufacturing, using, distributing, selling,
`offering for sale, and/or exporting from and importing into the United States the “the Lyft and Lyft
`Driver applications and the related services and/or servers for the applications.” See Compl. ¶ 23,
`AGIS Software Development LLC v. Lyft, Inc., Civil Action No. 2:21-cv-00024-JRG (E.D. Tex.),
`Dkt. 1. AGIS Software purported to be the owner of all right, title, and interest in the Patents-in-
`Suit. Id. ¶ 1. On April 27, 2021 Lyft moved to dismiss the Eastern District of Texas litigation for
`improper venue. See Lyft, Inc.’s Motion to Dismiss for Improper Venue, AGIS Software
`Development LLC v. T-Mobile USA, Inc. et al., Civil Action No. 2:21-cv-00072-JRG (E.D. Tex.),
`Dkt. 30.
`5.
`Lyft denies that the Patents-in-Suit are infringed through the making, using,
`distributing, sale, offering for sale, exportation, or importation of the Lyft rider or Lyft driver
`applications, or any other Lyft product or service. Under all circumstances, AGIS Software’s
`infringement allegations and related actions threaten actual and imminent injury to Lyft that can be
`redressed by judicial relief and warrants the issue of a declaratory judgment. An actual and
`justiciable controversy exists between Lyft and AGIS Software with respect to the Patents-in-Suit.
`
`
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`2
`
`
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`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 3 of 10
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`6.
`On information and belief, AGIS Software is subject to this Court’s specific
`jurisdiction, pursuant to due process and/or the California Long Arm Statute due to: (1) AGIS
`Software and/or AGIS’s activities purposefully directed at residents of this forum, and (2) the
`claims arising out of or relating to AGIS Software and/or AGIS’s activities with this forum.
`Further, the assertion of personal jurisdictions is reasonable and fair.
`7.
`On information and belief, AGIS Software and/or AGIS have taken intentional and
`purposeful steps to enforce the Patents-in-Suit against residents of this judicial district, including
`by suing Lyft and other companies with principal places of business or operations in this judicial
`district for infringement of the Patents-in-Suit.
`8.
`Based on Public Access to Court Electronic Records (“PACER”), on June 21,
`2017, AGIS Software sued Apple Inc. (“Apple”), a California corporation with its principal place
`of business in this District in Cupertino, California, alleging infringement of the ’970 patent and
`other patents related to the Patents-In-Suit. See AGIS Software Development LLC v. Apple Inc.,
`Civil Action No. 2:17-cv-00516 (E.D. Tex.), Dkt. 1 at ¶¶ 18, 27, 41, 55. Based on U.S. Patent &
`Trademark Office (“USPTO”) records, Apple filed petitions for inter partes review of each patent
`AGIS Software asserted against it. See Petition for Inter Partes Review of U.S. Patent No.
`8,213,970, Apple Inc. v. AGIS Software Development LLC, No. IPR2019-00411 (PTAB), Paper
`No. 1; Petition for Inter Partes Review of U.S. Patent No. 9,467,838, Apple Inc. v. AGIS Software
`Development LLC, No. IPR2018-00819 (PTAB), Paper No. 1; Petition for Inter Partes Review of
`U.S. Patent No. 9,445,251, Apple Inc. v. AGIS Software Development LLC, No. IPR2019-00523
`(PTAB), Paper No. 1; Petition for Inter Partes Review of U.S. Patent No. 9,445,251, Apple Inc. v.
`AGIS Software Development LLC, No. IPR2019-00524 (PTAB), Paper No. 1; Petition for Inter
`Partes Review of U.S. Patent No. 9,408,055, Apple Inc. v. AGIS Software Development LLC, No.
`IPR2019-01471 (PTAB), Paper No. 1; Petition for Inter Partes Review of U.S. Patent No.
`9,749,829, Apple Inc. v. AGIS Software Development LLC, No. IPR2019-01471 (PTAB), Paper
`No. 1. . Based on USPTO records, on or around April 2, 2019, each of these inter partes review
`proceedings were terminated as a result of the Apple and AGIS Software reaching a settlement
`agreement. See, e.g., Decision Granting Joint Motion to Terminate and Granting Request to Treat
`
`
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`3
`
`
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`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 4 of 10
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`Settlement Document as Confidential Business Information, Apple Inc. v. AGIS Software
`Development LLC, No. IPR2018-01471 (PTAB), Paper No. 15. Based on PACER, on March 14,
`2019, the Eastern District of Texas dismissed the district court litigation between AGIS Software
`and Apple as a result of settlement. Order, AGIS Software Development LLC v. Apple Inc., Civil
`Action No. 2:17-cv-00516 (E.D. Tex. Mar. 14, 2019), Dkt. 87.
`9.
`Based on PACER, on June 21, 2017, AGIS Software sued ZTE Corporation and
`ZTE (TX) Inc. alleging infringement of patents, including the ’970 patent, ’055 patent, ’251
`patent, and 7’838 patent. AGIS Software Development LLC v. ZTE Corporation et al., Civil
`Action No. 2:17-v-00517-JRG (E.D. Tex.), Dkt. 1 at ¶¶ 19, 28, 42, 54. Based on PACER, on
`October 17, 2017, AGIS Software filed an amended complaint, adding ZTE (USA) Inc. as a
`defendant to this litigation and alleging infringement of an additional related patent, the ’829
`patent. AGIS Software Development LLC v. ZTE Corporation et al., Civil Action No. 2:17-v-
`00517-JRG (E.D. Tex.), Dkt. 32 at ¶¶ 3 & 73. On information and belief, ZTE (USA) Inc. has an
`office located at 1900 McCarthy Boulevard, Milpitas, California 95035.
`10.
`Based on PACER, on October 9, 2018, ZTE (USA) Inc. filed a declaratory
`judgment action in the Northern District of California. ZTE (USA) Inc. v. AGIS Software
`Development LLC et al., Civil Action No. 4:18-cv-06185-HSG (N.D. Cal.), Dkt. 1. Based on
`PACER, on October 30, 2019, AGIS Software and ZTE (USA) Inc. filed a joint motion to stay all
`deadlines as a result of a settlement in principle. Id., Dkt. 130. Based on PACER, less than a
`week later, on November 4, 2019, AGIS Software filed an unopposed renewed motion to dismiss.
`Id., Dkt. 135. Based on PACER, on November 5, 2019, the Court granted the motion. Id., Dkt.
`138.
`
`11.
`On information and belief, AGIS Software has entered into agreements relating to
`the Patents-in-Suit with companies in this District, including Apple and ZTE Corporation, ZTE
`(USA) Inc., and ZTE (TX) Inc. (“ZTE”).
`12.
`On information and belief, AGIS Holdings registered AGIS Software in Texas on
`June 1, 2017, 20 days before filing the above patent infringement cases against Apple and ZTE.
`
`
`
`
`4
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 5 of 10
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`13.
`On information and belief, shortly before the registration of AGIS Software, AGIS
`was litigating in the Southern District of Florida against Life360, Inc., a company headquartered in
`San Francisco, California. Advanced Ground Information Sys., Inc. v. Life360, Inc., Civil Action
`No. 9:14-cv-80651 (S.D. Fla.). Based on PACER, AGIS asserted that Life360 infringed the ’728
`patent (one of the Patents-in-Suit) and other related patents. Based on PACER, AGIS’s claims
`against Life360 resulted in a jury finding of no-infringement and an award of nearly $750,000 in
`attorneys’ fees for litigating “an exceptionally weak case.” Id., Dkt. 200, 212.
`14.
`On information and belief, AGIS Software is an alter ego to AGIS Holdings and/or
`
`AGIS.
`
`15.
`On information and belief, AGIS has also committed a number of intentional acts
`directed at the State of California.
`16.
`On information and belief, AGIS has marketed and/or provided downloads of its
`LifeRing product, which AGIS Software contends is covered by the Patents-in-Suit, in California.
`17.
`On information and belief, in 2014, Mr. Malcom Beyer, CEO of both AGIS
`Software and AGIS, attended a U.S. Navy military exercise in San Diego where he demonstrated
`LifeRing on PCs and smartphones when asked to do so. See Life360, Inc. v. Advanced Ground
`Sys., Inc., 2015 WL 5612008, at *3, Case No. 15-cv-00151-BLF (N.D. Cal. Sept. 21, 2015). On
`information and belief, during this demonstration, Mr. Beyer also discussed LifeRing with
`companies including ADI Technology and Maven Consulting. Id.
`18.
`On information and belief, AGIS marketed LifeRing to companies that resulted in
`downloads of LifeRing in California. Id. at *4. On information and belief, AGIS marketed
`LifeRing to at least CornerTurn LLC, Integrity Applications, and American Reliance, Inc., which
`AGIS has stated have California addresses. Id.
`19.
`On information and belief, AGIS has marked LifeRing as covered by the Patents-
`in-Suit. See, e.g., Patents, AGIS INC., http://agisinc.com/about/patents (last visited June 7, 2021).
`On information and belief, AGIS Software has licensed the patents to end users residing in
`California who downloaded the LifeRing software.
`
`
`
`
`5
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 6 of 10
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`20.
`On information and belief, AGIS also formed a “strategic partnership” with Green
`Hills Software, Inc., a California company and security software firm located in Santa Barbara,
`California. See Life360, 2014 WL 5612008, at *4.
`21.
`As a result of the foregoing allegations, AGIS Software either individually or as an
`alter ego of AGIS, is subject to personal jurisdiction within this judicial district.
`22.
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 in that a
`substantial part of the acts giving rise to the claim occurred in this judicial district, and because
`AGIS Software is subject to personal jurisdiction in this district.
`COUNT I
`Declaratory Relief Regarding Non-Infringement of U.S. Patent No. 7,031,728
`23.
`Lyft restates and incorporates by reference each of the allegations set forth in
`paragraphs 1-22 above, as if fully set forth herein.
`24.
`On information and belief, AGIS Software is the owner of all right, title, and
`interest in the ’728 patent, including the right to assert all causes of action arising under that patent
`and the right to any remedies for infringement of it. A copy of the ’728 patent is attached hereto
`as Exhibit B.
`25.
`Lyft does not infringe any claim of the ’728 patent, directly or indirectly,
`contributorily or otherwise through its or its user’s activities in conjunction with the Lyft rider or
`Lyft driver applications, or any other Lyft product.
`26.
`As set forth above, an actual and justiciable controversy exists between Lyft and
`AGIS Software as to Lyft’s non-infringement of the ’728 patent.
`27.
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Lyft
`requests that this Court enter a judgment that Lyft does not infringe, under any theory of
`infringement, any valid claim of the ’728 patent.
`COUNT II
`Declaratory Relief Regarding Non-Infringement of U.S. Patent No. 7,630,724
`28.
`Lyft restates and incorporates by reference each of the allegations set forth in
`paragraphs 1-22 above, as if fully set forth herein.
`
`
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`6
`
`
`
`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 7 of 10
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`29.
`On information and belief, AGIS Software is the owner of all right, title, and
`interest in the ’724 patent, including the right to assert all causes of action arising under that patent
`and the right to any remedies for infringement of it. A copy of the ’724 patent is attached hereto
`as Exhibit C.
`30.
`Lyft does not infringe any claim of the ’724 patent, directly or indirectly,
`contributorily or otherwise through its or its user’s activities in conjunction with the Lyft rider or
`Lyft driver applications, or any other Lyft product.
`31.
`As set forth above, an actual and justiciable controversy exists between Lyft and
`AGIS Software as to Lyft’s non-infringement of the ’724 patent.
`32.
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Lyft
`requests that this Court enter a judgment that Lyft does not infringe, under any theory of
`infringement, any valid claim of the ’724 patent.
`COUNT III
`Declaratory Relief Regarding Non-Infringement of U.S. Patent No. 8,213,970
`33.
`Lyft restates and incorporates by reference each of the allegations set forth in
`paragraphs 1-22 above, as if fully set forth herein.
`34.
`On information and belief, AGIS Software is the owner of all right, title, and
`interest in the ’970 patent, including the right to assert all causes of action arising under that patent
`and the right to any remedies for infringement of it. A copy of the ’970 patent is attached hereto
`as Exhibit D.
`35.
`Lyft does not infringe any claim of the ’970 patent, directly or indirectly,
`contributorily or otherwise through its or its user’s activities in conjunction with the Lyft rider or
`Lyft driver applications, or any other Lyft product.
`36.
`As set forth above, an actual and justiciable controversy exists between Lyft and
`AGIS Software as to Lyft’s non-infringement of the ’970 patent.
`37.
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Lyft
`requests that this Court enter a judgment that Lyft does not infringe, under any theory of
`infringement, any valid claim of the ’970 patent.
`
`
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`7
`
`
`
`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 8 of 10
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`COUNT IV
`Declaratory Relief Regarding Non-Infringement of U.S. Patent No. 10,299,100
`38.
`Lyft restates and incorporates by reference each of the allegations set forth in
`paragraphs 1-22 above, as if fully set forth herein.
`39.
`On information and belief, AGIS Software is the owner of all right, title, and
`interest in the ’100 patent, including the right to assert all causes of action arising under that patent
`and the right to any remedies for infringement of it. A copy of the ’100 patent is attached hereto
`as Exhibit E.
`40.
`Lyft does not infringe any claim of the ’100 patent, directly or indirectly,
`contributorily or otherwise through its or its user’s activities in conjunction with the Lyft rider or
`Lyft driver applications, or any other Lyft product.
`41.
`As set forth above, an actual and justiciable controversy exists between Lyft and
`AGIS Software as to Lyft’s non-infringement of the ’100 patent.
`42.
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Lyft
`requests that this Court enter a judgment that Lyft does not infringe, under any theory of
`infringement, any valid claim of the ’100 patent.
`COUNT V
`Declaratory Relief Regarding Non-Infringement of U.S. Patent No. 10,341,838
`43.
`Lyft restates and incorporates by reference each of the allegations set forth in
`paragraphs 1-22 above, as if fully set forth herein.
`44.
`On information and belief, AGIS Software is the owner of all right, title, and
`interest in the ’1,838 patent, including the right to assert all causes of action arising under that
`patent and the right to any remedies for infringement of it. A copy of the ’1,838 patent is attached
`hereto as Exhibit F.
`45.
`Lyft does not infringe any claim of the ’1,838 patent, directly or indirectly,
`contributorily or otherwise through its or its user’s activities in conjunction with the Lyft rider or
`Lyft driver applications, or any other Lyft product.
`
`
`
`
`8
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
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`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 9 of 10
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`46.
`As set forth above, an actual and justiciable controversy exists between Lyft and
`AGIS Software as to Lyft’s non-infringement of the ’1,838 patent.
`47.
`Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Lyft
`requests that this Court enter a judgment that Lyft does not infringe, under any theory of
`infringement, any valid claim of the ’1,838 patent.
`PRAYER FOR RELIEF
`WHEREFORE, Lyft respectfully prays for judgment in favor of Lyft and against AGIS
`Software, as follows:
`1.
`For a judicial determination and declaration that Lyft has not infringed and is not
`infringing, directly or indirectly, any claim of the Patents-in-Suit;
`2.
`For injunctive relief against AGIS Software, and all persons acting on its behalf or
`in concert with it, restraining them from further prosecuting or instituting any action against Lyft
`or Lyft’s users claiming the Patents-in-Suit are infringed, or for representing that Lyft’s products
`or services, or that others’ use thereof, infringe the Patents-in-Suit;
`3.
`For a declaration that this case is exceptional under 35 U.S.C. § 285 and for an
`award of attorneys’ fees and costs in this action; and
`4.
`For such other and further relief as this Court may deem just and proper.
`DEMAND FOR JURY TRIAL
`Lyft respectfully demands a jury trial in this action on all issues so triable.
`
`
`
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`
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`
`9
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`
`
`Case 3:21-cv-04653 Document 1 Filed 06/16/21 Page 10 of 10
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`Dated: June 16, 2021
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`/s/ Jeremy Taylor
`Jeremy Taylor
`
`Jeremy J. Taylor (SBN 249075)
`Arya Moshiri (SBN 324231)
`Baker Botts L.L.P.
`jeremy.taylor@bakerbotts.com
`arya.moshiri@bakerbotts.com
`101 California St., Suite 3600
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Facsimile: (415) 291-6300
`
`Bethany R. Salpietra (pro hac vice pending)
`Baker Botts L.L.P.
`bethany.salpietra@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`Attorneys for Plaintiff Lyft, Inc.
`
`
`
`10
`
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`