Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 1 of 16
`
`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
`Kurt M. Pankratz (pro hac vice)
`Bethany R. Salpietra (pro hac vice)
`kurt.pankratz@bakerbotts.com
`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.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`LYFT, INC.
`
`Plaintiff,
`
`v.
`AGIS SOFTWARE DEVELOPMENT LLC,
`Defendant.
`
`Case No. 5:21-cv-04653-BLF
`
`PLAINTIFF LYFT, INC.’S NOTICE OF
`MOTION AND MOTION TO STAY
`PENDING PATENT OFFICE
`PROCEEDINGS INVOLVING THE
`PATENTS-IN-SUIT
`
`Date: August 11, 2022
`Time: 9:00 a.m.
`Judge: Hon. Beth Labson Freeman
`Trial Date: October 16, 2023
`Courtroom: 3, Fifth Floor
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 2 of 16
`
`TABLE OF CONTENTS
`
`Page
`FACTUAL BACKGROUND ............................................................................................... 1
`LEGAL STANDARD ........................................................................................................... 3
`THE COURT SHOULD EXERCISE ITS DISCRECTION TO STAY PENDING
`PATENT OFFICE PROCEEDINGS .................................................................................... 4
`A.
`Stage of Litigation ..................................................................................................... 4
`B.
`Simplification of Issues ............................................................................................. 5
`C.
`Undue Prejudice ........................................................................................................ 7
`1.
`Timing of the Stay Request ........................................................................... 7
`2.
`Status of the USPTO Proceedings ................................................................. 7
`3.
`Timing of the USPTO Review Requests ....................................................... 8
`4.
`The Relationship of the Parties ..................................................................... 9
`CONCLUSION ................................................................................................................... 10
`
`I.
`II.
`III.
`
`IV.
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`i
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 3 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`AGIS Software Development LLC v. Google LLC,
`No. 2:19-cv-00361 (E.D. Tex. Nov. 4, 2019), ECF No. 1 ........................................................ 2
`
`AGIS Software Development LLC v. Lyft, Inc.,
`No. 2:21-cv-00024 (E.D. Tex. Jan 29. 2021), ECF No. 1 ..................................................... 2, 9
`
`AGIS Software Development LLC v. T-Mobile USA, Inc. et al.,
`No. 2:21-cv-00072 (E.D. Tex. Jan 19. 2021), ECF No. 334 ..................................................... 2
`
`Asetek Holdings, Inc. v. Cooler Master Co.,
`No. 13-cv-00457-JST, 2014 U.S. Dist. LEXIS 47134 (N.D. Cal. Apr. 3, 2014) ............... 6-7, 9
`
`Cypress Semiconductor Corp. v. GSI Tech., Inc.,
`No. 13-cv-02013-JST, 2014 U.S. Dist. LEXIS 142858 (N.D. Cal. Oct. 7, 2014) .................... 5
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988) ................................................................................................. 3
`
`Finjan, Inc. v. Fireeye, Inc.,
`No. C 13-03133 SBA, 2014 U.S. Dist. LEXIS 75456 (N.D. Cal. May 30, 2014) .................... 4
`
`GoPro, Inc. v. C&A Mktg.,
`No. 16-cv-03590-JST, 2017 U.S. Dist. LEXIS 92480 (N.D. Cal. June 15, 2017) ............ 5, 7, 9
`
`Gould v. Control Laser Corp.,
`705 F.2d 1340 (Fed. Cir. 1983) .......................................................................................... 3, 6-7
`
`In re Cygnus Telecomms. Tech., LLC),
`385 F. Supp. 2d 1022 (N.D. Cal. 2005) ................................................................................ 3, 6
`
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985) ................................................................................................... 7
`
`Internet Patents Corp. v. eBags, Inc.,
`No. C 12-03385 SBA, 2013 U.S. Dist. LEXIS 122868 (N.D. Cal. Aug. 28, 2013) ................. 4
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) .................................................................................................................. 3
`
`Mindbasehq Llc v. Google LLC,
`No. 21-cv-03603-JST, 2021 U.S. Dist. LEXIS 253443 (N.D. Cal. Nov. 1, 2021) ................... 7
`
`PersonalWeb Techs., LLC v. Apple, Inc.,
`69 F.Supp.3d 1022 (N.D. Cal. 2014) ........................................................................................ 4
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`ii
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 4 of 16
`
`PersonalWeb Techs., LLC v. Facebook, Inc.,
`2014 U.S. Dist. LEXIS 4095 (N.D. Cal. Jan 13, 2014) ........................................................ 5, 6
`
`Pragmatus AV, LLC v. Facebook, Inc.,
`No. C 11-0494 EJD, 2011 U.S. Dist. LEXIS 114763 (N.D. Cal. Oct. 5, 2011) ..................... 10
`
`Pragmatus Telecom, LLC v. NETGEAR, Inc.,
`No. C 12-6198 SBA, 2013 U.S. Dist. LEXIS 68616 (N.D. Cal. May 13, 2013) .................... 10
`
`SAGE Electrochromics, Inc. v. View, Inc.,
`No. 12-cv-06441-JST, 2015 U.S. Dist. LEXIS 1056 (N.D. Cal. Jan. 5, 2015) ..................... 5, 9
`
`Target Therapeutics, Inc. v. SciMed Life Sys., Inc.,
`No. C-94-20775 RPA (EAI), 1995 U.S. Dist. LEXIS 22517 (N.D. Cal. Jan. 13, 1995) .......... 5
`
`Telemac Corp. v. Teledigital, Inc.,
`450 F.Supp.2d 1107 (N.D.Cal.2006) ........................................................................................ 4
`
`Universal Elecs., Inc. v. Universal Remote Control, Inc.,
`943 F. Supp. 2d 1028 (C.D. Cal. 2013) .................................................................................. 5-6
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014) ................................................................................................. 9
`
`Yodlee, Inc. v. Ablaise Ltd.,
`2009 U.S. Dist. LEXIS 5429 (N.D. Cal. Jan. 15, 2009) ........................................................... 4
`
`STATUTES
`
`35 U.S.C. § 314(b)(1) ...................................................................................................................... 3
`
`37 C.F.R. §§ 1.104-1.116 ................................................................................................................ 2
`
`37 C.F.R. § 1.550(a) ................................................................................................................. 2-3, 8
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`iii
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 5 of 16
`
`NOTICE OF MOTION AND MOTION
`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
`PLEASE TAKE NOTICE THAT that on August 11, 2022 at 9:00 A.M., in Courtroom 3,
`Fifth Floor, of the United States District Court for Northern District of California, San Jose Division,
`located at 280 South First Street, San Jose, California, or as soon thereafter as the matter may be
`heard, a hearing will be held by the Honorable Beth Labson Freeman, United States District Judge,
`on Lyft, Inc.’s (“Lyft”) Motion to Stay Pending Patent Office Proceedings Involving the Patents-in-
`Suit (“Motion”). Lyft, by way of its Motion, seeks an order staying the instant case based on validity
`challenges at the United States Patent Office (“USPTO”) involving four of the five Patents-in-Suit:
`U.S. Patent Nos. 7,031,728 (“the ’728 Patent”), U.S. 7,630,724 (“the ’724 Patent”), 10,299,100 (“the
`’100 Patent”), and 10,341,838 (“the ’838 Patent”) (collectively, the “Challenged Patents”).
`This Motion is based on the following Memorandum of Points and Authorities, the
`accompanying declaration of Bethany Salpietra, the pleadings and records on file in this action, and
`such other written and/or oral arguments as may be presented at or before the time this Motion is
`taken under submission by the Court.
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`iv
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 6 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`Since Lyft filed this action in June 2021, the USPTO has issued several determinations that
`call into question the validity of the Patents-in-Suit, and which stand to significantly change the
`scope of the proceedings currently pending before this Court. Specifically, all of the claims at issue
`in this case are either currently the subject of post-grant proceedings before the USPTO or were
`already found invalid during post-grant proceedings before the USPTO. All asserted claims of the
`’728 and ’724 Patents are currently pending ex parte reexamination (“EPR”) and all asserted claims
`of the ’100 and ’838 Patents are currently pending inter partes review (“IPR”). The only patent-in-
`suit not currently implicated by a post-grant proceeding is U.S. Patent No. 8,213,970 (“the ’970
`Patent”), which recently emerged from EPR after the USPTO found the claims AGIS Software
`Development LLC (“AGIS”) currently asserts to be invalid. AGIS has not alleged infringement of
`the four claims that emerged from the EPR of the ’970 Patent. In view of the ongoing nature of the
`USPTO proceedings affecting all the asserted claims, especially when considered in combination
`with the state of the proceedings here, Lyft respectfully submits this motion to stay pending the EPR
`and IPR patent office proceedings in this matter.
`All three factors support a stay in this case. Indeed, the (i) stage of litigation factor favors a
`stay in view of the fact that this case is in its nascent stages and merits discovery has not proceeded
`in any material way; (ii) simplification of the issues factor weighs in favor of a stay given that the
`pending post-grant proceedings will likely simplify the issues in question, thereby reducing the
`burden on the parties and the court, and streamline the trial as the asserted claims of the Challenged
`Patents are likely to be modified or invalidated; and (iii) the undue prejudice factor also weighs in
`favor of a stay because AGIS will not be unduly prejudiced or tactically disadvantaged by the
`relatively short duration of the post-grant proceedings as it is a patent holding company that does
`not compete with Lyft and monetary damages can adequately remedy any alleged continuing
`infringement.
`I.
`FACTUAL BACKGROUND
`On June 16, 2021, Lyft filed the instant action against AGIS seeking a declaratory judgment
`of non-infringement of United States Patent Nos. 7,031,728, 7,630,724, 8,213,970, 10,299,100, and
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`1
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 7 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`10,341,838 (collectively, “Patents-in-Suit”). See Dkt. 1. The filing of this action followed the filing
`of a previous lawsuit between the parties in the Eastern District of Texas (the “EDTX Action”),
`which was eventually dismissed due to improper venue. See AGIS Software Development LLC v.
`Lyft, Inc., No. 2:21-cv-00024 (E.D. Tex. Jan 29. 2021), ECF No. 1 (alleging infringement of the
`Patents-in-Suit); AGIS Software Development LLC v. T-Mobile USA, Inc. et al., No. 2:21-cv-00072
`(E.D. Tex. Jan 19. 2021), ECF No. 334 (adopting the Magistrate’s recommendation to dismiss the
`case for improper venue and ordering dismissal). Prior to initiating the EDTX Action against Lyft,
`AGIS filed a lawsuit against Google LLC (“Google”) asserting the ’970 Patent in addition to other
`related patents. See AGIS Software Development LLC v. Google LLC, No. 2:19-cv-00361 (E.D.
`Tex. Nov. 4, 2019), ECF No. 1.
`Reexamination of the ’970 Patent. On May 15, 2020, Google filed a Request for EPR of the
`’970 Patent, challenging claims 2 and 10-13—covering all claims asserted against Lyft. The
`USPTO granted the reexamination request on July 27, 2020, and reexamination terminated in late
`2021 with the issuance a reexamination certificate reflecting substantial claim amendments to the
`two challenged independent claims (i.e., claims 2 and 10). See Ex. 1. AGIS has not asserted the
`new claims that emerged from the EPR in this action.
`Reexamination of the ’728 & ’724 Patents. On October 22, 2021, Uber Technologies, Inc.
`(“Uber”) filed a Request for EPR of the ’728 and ’724 Patents, challenging each claim of the ’728
`and ’724 Patents asserted against Lyft by AGIS. See Appl. No. 90/014,889; Appl. No. 90/014,890.
`The USPTO granted the reexamination requests regarding the ’728 and ’724 Patents on December
`6, 2021 and December 7, 2021, respectively, finding substantial new questions of patentability. See
`Exs. 2 & 3. On January 27, 2022, AGIS petitioned the USPTO for two-month extensions of time
`to file its Patent Owner’s Statements in both reexamination applications, and these petitions were
`granted by the USPTO on January 28, 2022. See Exs. 4 & 5. Despite requesting these extensions,
`AGIS failed to submit Patent Owner Statements regarding the ’728 and ’724 Patents on their
`respective deadlines of April 6 and April 7, 2022. Lyft expects that the USPTO will issue a first
`office action in short order. See 37 C.F.R. § 1.550(a) (explaining that reexamination is conducted
`in accordance with 37 C.F.R. §§ 1.104-1.116 after the issuance of the ex parte reexamination order
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`2
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 8 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`and expiration of the time for submitting any responses); see also Ex. 6 at 2 (showing average time
`from filing an EPR request to a first action on the merits at 4.39 months).
`Inter Partes Review of the ’100 & ’838 Patents. On January 29, 2022, Lyft filed three IPR
`petitions, one challenging claims 1-23 of the ’100 Patent, one challenging claims 24-31 of the ’100
`patent, and one challenging claims 1-26 of the ’838 Patent. See IPR2022-00513; IPR2022-00514;
`IPR2022-00515. Between the three petitions, all claims of the ’100 and ’838 Patents asserted by
`AGIS against Lyft have been challenged. Each of Lyft’s IPR petitions are substantively identical
`to the IPR petitions filed by Uber on July 23, 2021, which were instituted by the PTAB on January
`7, 2022 but were subsequently terminated due to settlement on March 17, 2022. See Exs. 7-9;. As
`a result, it is expected the PTAB will institute review of the ’100 and ’838 Patents for the same
`reasons the PTAB instituted review of Uber’s now-terminated IPRs. AGIS’s Patent Owner’s
`Preliminary Responses are due on May 8, 2022, and the PTAB will issue its institution decisions
`within three months. See 35 U.S.C. § 314(b)(1).
`II.
`LEGAL STANDARD
`A district court has inherent power to manage its own docket and stay proceedings,
`“including the authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc.
`v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (citation omitted); see also Landis v. N. Am. Co.,
`299 U.S. 248, 254 (1936) (“[T]he power to stay proceedings is incidental to the power inherent in
`every court to control the disposition of the causes on its docket with economy of time and effort
`for itself, for counsel, and for litigants.”). “A stay is particularly justified where the outcome of the
`[post-grant proceeding] would be likely to assist the court in determining patent validity and, if the
`claims were canceled in [post-grant proceeding], would eliminate the need to try the infringement
`issue. In re Cygnus Telecomms. Tech., LLC, 385 F. Supp. 2d 1022, 1023 (N.D. Cal. 2005) (citing
`Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983) (“One purpose of the
`reexamination procedure is to eliminate trial of that issue (when the claim is canceled) or to facilitate
`trial of that issue by providing the district court with the expert view of the PTO (when a claim
`survives the reexamination proceeding).”)
`The factors that courts in this District consider when determining whether to stay litigation
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`3
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 9 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`are: “(1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will
`simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice
`or present a clear tactical disadvantage to the nonmoving party.” PersonalWeb Techs., LLC v. Apple,
`Inc., 69 F.Supp.3d 1022, 1025 (N.D. Cal. 2014) (quoting Telemac Corp. v. Teledigital, Inc., 450
`F.Supp.2d 1107, 1111 (N.D.Cal.2006)).
`III.
`THE COURT SHOULD EXERCISE ITS DISCRECTION TO STAY PENDING
`PATENT OFFICE PROCEEDINGS
`A.
`Stage of Litigation
`The stage of litigation factor, which examines “whether discovery is complete and whether
`a trial date has been set,” weighs in favor of a stay in this case as the parties have not conducted any
`discovery on the merits, the claim construction hearing is not scheduled to occur for more than six
`months, and the trial date is a year and a half away. See Internet Patents Corp. v. eBags, Inc., No.
`C 12-03385 SBA, 2013 U.S. Dist. LEXIS 122868, at *5-6 (N.D. Cal. Aug. 28, 2013). There is a
`liberal policy in favor of granting motions to stay proceedings pending post-grant proceedings
`involving patents-in-suit, “especially in cases that are still in the initial stages of litigation and where
`there has been little or no discovery.” Finjan, Inc. v. Fireeye, Inc., No. C 13-03133 SBA, 2014 U.S.
`Dist. LEXIS 75456, at *4 (N.D. Cal. May 30, 2014) (citing Yodlee, Inc. v. Ablaise Ltd., 2009 U.S.
`Dist. LEXIS 5429, at *2 (N.D. Cal. Jan. 15, 2009).
`This case is at such an early stage that a stay will unquestionably conserve both the Court’s
`and the parties’ resources. This is particularly true in the present case because AGIS continues to
`refuse to allow discovery materials from the EDTX Action to be used in this case without onerous
`and unacceptable conditions, and AGIS is still disputing jurisdiction. See Ex. 10; Dkt. 94. AGIS
`also refuses to provide any discovery beyond narrow jurisdictional discovery on the basis that an
`operative complaint is not yet on file. See Dkt. 88. As such, a substantial amount of discovery
`remains. In addition, AGIS is continuing to revise its infringement contentions and theories,
`including by seeking to add a new accused product to its infringement contentions. See Dkt. 84.
`With AGIS taking the positions it has with respect to discovery, jurisdiction, and infringement, it is
`becoming evident that the stipulated schedule will be unworkable. For example, under AGIS’s
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`4
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 10 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`view, discovery in this case will not open until after this Court rules on Lyft’s Motion for Leave to
`File First Amended Complaint (Dkt. 78), which will not even be heard until more than three months
`from now. As another example, the parties have already began engaging in claim constructions
`proceedings pursuant to Patent L.R. 4, and AGIS has not yet confirmed whether it will attempt to
`assert the claims of the ’970 Patent that emerged from reexamination.
`Furthermore, this litigation is at a stage much earlier than or comparable to other cases in
`which courts in this District have granted motions to stay pending the outcome of post-grant
`proceedings. See, e.g., GoPro, Inc. v. C&A Mktg., No. 16-cv-03590-JST, 2017 U.S. Dist. LEXIS
`92480, at *7-8 (N.D. Cal. June 15, 2017); Cypress Semiconductor Corp. v. GSI Tech., Inc., No. 13-
`cv-02013-JST, 2014 U.S. Dist. LEXIS 142858 (N.D. Cal. Oct. 7, 2014); SAGE Electrochromics,
`Inc. v. View, Inc., No. 12-cv-06441-JST, 2015 U.S. Dist. LEXIS 1056 (N.D. Cal. Jan. 5, 2015); see
`also PersonalWeb Techs., LLC v. Facebook, Inc., 2014 U.S. Dist. LEXIS 4095, *13-14 (N.D. Cal.
`Jan 13, 2014) (hereinafter “Facebook”) (finding the stage of litigation factor to favor a stay despite
`significant time and effort investments because the parties had “yet to engage in the significant and
`costly work of conducting expert discovery and preparing summary judgment motions.”).
`
`Simplification of Issues
`B.
`The IPR petitions concerning the ’100 and ’838 Patents and EPR requests regarding the ’728
`and ’724 Patents collectively cover 64 of the 68 asserted claims in this case, and the remaining 4
`asserted claims of the ’970 Patent were found invalid by the USPTO during a previous EPR.
`Cancellation of all or some of the implicated claims would reduce the number of claims remaining
`for expert discovery, dispositive motions briefing and, ultimately, trial, and thus stands to
`substantially simplify the issues in this case. And, even in the unlikely event that no claims are
`canceled as a result of the pending IPR and EPR proceedings concerning the Challenged Patents,
`the parties and this Court still stand to benefit from a stay pending the Patent Office proceedings
`because the USPTO and PTAB will determine what effect the prior art references considered during
`each proceeding has on the Challenged Patents, and because they will simultaneously conserve
`resources by avoiding depositions and other work which may be rendered moot, or otherwise
`impacted, by the Patent Office proceedings. See Universal Elecs., Inc. v. Universal Remote Control,
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`5
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 11 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Inc., 943 F. Supp. 2d 1028, 1032 (C.D. Cal. 2013) (citing Target Therapeutics, Inc. v. SciMed Life
`Sys., Inc., No. C-94-20775 RPA (EAI), 1995 U.S. Dist. LEXIS 22517, at *2 (N.D. Cal. Jan. 13,
`1995) (“[W]aiting for the outcome of the reexamination could eliminate the need for trial if the
`claims are cancelled or, if the claims survive, facilitate trial by providing the court with expert
`opinion of the PTO and clarifying the scope of the claims.”); Facebook, 2014 U.S. Dist. LEXIS
`4095, at *16 (“Even if the PTAB affirms the validity of every asserted claim, which is highly
`unlikely given the new higher standard for instituting IPR, these cases would still benefit as such a
`strong showing would assist in streamlining the presentation of evidence and benefit the trier of fact
`by providing the expert opinion of the PTO. Indeed, allowing these invalidity arguments to be
`determined once, employing the specialized expertise of the PTO, produces the exact results—
`avoiding duplicative costs and efforts and averting the possibility of inconsistent judgments—
`intended by the AIA and previous procedures.”).
`Per the USPTO’s and PTAB’s most recent statistics, 79.1% of all reexamined claims were
`either canceled or amended and the PTAB found at least one challenged claim in an IPR petition to
`be unpatentable in about 78% of the final written decisions issued between October 1, 2020 and
`September 30, 2021. See Ex. 11 at 2; Ex. 12 at 12. Combined, this represents a ~0.2% chance that
`none of the four asserted patents would be impacted by the currently pending EPRs and IPRs. It is
`therefore overwhelmingly likely that the USPTO proceedings will impact this case significantly.
`Even if only some of the claims are modified or invalidated, the USPTO proceedings will have
`narrowed the issues and will have also added prosecution history which will inform the construction
`of claim terms, as well as infringement and invalidity issues. See Cygnus, 385 F. Supp. 2d at 1024
`(“For those claims that survive the [post-grant proceedings], this court may have a richer prosecution
`history upon which to base necessary claim construction determinations or reconsideration.”).
`As numerous courts have recognized, a stay may be “particularly justified where the
`outcome of the [post-grant proceeding] would be likely to assist the court in determining patent
`validity and, if the claims were canceled in the reexamination, would eliminate the need to try the
`infringement issue.” Asetek Holdings, Inc. v. Cooler Master Co., No. 13-cv-00457-JST, 2014 U.S.
`Dist. LEXIS 47134, at *4 (N.D. Cal. Apr. 3, 2014) (citing Cygnus, 385 F. Supp. at 1023 and Gould
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`6
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 12 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`705 F.2d at 1342). Indeed, “an auxiliary function [post-grant proceeding] is to free the court from
`any need to consider prior art without the benefit of the PTO’s initial consideration.” In re Etter,
`756 F.2d 852, 857 (Fed. Cir. 1985). This factor thus weighs in favor of a stay.
`C.
`Undue Prejudice
`In this district, courts consider the following four factors in weighing the prejudice to the
`non-moving party: “(1) the timing of the request for the stay; (2) the status of review proceedings;
`(3) the timing of the post-grant review request; and (4) the relationship of the parties.” Mindbasehq
`Llc v. Google LLC, No. 21-cv-03603-JST, 2021 U.S. Dist. LEXIS 253443, at *6 (N.D. Cal. Nov. 1,
`2021); see also GoPro, 2017 U.S. Dist. LEXIS 92480, at *12. Because these four sub-factors do
`not weigh in favor of AGIS, the undue prejudice factor favors a stay.
`1.
`Timing of the Stay Request
`Lyft initially raised the issue of a stay pending Patent Office proceedings involving the
`Patents-in-Suit in the joint statement (Dkt. 51 at 15) submitted to the Court ahead of the January 27,
`2022, Case Management Conference (“CMC”). Lyft raised this issue again at the CMC and, though
`the Court did not enter a stay at the time, it invited Lyft to file a motion on the issue. See Ex. 13 at
`42:3-45:6. As described in the joint statement (Dkt. 51) and explained during the CMC, Uber—
`Lyft’s co-defendant in the EDTX Action—filed ex parte reexamination requests involving the ’728
`and ’724 Patents and the initial IPR petitions concerning the ’100 and ’838 Patents, which were
`subsequently instituted by the PTAB in early January 2022. Following institution of Uber’s IPRs,
`Lyft filed its own IPR petitions on January 29, 2022 that are substantively identical to Uber’s
`instituted IPRs, and as a result, are expected to be instituted for the same reasons Uber’s IPRs were
`instituted. See Ex. 14; Ex. 15; Ex. 16. Lyft files this motion shortly after filing its own IPRs on
`grounds the PTAB has already determined are reasonably likely to prevail. Accordingly, this factor
`weighs against a finding of undue prejudice to AGIS.
`2.
`Status of the USPTO Proceedings
`Patent Office proceedings are currently pending against all of the asserted claims not already
`found invalid by the Patent Office. In particular, the USPTO granted EPR requests concerning the
`asserted claims of the ’728 and ’724 Patents in December 2021 after determining that the grounds
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`7
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 13 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`presented in those requests raised substantial new questions of patentability. See Exs. 2 & 3. Lyft
`expects that the USPTO will issue first office actions imminently in view of the fact that AGIS did
`not submit Patent Owner Responses by the operative deadlines for which AGIS specifically
`requested two-month extensions. See 37 C.F.R. § 1.550(a); Exs. 4 & 5; see also Ex. 6 (showing
`average time from filing to a first action on the merits at 4.39 months). This delay requested by
`AGIS paired with its subsequent no action runs contrary to the representations AGIS made to this
`Court in advocating for an expedited case schedule, specifically, that it would—“as a matter of
`expediency”—“try [its] hardest to get the [’728 and ’724 Patents] out of the Patent Office as quickly
`as possible.” Ex. 13 at 49:10-12.
`The other Challenged Patents—the ’100 and ’838 Patents—are implicated by pending IPR
`proceedings, the relevant petitions for which are likely to be instituted based on the fact that the
`PTAB previously instituted IPR on the same invalidity grounds. See supra § I & III(C)(1); see also
`Exs. 7-9. Institution decisions concerning Lyft’s IPR petitions should be rendered by August 8,
`2022, about a month prior to the Claim Construction Hearing, and a final written decision regarding
`these petitions should issue on or before August 8, 2023, approximately two months before the date
`this case is set for trial. See Dkt. 67 at 1-2.
`In view of the fact that the IPRs will be decided before this case is scheduled to reach trial
`and because AGIS has taken affirmative actions to slow the progress of the EPRs despite contrary
`representations to this Court, this factor also weighs against a finding of undue prejudice to AGIS.
`3.
`Timing of the USPTO Review Requests
`This factor also weighs against a finding of undue prejudice to AGIS. As previously stated,
`EPRs and IPRs concerning the Patents-in-Suit were filed well ahead of the case management
`conference in this case. See supra § I (explaining that EPR requests were filed for the ’728, ’724
`and ’970 in May 2020 and October 2021 and IPRs concerning the ’100 and ’838 Patents were
`initially filed in July 2021). Lyft’s IPRs regarding the ’100 and ’838 Patents filed in January 2022
`would have likely been joined with Uber’s IPRs and resolved by January 2023 absent AGIS’s
`motion at the PTAB to dismiss the Uber IPRs, which will likely delay the final resolution of Lyft’s
`IPRs by seven months, until August 2023. Because Lyft diligently filed its IPRs concerning the
`
`LYFT’S MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`INVOLVING THE PATENTS-IN-SUIT
`
`8
`
`CASE NO. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 103 Filed 04/18/22 Page 14 of 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`’100 and ’838 Patents promptly after the Uber IPRs were instituted, which would have resulted in
`resolution by January 2023 absent AGIS’s decision to seek dismissal of the Uber IPRs, a finding of
`prejudice is not supported by this factor. See GoPro, 2017 U.S. Dist. LEXIS 92480, at *13-14
`(explaining that the timing of review request factor did not support a finding of prejudice to the