Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 1 of 7
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`Alfred R. Fabricant
`afabricant@fabricantllp.com
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Benjamin T. Wang
`bwang@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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`LYFT, INC.,
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`Case No. 5:21-cv-04653-BLF (SVK)
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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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`DEFENDANT AGIS SOFTWARE
`DEVELOPMENT LLC’S RESPONSE IN
`OPPOSITION TO LYFT, INC.’S
`MOTION TO COMPEL DISCOVERY
`AND COMPLIANCE WITH LOCAL
`PATENT RULES (Dkt. 88)
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`Hon. Judge Beth Labson Freeman
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`DEFENDANT’S RESP. IN OPP TO LYFT, INC. MOTION TO COMPEL
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`5:21-cv-04653-BLF (SVK)
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`Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 2 of 7
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`Lyft’s motion to compel (“Motion”) should be denied. AGIS Software has produced the
`documents it has in its possession, custody, and control as required under Patent L.R. 3-2.
`First, AGIS Software has produced all documents in its possession, custody, and control
`responsive to Patent L.R. 3-2. This includes the production of documents responsive to Patent L.R.
`3-2(b), 3-2(c), 3-2(d), and 3-2(e). See Dkt.84-2. Regarding prior settlement agreements with third
`parties, as explained during parties’ meet and confer, AGIS Software has submitted that the parties
`have not finalized the protective order to be entered in the present case and there exists relevant
`disputes that affect third-party information. Lyft is fully aware of these disputes because Lyft is the
`proponent of set of proposals to permit the disclosure of protected materials, including third-party
`confidential information, to designated in-house counsel of Lyft. Lyft’s argument that an interim
`protective order is in place does not resolve the issue because entry of a protective order will
`immediately permit Lyft to gain access to third-party confidential information which would be kept
`on Lyft’s own computers and servers. Under the settlement agreements, AGIS has an obligation to
`protect the confidential information of these third parties, and AGIS Software has submitted that it
`will produce such agreements in accordance with the terms of the agreements and the entry of the
`appropriate protective order.
`Second, Lyft alleges that AGIS Software has not produced “documentation relevant to
`Patent L.R. 3-2(b) to establish alleged priority dates in public proceedings.” Dkt. 88 at 2. This is not
`true. AGIS Software has produced publicly-available documents relevant to the conception,
`reduction to practice, and diligence in reducing to practice certain claimed inventions, including
`recent USPTO reexamination records confirming the validity of the patents. See Dkt. 84-2. Lyft
`cites to such documents in its Motion. See Dkt. 88 at 2-3. To the extent Lyft seeks additional
`documents not in AGIS Software’s possession, custody, and control, it has informed Lyft such
`documents do not fall within the scope of L.R. 3-2(b) because they are not AGIS Software’s
`documents. Upon entry of an operative complaint and a protective order that does not permit
`disclosure of third-party confidential information to Lyft’s in-house counsel, the parties may take
`the necessary steps (e.g., subpoena) to conduct discovery of relevant third parties. Lyft incorrectly
`contends that this information “is readily accessible to AGIS Software, much of which was likely
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`Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 3 of 7
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`produced in the EDTX Action, and AGIS Software is under independent obligation to produce in
`this case.” Dkt. 88 at 1. This is not true. AGIS Software has produced the documents in its
`possession, custody, or control response to Patent L.R. 3-2. AGIS Software and AGIS, Inc. are
`separate and distinct entities, and one is not the alter ego of the other. To the extent Lyft suggests
`AGIS, Inc. produced documents in the EDTX case, AGIS, Inc. was not a party to that case and
`produced documents as a third party. Moreover, in the EDTX case, no Lyft in-house counsel were
`authorized to receive, access, or store on their computers and servers any third-party confidential
`information, including the sensitive information of AGIS, Inc. This is particularly important because
`AGIS, Inc. is a known defense and government contractor.
`Third, AGIS Software has provided a fulsome response to Lyft’s jurisdictional interrogatory
`No. 1, which requests AGIS Software “[i]dentify all interactions, including Communications,
`between AGIS Software, AGIS Holdings, and/or AGIS, Inc. and any Person, company, or entity
`located, based, or incorporated in California from 2015 to the present, including but not limited to
`customers or potential customers of AGIS, Inc., licensees or potential licensees of AGIS Software
`and/or AGIS, Inc. . . .” Dkt. 89-4 at 5-6. In response, AGIS Software stated “AGIS Software is
`unaware of any communications with AGIS, Inc. and AGIS Holdings regarding any licensees and
`customers or any ‘interactions,’ including ‘Communications’ . . .” Id. at 7. AGIS Software also
`stated it filed complaints against defendants in the EDTX. Id. at 8. AGIS Software submitted it has
`“no activities, contacts, and customers in California.” Id. Lyft alleges AGIS Software’s response in
`insufficient because “[i]t is not possible that AGIS Software executed even one of these licenses
`without communications to and from the licensee.” Dkt. 88 at 3. Further, Lyft alleges “AGIS
`Software is improperly withholding non-privileged communications made by AGIS Software’s
`agents, including attorneys hired to enforce and negotiate its license agreements.” Id. In support,
`Lyft cites to the deposition testimony of Tom Meriam, AGIS Software’s corporate designee. Dkt.
`88 at 3.
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`Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 4 of 7
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`It is undisputed AGIS Software entered into those agreements after the filing of the
`complaints in the EDTX. Any communications occurred were in the context of litigation in the
`EDTX and was conducted between outside counsel during litigation.3 Lyft appears to contend
`communications among outside counsel is relevant to its complaint. This contention is legally and
`factually unsupportable. That certain defendants in the patent infringement lawsuits filed by AGIS
`Software in Texas “happen to have principal places of business in California is insufficient, without
`more, to satisfy [Lyft’s] obligation to demonstrate [AGIS Software] purposefully directed its
`enforcement activities at California.” Kyocera Int’l, Inc. v. Semcon IP, Inc., 2018 WL 5112056, at
`*3 (S.D. Cal. Oct. 19, 2018) (citing to Adobe Sys. Inc. v. Tejas Res., LLC, 2014 WL 4651654, at *5
`(N.D. Cal. Sept. 17, 2014) (holding ‘the fact that [the defendant] has pursued enforcement actions
`against California residents in the Eastern District of Texas does not support the exercise of personal
`jurisdiction of [the defendant] in California’)).4 AGIS Software itself had no communications with
`California defendants. Communications among outside counsel, who happen to maintain offices in
`California, are not relevant to personal-jurisdiction contacts. To the extent there was any mediation
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`Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 5 of 7
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`between the parties, such negotiations occurred in Texas before Ret. Judge David Folsom located at
`the offices of Jackson Walker LLP in Dallas, Texas.
`Lyft alleges such communications are relevant under Trimble, Inc. v PerDiemCo LLC, 997
`F.3d 1147 (9th Cir. 2021). But this Court noted in its motion to dismiss Lyft’s complaint, “Trimble
`involved a very specific set of facts” where parties were “communicating ‘via letter, email, or
`telephone at least twenty-two times,’ in which the defendant ‘amplified its threats of infringement
`as the communications continued, asserting more patents, and accusing more of Trimble[’s] . . .
`products of infringement.” Dkt. 61 at 5.5 While the Court noted “it is not clear from the Complaint
`that all the alleged communications between AGIS Software and California companies took place
`after the filing of AGIS Software’s lawsuits,” AGIS Software has since produced responses to Lyft’s
`interrogatories. See Dkt. 89-4. In contrast to Trimble, any negotiations via mediation to settle the
`EDTX litigations occurred after the filing of the complaints against each of the defendants. Dkt. 88-
`10 at 8-9. There is no evidence in the record AGIS Software had any communications with
`Defendants prior to the filing of the complaints in EDTX. Accordingly, there is no such “arms-
`length negotiation in anticipation of a long-term continuing business relationship,” where a
`complaint was already filed and to the extent any exist, Lyft cannot demonstrate the purported
`relevance of such communications solely between outside counsel to its jurisdictional discovery.
`Lastly, Lyft appears to allege it is AGIS Software has failed to provide discovery from its
`affiliates. Dkt. 88 at 4-5. However, the Court’s Order expressly granted Lyft’s jurisdictional
`discovery request “in the form of five interrogatories and one four-hour Rule 30(b)(6) deposition.”
`Dkt. 61 at 10. Rule 33 Interrogatories and Rule 30(b)(6) depositions are limited to parties. AGIS
`Software is the only party to this case and it remains separate and distinct from AGIS, Inc. The
`Court’s Order did not include provisions for subpoenas to AGIS, Inc. and AGIS Software. Lyft
`alleges AGIS Software responses are “contrary to this Court’s order specifically granting Lyft leave
`to pursue such discovery,” yet cannot point to any specific language in the Court’s Order. Dkt. 99
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`5 The Court also noted “the Federal Circuit found that the defendant’s ‘attempts to extract a license
`in this case are much more akin to ‘an arms-length negotiation in anticipation of a long-term
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`continuing business relationship.’” Id. (emphasis added).
`DEFENDANT’S RESP. IN OPP TO LYFT, INC. MOTION TO COMPEL
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`5:21-cv-04653-BLF (SVK)
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`RUSS AUGUST & KABAT
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`Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 6 of 7
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`at 5. Accordingly, Lyft’s subpoenas exceeded the scope of the jurisdictional discovery expressly
`ordered by this Court, and Lyft’s requests should be denied.
`For the foregoing reasons, Defendant AGIS Software respectfully requests that Lyft’s
`Motion to Compel be denied in its entirety.
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`Case 5:21-cv-04653-BLF Document 106 Filed 04/18/22 Page 7 of 7
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`DATED: April 18, 2022
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`Respectfully submitted,
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`RUSS AUGUST & KABAT
`By: /s/ Benjamin T. Wang
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` Benjamin T. Wang
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`FABRICANT LLP
`Alfred R. Fabricant
`ffabricant@fabricantllp.com
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`vrubino@fabricantllp.com
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`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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`CERTIFICATE OF SERVICE
`The undersigned hereby certified that a true and correct copy of the above and foregoing
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`document has been served via electronic mail on April 18, 2022, to all counsel of record.
`I declare under the penalty of perjury that the foregoing is true and correct.
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`DATED: April 18, 2022
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`/s/ Benjamin T. Wang
` Benjamin T. Wang
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