`
`Exhibit 11
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`
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`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 2 of 9
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`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
`
`
`
`Defendants.
`
`
`
`
`Case No. 2:21-cv-00024-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No. 2:21-cv-00072-JRG
`§
`(LEAD CASE)
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`PLAINTIFF’S DISCLOSURE OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`
`LYFT, INC.,
`
`v.
`
`
`
`Defendant.
`
`Plaintiff AGIS Software Development LLC (“AGIS”) hereby makes the following
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`infringement disclosures under the Patent Local Rules with respect to United States Patent
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`Nos. 7,031,728; 7,630,724; 8,213,970; 10,299,100, and 10,341,838 (collectively, “Patents-in-
`
`Suit”). AGIS’s investigation is ongoing and discovery has not yet commenced. Accordingly,
`
`these disclosures are based on information available to AGIS at this time. AGIS reserves the
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`right to supplement this disclosure after further discovery from defendant and non-parties,
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`particularly documents and other discovery regarding the Lyft Accused Products set forth below.
`
`AGIS also reserves the right to assert additional claims of the Patents-in-Suit, accuse different
`
`
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`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 3 of 9
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`products, or find alternative literal and/or equivalent infringing elements in the Lyft Accused
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`Products.
`
`I.
`
`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS PURSUANT TO PATENT LOCAL RULE 3-1
`
`A.
`
`ASSERTED CLAIMS
`
`Defendant Lyft, Inc. (“Defendant” or “Lyft”) has infringed and continues to infringe at
`
`least the following claims of the Patents-in-Suit in connection with the Lyft Accused Products set
`
`forth below:
`
`• Claim 7 of the ’728 Patent;
`
`• Claims 9, 12-16 of the ’724 Patent;
`
`• Claims 2, 10-13 of the ’970 Patent;
`
`• Claims 1-31 of the ’100 Patent; and
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`• Claims 1-26 of the ’838 Patent.
`
`AGIS reserves the right to seek leave of court to add, delete, substitute, or otherwise
`
`amend this list of asserted claims should further discovery, the Court’s claim construction, or
`
`other circumstances so merit.
`
`B.
`
`ACCUSED INSTRUMENTALITIES
`
`AGIS is currently aware that the following Lyft Products infringe each of the Patents-in-
`
`Suit, either alone or in concert with one or more other Lyft Accused Products:
`
`• Lyft applications, services, and servers; and
`
`• Lyft Driver applications, services, and servers.
`
`AGIS reserves the right to amend this list of accused instrumentalities, as well as other
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`information contained in this document and the exhibits hereto, to incorporate new information
`
`2
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`
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`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 4 of 9
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`learned during the course of discovery including, but not limited to, the inclusion of newly-
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`released products or any other equivalent devices ascertained through discovery.
`
`C.
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`CLAIM CHARTS
`
`Claim charts identifying a location of every element of every asserted claim of the
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`Patents-in-Suit within Lyft Accused Products are attached hereto as Exhibits A-E. AGIS
`
`believes that the citations in the claim charts are representative of all Lyft Accused Products. For
`
`example, where AGIS cites reference material or images representing an application, service, or
`
`server that citation is representative for all other such applications, services, or servers including
`
`all prior and future versions unless otherwise noted. AGIS reserves the right to amend these
`
`claim charts as well as other information contained in this document and the exhibits hereto, to
`
`incorporate new information learned during the course of discovery including, but not limited to,
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`information that is not publicly available or readily discernible without discovery. AGIS further
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`reserves the right to amend these claim charts, as well as other information contained in this
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`document and the exhibits attached hereto, pursuant to Patent Local Rules 3-1(g) and 3-6.
`
`D.
`
`LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS
`
`AGIS asserts that, under the proper construction of the asserted claims and their claim
`
`terms, the limitations of the asserted claims of the Patents-in-Suit are literally present in the Lyft
`
`Accused Products as set forth in the claim charts attached hereto as Exhibits A-E. AGIS
`
`contends that any and all elements found not to be literally infringed are infringed under the
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`doctrine of equivalents because the differences between the claimed inventions and the accused
`
`instrumentalities, if any, are insubstantial.
`
`AGIS contends that Lyft directly infringes the asserted claims by making, using, offering
`
`for sale, selling, and importing into the United States the accused instrumentalities as well as
`
`indirectly infringe by contributing to and/or inducing others (e.g., Lyft customers or its Lyft
`
`3
`
`
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`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 5 of 9
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`customers’ customers) to directly infringe those claims by making, using, offering for sale, or
`
`selling the Lyft Accused Products. AGIS contends that Lyft directly infringes the asserted
`
`claims by testing the Lyft Accused Products in the United States.
`
`Pursuant to Patent Local Rule 3-6(a)(1), AGIS reserves the right to amend its
`
`Infringement Contentions as to literal infringement or infringement under the doctrine of
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`equivalents, e.g., in light of the Court’s claim construction.
`
`E.
`
`PRIORITY DATES
`
`Under P.R. 3-1(e), each of the asserted claims of the Patents-in-Suit are entitled to a
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`priority date of at least as early as September 21, 2004.1 AGIS reserves the right to establish an
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`earlier date of invention based upon actions related to conception and reduction to practice of the
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`claimed inventions.
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`F.
`
`AGIS’S OWN PRODUCTS
`
`Pursuant to P.R. 3-1(f), AGIS contends that AGIS, Inc.’s LifeRing products are covered
`
`by at least one of claim 7 of the ’728 Patent; claims 9, 12-16 of the ’724 Patent; claims 2, 10-13
`
`of the ’970 Patent; claims 1-31 of the ’100 Patent; and claims 1-26 of the ’838 Patent. AGIS’s
`
`investigation is ongoing and AGIS reserves the right to supplement, amend, or amend these
`
`contentions in view of facts learned during discovery, the release of new products, or the
`
`modification of current products, and/or the Court’s claim construction.
`
`II.
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`PRODUCTION OF DOCUMENTS PURSUANT TO PATENT LOCAL RULE 3-2
`
`
`1 AGIS continues to rely on interim priority dates identified in each of the Patents-in-Suit to
`establish priority prior to the actual filing date of the Patents-in-Suit (e.g., interim priority date
`April 17, 2006 which corresponds to the filing date of U.S. Patent No. 7,630,724).
`
`4
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`
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`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 6 of 9
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`AGIS is producing or making available for inspection documents that are in AGIS’s
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`possession, custody, or control as set forth in Patent Local Rule 3-2. An AGIS 3-2 Production
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`Index identifying these documents is attached hereto.
`
`This preliminary identification of documents is for convenience and is not an admission
`
`that each document falls within any exemplary categories in the Patent Local Rules, or that any
`
`document qualifies as prior art. AGIS is continuing with its investigation, particularly with
`
`respect to ESI. Thus, AGIS reserves its right to add to, delete from, or otherwise modify its
`
`disclosures in this section as its investigation proceeds.
`
`Production of these documents is governed by Patent Local Rule 2-2, and, with the
`
`exception of documents produced pursuant to P.R. 3.2(c) and public documents listed in the
`
`infringement charts, are considered “Confidential – Outside Attorneys Eyes Only” and disclosure
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`of the confidential document or information shall be limited to each party’s outside attorney(s) of
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`record and the employees of such outside attorney(s).
`
`Dated: May 19, 2021
`
`
`
`
`
`
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`Respectfully submitted,
`
`
`
`5
`
`FABRICANT LLP
`
`
`
`
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`
`
`
`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 7 of 9
`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 7 of 9
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`ATTORNEYS FOR PLAINTIFF,
`ATTORNEYSFOR PLAINTIFF,
`AGIS SOFTWARE DEVELOPMENT
`AGIS SOFTWARE DEVELOPMENT
`LLC
`LLC
`
`6
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`
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`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 8 of 9
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on May 19, 2021, all counsel of record are being
`
`served with a copy of this document via electronic mail.
`
`
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`
`
`
`
`
`
`
`Case 5:21-cv-04653-BLF Document 123-12 Filed 05/03/22 Page 9 of 9
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`AGIS 3-2 PRODUCTION INDEX
`
`
`
`3-2(a)
`
`3-2(b)
`
`
`
`3-2(c)
`
`
`
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`
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`
`
`
`Bates Start
`AGISSOFTWARE_0000001
`
`Bates End
`AGISSOFTWARE_0000062
`
`
`
`
`Bates Start
`AGISSOFTWARE_0007713
`
`Bates End
`AGISSOFTWARE_0007871
`
`
`
`
`Bates Start
`AGISSOFTWARE_0000063
`
`Bates End
`AGISSOFTWARE_0007712
`
`Public Documents Listed in Infringement Charts
`
`
`
`Bates Start
`AGIS-LYFT0000001
`
`
`Bates End
`
`AGIS-LYFT0000114
`
`