throbber
Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 1 of 30
`
`Exhibit 4
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 2 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.,
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`LYFT, INC.,
`






`






`
`CASE NO. 2:21-cv-00072-JRG-RSP
`(Lead Case)
`
`CASE NO. 2:21-cv-00024-JRG-RSP
`(Member Case)
`
`LYFT, INC.’S NOTICE OF AMENDED SUBPEONA AD TESTIFICANDUM TO
`ADVANCED GROUND INFORMATION SYSTEMS, INC.
`
`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
`
`PLEASE TAKE NOTICE that, pursuant to Rules 34 and 45 of the Federal Rules of Civil
`
`Procedure, counsel for Defendant Lyft, Inc. (“Lyft”), will be issuing the attached amended
`
`subpoena for deposition to Advanced Ground Information Systems, Inc..
`
`Dated: September 21, 2021
`
`Respectfully Submitted,
`
`By: /s/ Bethany R. Salpietra
`Bethany R. Salpietra
`
`Jeremy J. Taylor
`Baker Botts L.L.P.
`jeremy.taylor@bakerbotts.com
`101 California St., Suite 3600
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Facsimile: (415) 291-6300
`
`1
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 3 of 30
`
`Bethany R. Salpietra
`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
`
`Deron R. Dacus
`The Dacus Firm, P.C.
`ddacus@dacusfirm.com
`821 ESE Loop 323, Suite 430
`Tyler, Texas 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 581-2543
`
`Attorneys for Defendant Lyft, Inc.
`
`CERTIFICATE OF SERVICE
`
`I certify that on September 21, 2021 all counsel of record for Plaintiff were served with
`a copy of this document via electronic mail.
`
`/s/ Bethany R. Salpietra
`Bethany R. Salpietra
`
`2
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 4 of 30
`
`AO 88A (Rev. 12/20) Subpoena to Testify at a Deposition in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
`__________ District of __________
`
`Civil Action No.
`
`))))))
`
`Plaintiff
`v.
`
`Defendant
`
`To:
`
`(Name of person to whom this subpoena is directed)
`’ Testimony: YOU ARE COMMANDED to appear at the time, date, and place set forth below to testify at a
`deposition to be taken in this civil action. If you are an organization, you must promptly confer in good faith with the
`party serving this subpoena about the following matters, or those set forth in an attachment, and you must designate one
`or more officers, directors, or managing agents, or designate other persons who consent to testify on your behalf about
`these matters:
`
`Place:
`
`Date and Time:
`
`’ Production: You, or your representatives, must also bring with you to the deposition the following documents,
`electronically stored information, or objects, and must permit inspection, copying, testing, or sampling of the
`material:
`
`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
`
`Date:
`
`CLERK OF COURT
`
`OR
`
`Signature of Clerk or Deputy Clerk
`
`Attorney’s signature
`
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
`
`Notice to the person who issues or requests this subpoena
`If this subpoena commands the production of documents, electronically stored information, or tangible things before
`trial, a notice and a copy of the subpoena must be served on each party in this case before it is served on the person to
`whom it is directed. Fed. R. Civ. P. 45(a)(4).
`
`See Attachment A
`
`See Attachment A
`
` Eastern District of Texas
`
`AGIS Software Development LLC,
`
`2:21-cv-00072-JRG-RSP
`
`T-Mobile USA, Inc. et al.,
`
`4
`
`Remote Deposition
`
`The deposition will be recorded by this method:
`
`10/01/2021 9:00 am
`
`stenographic and videographic means
`
`4
`
`09/21/2021
`
`/s/ Bethany R. Salpietra
`
`Lyft, Inc.
`
`Bethany Salpietra, Baker Botts L.L.P, 2001 Ross Ave., Ste. 900, Dallas, TX 75201
`214-953-6765, bethany.salpietra@bakerbotts.com
`
`SUBPOENA TO TESTIFY AT A DEPOSITION IN A CIVIL ACTION
`Advanced Ground Information Systems, Inc.
` c/o BEYER, MALCOLM K JR, 92 Lighthouse Dr., Jupiter, FL 33469
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 5 of 30
`
`AO 88A (Rev. 12/20) Subpoena to Testify at a Deposition in a Civil Action (Page 2)
`
`Civil Action No.
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`’ I served the subpoena by delivering a copy to the named individual as follows:
`
`’ I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`2:21-cv-00072-JRG-RSP
`
`0.00
`
`Print
`
`Save As...
`
`Add Attachment
`
`Reset
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 6 of 30
`
`AO 88A (Rev. 12/20) Subpoena to Testify at a Deposition in a Civil Action (Page 3)
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(i) disclosing a trade secret or other confidential research, development,
`or commercial information; or
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
`(c) Place of Compliance.
`
`(1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
`(A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
`(B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
`(i) is a party or a party’s officer; or
`(ii) is commanded to attend a trial and would not incur substantial
`expense.
`
`(2) For Other Discovery. A subpoena may command:
`(A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
`(B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
`(1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
`(2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
`(ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
`(3) Quashing or Modifying a Subpoena.
`
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
`
`(i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`
`(e) Duties in Responding to a Subpoena.
`
`(1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 7 of 30
`
`ATTACHMENT A
`
`DEFINITIONS
`
`1.
`
`The requests, as well as the instructions provided below, are subject to and
`
`incorporate the following definitions and instructions as used herein, regardless of whether upper
`
`or lower case letters are used:
`
`2.
`
`“Advanced Ground Information Systems, Inc.” “You,” and “Your,” means
`
`Advanced Ground Information Systems, Inc., including Your agents, representatives, attorneys,
`
`and any other entities that are owned or controlled by Advanced Ground Information Systems, Inc.
`
`or that possess Documents within the control of Advanced Ground Information Systems, Inc.
`
`3.
`
` “Action” or “this Litigation” shall means the above-captioned proceeding in the
`
`United States District Court for the Eastern District of Texas, with case numbers 2:21-cv-00072-
`
`JRG-RSP (Lead Case), 2:21-cv-00024-JRG-RSP (Member Case).
`
`4.
`
`“Asserted Patent(s)” means each or all of the U.S. patents that AGIS is asserting in
`
`this action against Lyft, namely, U.S. Patent Nos. 7,031,728 (“the ’728 patent”), 7,630,724 (“the
`
`’724 patent”), 8,213,970 (“the ’970 patent”), 10,299,100 (“the ’100 patent”), and 10,341,838 (“the
`
`’838 patent”).
`
`5.
`
`“Related Patents” means whether or not abandoned or issued, (a) any patent or
`
`patent application filed anywhere in the world claiming priority to any Asserted Patent, (b) any
`
`patent or patent application filed anywhere in the world claiming priority to any patent or patent
`
`application to which any Asserted Patent claims priority, (c) any patent or patent application filed
`
`anywhere in the world to which any Asserted Patent claims priority or on which any Asserted
`
`Patent depends for priority, (d) any reissue, reexamination, or post-grant review (including Inter
`
`Partes review and Covered Business Method review) of any of the aforementioned patents or
`
`4
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 8 of 30
`
`patent applications, and (e) any foreign counterpart patent or foreign counterpart application of
`
`any of the aforementioned patents or patent applications. For the avoidance of doubt, “Related
`
`Patents” includes, without limitation, the following applications and/or patents:
`
`Filing Date
`App. No.
`11/612,830
`12/19/2006
`11/623,450
`1/16/2007
`11/625,851
`1/23/2007
`12/761,533
`4/16/2010
`13/751,453
`1/28/2013
`14/027,410
`9/16/2013
`14/529,978
`10/31/2014
`14/633,764
`2/27/2015
`14/633,804
`2/27/2015
`14/695,218
`4/24/2015
`14/695,233
`4/24/2015
`14/695,251
`4/24/2015
`15/255,046
`9/1/2016
`15/287,638
`10/6/2016
`15/469,469
`3/24/2017
`16/435,203
`6/7/2019
`16/847,174
`4/13/2020
`17/377,557
`7/16/2021
`11/615,472
`12/22/2006
`11/623,862
`1/17/2007
`11/670,475
`2/2/2007
`PCT/US05/33384 9/16/2005
`2012JP-0024158
`2/7/2012
`2005EP-0798578
`9/19/2005
`2007JP-0532560
`9/19/2005
`PCT/US08/51246 1/17/2008
`PCT/US07/66689 4/16/2007
`
`Patent No.
`7,853,273
`7,672,681
`7,805,146
`8,364,129
`8,538,393
`8,880,042
`9,467,838
`9,749,829
`9,445,251
`-
`9,408,055
`-
`9,820,123
`9,706,381
`10,292,033
`10,645,562
`-
`-
`8,126,441
`7,689,232
`7,764,954
`-
`-
`EP1800498
`JP4996466
`
`6.
`
`“Asserted Claims” means the claims of each and any of the Asserted Patents that
`
`AGIS Software Development LLC alleges, at this time or any time in the future, is infringed by
`
`any Accused Product.
`
`5
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 9 of 30
`
`7.
`
`“Accused Product(s)” means an apparatus, product, device, process, method, act,
`
`composition, system, computer-readable medium, or other instrumentality that AGIS Software
`
`Development LLC alleges infringes any Asserted Claim of the Asserted Patents.
`
`8.
`
`“Named Inventors” means any individual who is listed as an inventor on any of the
`
`Asserted Patents and Related Patents.
`
`9.
`
`AGIS Software Development LLC, “Plaintiff,” shall each mean and refer to AGIS
`
`Software Development LLC, individually and collectively, including their agents, officers,
`
`directors, employees, consultants, representatives, attorneys, predecessors and successors in
`
`interest, subsidiaries, affiliates, parents, divisions, joint ventures, licensees, franchisees, assigns,
`
`members and related entities, and any other legal entities, whether foreign or domestic that are
`
`owned or controlled by AGIS Software Development LLC, and all predecessors and successors in
`
`interest to such entities, and any entity owned in whole or in part by, affiliated with, or controlled
`
`in whole or in part by AGIS Software Development LLC, as well as the agents, officers, directors,
`
`employees, consultants, representatives and attorneys of any such entities.
`
`10.
`
`“LifeRing Product(s)” shall mean and refer to each and every LifeRing product
`
`developed, sold, offered for sale, and/or distributed by You or Your affiliates including, without
`
`limitation, all current and past implementations or versions of such product(s).
`
`11.
`
`“Third Party” or “Third Parties” means anyone other than Lyft or Advanced
`
`Ground Information Systems, Inc.
`
`12.
`
`“Document” shall have the broadest meaning permitted under the Federal Rules of
`
`Civil Procedure and the Federal Rules of Evidence, and includes writings, recordings,
`
`photographs, phonorecords, videos, drawings, charts, and other graphic matter that is or has been
`
`in AGIS’s actual or constructive possession or control. “Document” includes any tangible
`
`6
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 10 of 30
`
`expression regardless of the manner or medium in which the record is produced, reproduced, or
`
`stored, including without limitation any written, printed, typed, recorded, photographed,
`
`photocopied, taped, graphic, or other matter, in whatever form and whether in final or draft form.
`
`“Document” further includes electronically stored information, including without limitation
`
`electronic mail, electronic information stored on computer drives, diskettes, tapes, CDs, or other
`
`computer media, as well as any other information stored magnetically, electronically, optically, or
`
`mechanically. A draft or non-identical copy is a separate document within the meaning of this
`
`term. Any document bearing marks, including, without limitation, initials, stamped indicia,
`
`comments, or notations not part of the original document or photographic reproduction thereof, is
`
`a separate document.
`
`13.
`
`“Thing” means all categories of tangible objects not included within the definition
`
`of “Document.”
`
`14.
`
`“Communication” means, without limitation, any transmittal of information in the
`
`form of facts, ideas, inquiries or otherwise, whether written, oral, or visual, and whether in person
`
`or by telephone, letter, or any other medium and any attachments thereto. A document or thing
`
`transferred, whether temporarily or permanently, from one person to another shall be deemed to
`
`be a communication between such persons whether or not such document or thing was prepared
`
`or created by the transferor or addressed to the transferee.
`
`15.
`
`“Concerning,” “concern(s),” “referring to,” “relating to,” “related to,” “relate(s)
`
`to”, “pertaining to,” or “pertain(s) to” shall mean identifying, referring to, concerning, evidencing,
`
`demonstrating, summarizing, reflecting, constituting, containing, embodying, mentioning,
`
`pertaining to, commenting on, connected with, discussing, describing, analyzing, showing,
`
`comprising, illustrating, stating, dealing with, responding to, involving, recording, supporting,
`
`7
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 11 of 30
`
`negating, or relating to in any way relevant to a particular subject, in whole or in part, either directly
`
`or indirectly.
`
`16.
`
`“Product(s)” shall mean any machine, manufacture, apparatus, device, software,
`
`system, instrument, mechanism, appliance, assemblage of components/parts (either individually
`
`or collectively), process, or method which are designed to function together electrically,
`
`mechanically, chemically, or otherwise, to achieve a particular function or purpose, including
`
`those offered for sale, sold, or under development.
`
`17.
`
`The terms “and” and “or” shall be construed either disjunctively or conjunctively
`
`as necessary to bring within the scope of the discovery request all responses that might otherwise
`
`be construed to be outside of its scope.
`
`18.
`
`19.
`
`The terms “any,” “all,” “every,” and “each” shall each mean and include the other.
`
`The singular form of any word shall be deemed to include the plural. The plural
`
`form of any word shall be deemed to include the singular.
`
`20.
`
`The use of a verb in any tense shall be construed as the use of the verb in all other
`
`tenses.
`
`21.
`
`“Include” and “including” shall mean including without limitation.
`
`8
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 12 of 30
`
`INSTRUCTIONS
`
`The following instructions shall apply to each of the Document Requests herein:
`
`1.
`
`In responding to these requests, please furnish all information that is available to
`
`you or subject to your control, including information in the possession, custody, or control of
`
`your officers, directors, employees, representatives, consultants, agents, servants, attorneys,
`
`accountants, or any person who has served in any such role at any time, as well as corporate
`
`parents, subsidiaries, affiliates, divisions, predecessor companies or proprietorships, any joint
`
`venture to which you are a party, and other persons acting on your behalf.
`
`2.
`
`You are requested to produce the original and each non-identical copy or draft
`
`of each Document requested herein that is in Your possession, custody or control in its entirety,
`
`without abbreviation or redaction.
`
`3.
`
`If any portion of a Document is responsive to a request, you are requested to
`
`produce the entire Document including all attachments and enclosures, redacting only privileged
`
`material, if any.
`
`4.
`
`All Documents should be produced in the same file or other organizational
`
`environment in which they are maintained in the ordinary course of business.
`
`5.
`
`Each item produced should bear unique identifying control numbers (e.g., Bates
`
`labels) on each item or page if the item is a Document.
`
`6.
`
`Color copies of Documents are requested to be produced where color is necessary
`
`to interpret or understand the contents.
`
`7.
`
`Electronic records and computerized information should be produced in their
`
`native electronic format, together with a description of the system from which they were derived
`
`sufficient to permit rendering the records and information intelligible.
`
`9
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 13 of 30
`
`8.
`
`If you cannot fully comply with any request, comply to the maximum extent
`
`possible and explain: (a) what information you refuse to produce and (b) why full compliance
`
`is not possible. If you object to any of the requests, or any subpart of a request, herein, you shall
`
`state the specific grounds asserted for objecting and not producing the document or tangible
`
`thing, and identify each such item by its nature. Furthermore, you shall identify, to the extent
`
`possible, those documents or things that you will produce notwithstanding Your objection.
`
`9.
`
`These requests are continuing in character. If, after making the requested
`
`production, you obtain or become aware of any further producing the requested Document
`
`responsive to these requests, you are requested to produce such additional Document.
`
`Defendants reserve the right to propound additional requests.
`
`10.
`
`The following requests are to be construed as broadly as their language permits.
`
`They are to be construed independently, except when such construction limits their scope. Any
`
`ambiguity should be resolved by selecting the broadest possible construction. If, in responding
`
`to these requests, you encounter any ambiguities when interpreting a request, instruction, or
`
`definition, in your response, set forth the matter deemed ambiguous and the interpretation used
`
`in responding.
`
`10
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 14 of 30
`
`DOCUMENTS TO BE PRODUCED
`
`REQUEST NO. 1
`Documents sufficient to evidence each discussion with, disclosure to, or other manner of
`
`providing to a third party, or sale of or offer to sell, each invention claimed in the Asserted Patents
`
`and Related Patents prior to the filing date identified on the face .
`
`REQUEST NO. 2
`All Documents evidencing the conception, reduction to practice, design, and development
`
`of each alleged invention in the Asserted Patents and Related Patents.
`
`REQUEST NO. 3
`All known prior art to the Relevant Patents and Applications that has not been submitted
`
`to the Patent Office.
`
`REQUEST NO. 4
`Documents and Communications regarding the conveyance of any rights to any of the
`
`Asserted Patents and Related Patents, and all Documents and communications relating thereto.
`
`REQUEST NO. 5
`To the extent not covered by the previous request, Documents and Communications
`
`regarding the conveyance of any rights to any LifeRing Product(s) and all Documents and
`
`Communications relating thereto.
`
`REQUEST NO. 6
`Documents sufficient to show licenses, payments, royalties, technology transfers,
`
`authorizations to use, or covenants not to sue relating to any of the Asserted Patents and Related
`
`11
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 15 of 30
`
`Patents, including, without limitation, Documents evidencing any efforts by AGIS (successful or
`
`otherwise) to enter into any such agreement.
`
`REQUEST NO. 7
`Documents relating to Your compliance with the marking or notice provisions of 35 U.S.C.
`
`§ 287(a) with respect to the Asserted Patents and Related Patents, including, without limitation,
`
`all Documents relating to compliance with the marking provisions by licensees of the Asserted
`
`Patents.
`
`REQUEST NO. 8
`Documents relating to an analysis or opinion as to the validity, scope, enforceability, or
`
`infringement of any of the Asserted Patents and Related Patents.
`
`REQUEST NO. 9
`Documents and Communications prepared by You or on Your behalf, for submission
`
`and/or provision to an auditor, a governmental agency, or any third party referring or relating to
`
`any the Asserted Patents and Related Patents.
`
`REQUEST NO. 10
`All Documents concerning any formal or informal valuations and/or appraisals regarding
`
`any of the Asserted Patents and Related Patents.
`
`REQUEST NO. 11
`Documents relating to any analysis regarding actual, contemplated, or potential non-
`
`infringing alternatives to any of the alleged inventions covered by the Asserted Patents or Related
`
`Patents.
`
`REQUEST NO. 12
`Documents and Communications relating to any prototypes or products that You contend,
`
`12
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 16 of 30
`
`or have contended at any time, practice, have practiced, or have demonstrated any of the Asserted
`
`Patents and Related Patents, including information related to marketing, sales, offers for sale, and
`
`marking of or efforts to mark any such products.
`
`REQUEST NO. 13
`All Documents concerning the identification or determination of the Named Inventors of
`
`any of the Asserted Patents and Related Patents.
`
`REQUEST NO. 14
`Documents sufficient to show the actual and projected sales and profitability of the
`
`LifeRing Product(s).
`
`REQUEST NO. 15
`Documents relating to any sales or potential sales of any embodiments of the Asserted
`
`Patents and Related Patents, including the LifeRing Product(s), including, without limitation, the
`
`names of customers and potential customers, number of units sold, and financial data related to
`
`each sale.
`
`REQUEST NO. 16
`Documents sufficient to correlate the internal and external name(s) and internal and
`
`external model number(s) of the LifeRing Product(s) with relevant quarterly sales, revenue, cost,
`
`profit, and transfer pricing data.
`
`REQUEST NO. 17
`Documents relating to Your competitors in the market in which You operate, including,
`
`without limitation, any Documents comparing Your LifeRing Product(s) to competitor product
`
`offerings.
`
`13
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 17 of 30
`
`REQUEST NO. 18
`Documents sufficient to show or explain Your current and former patent or technology
`
`licensing policies or practices, including policies and practices relating to taking or granting
`
`licenses relating to any of the Asserted Patents and Related Patents, and any circumstances in
`
`which You have deviated from such policies or practices.
`
`REQUEST NO. 19
`Documents sufficient to show the past and present corporate organization of Advanced
`
`Ground Information Systems, Inc. and its affiliated or related entities.
`
`REQUEST NO. 20
`Documents sufficient to show Your past and present policies, procedures, and guidelines
`
`regarding document preservation, retention and electronic data.
`
`REQUEST NO. 21
`Documents relating to your compliance with Your policies, procedures, and guidelines
`
`regarding document preservation, retention and electronic data relative to litigation involving any
`
`of the Asserted Patents and Related Patents, including, without limitation, whether any relevant
`
`Documents have been deleted, destroyed, or otherwise lost since You began asserting any of the
`
`Asserted Patents and Related Patents.
`
`14
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 18 of 30
`
`TOPICS FOR TESTIMONY
`
`TOPIC NO. 1
`All Documents and Things prepared and/or reviewed by You in connection with the
`
`deposition on these Topics.
`
`TOPIC NO. 2
`The subject matter of all Documents and Things identified in response to the requests for
`
`documents.
`
`TOPIC NO. 3
`The authenticity of the Documents and Things in response to the requests for documents.
`
`TOPIC NO. 4
`The alleged invention(s) claimed in the Asserted Patents, the state of the art at the time
`
`the Asserted Patents were filed, and the alleged points of novelty and alleged advantages of each
`
`Asserted Claim over the prior art or non-infringing alternatives.
`
`TOPIC NO. 5
`Facts and circumstances related to the alleged priority dates, conception, reduction to
`
`practice, and diligence associated with the reduction to practice of each Asserted claim in the
`
`Asserted Patents.
`
`TOPIC NO. 6
`The inventorship of each Asserted Claim of the Asserted Patents, including identification
`
`of all individuals involved in research or work that relates to the subject matter of the Asserted
`
`Claims and the respective contributions of each individual involved in the research or work that
`
`relates to the subject matter of the Asserted Claims.
`
`15
`
`

`

`Case 5:21-cv-04653-BLF Document 123-5 Filed 05/03/22 Page 19 of 30
`
`TOPIC NO. 7
`The identification of any product made, used, sold or offered for sale by AGIS that You
`
`believe practices any claim of the Asserted Patents and the factual basis for that belief and the
`
`date of first offer for sale and sale of that product.
`
`TOPIC NO. 8
`Development of the LifeRing System product, including information related to
`
`prototypes.
`
`TOPIC NO. 9
`Your contention that Your products practice any claim of any of the Asserted Patents.
`
`TOPIC NO. 10
`The identification of the specific lines and modules of source code that supports Your
`
`contention that the LifeRing products practice the Asserted Claims of the Asserted Patents.
`
`TOPIC NO. 11
`The total number of units sold, gross revenue, net profits, profit margins, costs and pricing
`
`associated with any product identified to practice any claim of any of the Asserted Patents.
`
`TOPIC NO. 12
`The correlation of internal and e

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