Case 5:21-cv-04653-BLF Document 129 Filed 05/09/22 Page 1 of 5
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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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`Plaintiff,
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`v.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Defendant.
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`Case No. 21-cv-04653-BLF (SVK)
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`ORDER RE MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE
`WITH LOCAL PATENT RULES
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`Re: Dkt. Nos. 88, 106, 122, 123, 124
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`Before the Court is Plaintiff Lyft Inc.’s (“Lyft”) Motion to Compel Discovery and
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`Compliance with Local Patent Rules [Dkt. 88] and Defendant AGIS Software Development
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`LLC’s (“AGIS Software”) opposition [Dkt. 106]. Plaintiff’s motion springs from Judge
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`Freeman’s Order Granting Motion to Dismiss for Lack of Personal Jurisdiction with Leave to
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`Amend; Granting Jurisdictional Discovery, in which Plaintiff was granted leave to take
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`jurisdictional discovery consisting of five interrogatories and one four-hour 30(b)(6) deposition.
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`Dkt. 61. The undersigned held a hearing on April 29, 2022 and determined that further briefing
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`was required. Dkt. 116. After considering the briefing in this case, including the requested
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`supplemental briefing, the relevant law, and the arguments of counsel, for the reasons set forth
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`below, the Court GRANTS IN PART AND DENIES IN PART Lyft’s motion.
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`I.
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`PROCEDURAL HISTORY
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`The Court recounts only the background relevant to the resolution of this motion. AGIS
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`Software filed a patent infringement suit against, inter alia, Lyft in the Eastern District of Texas
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`on January 29, 2021 (the “Texas Action”). Dkt. 1 at ¶ 4. Roughly a year later, Judge Gilstrap
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`dismissed Lyft from the Texas Action. See AGIS Software Dev. LLC v. T-Mobile USA, Inc., No.
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`21-00072, ECF No. 212 (E.D. Tex. Jan. 19, 2022). While the Texas Action was still pending, Lyft
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`went on the offensive and filed suit against AGIS Software in this Court for declaratory judgment
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`Case 5:21-cv-04653-BLF Document 129 Filed 05/09/22 Page 2 of 5
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`of noninfringement of the same patents asserted against it in the Texas Action. Dkt. 1. Lyft did
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`not name AGIS, Inc. or AGIS Holding, Inc. in its complaint. See id. AGIS Software moved to
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`dismiss the action under Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction.
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`Dkt. 32. Lyft opposed arguing, in part, that AGIS, Inc. and AGIS Holding, Inc. are alter egos of
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`AGIS Software. Dkt. 41.
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`Judge Freeman granted the motion but, at Lyft’s request, permitted Lyft to take limited
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`jurisdictional discovery. Dkt. 61. Judge Freeman found that although Lyft had failed to allege
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`sufficient facts to establish personal jurisdiction over AGIS Software, Lyft had shown at least a
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`“colorable” basis for personal jurisdiction under the Federal Circuit’s recent decision in Trimble
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`Inc. v. PerDiemCo LLC, 997 F.3d 1147 (Fed. Cir. 2021), entitling Lyft to jurisdictional discovery.
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`Lyft argues that AGIS Software has sued multiple California Companies in the Texas Action and,
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`consequently, AGIS Software’s patent licensing and negotiating activities with those California
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`Companies is sufficient for specific jurisdiction under Trimble.
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`The Trimble court underscored that the personal jurisdiction analysis in patent cases is no
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`different than the analysis in non-patent cases. 997 F.3d at 1154. It then concluded that
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`defendant’s exchanging 22 communications with the California plaintiff over three months was
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`sufficient to satisfy the minimum contacts test in that action. Id. at 1156-57; see also Apple Inc. v.
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`Zipit Wireless, Inc., 30 F.4th 1368, 1376 (Fed. Cir. 2022) (finding defendant had requisite
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`minimum contacts with California based on communications regarding alleged infringement and
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`potential licensing). Here, Lyft seeks to show that AGIS Software’s communications with
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`California Companies AGIS Software has sued in the Texas Action are sufficiently extensive to
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`meet the purposeful direction prong of the specific jurisdiction test in this suit.
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`As authorized, Lyft propounded five jurisdictional interrogatories on AGIS Software, only
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`one of which is at issue: “Identify all interactions, including Communications, between AGIS
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`Software, AGIS Holdings, and/or AGIS, Inc. and any Person, company, or entity located, based,
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`or incorporated in California from 2015 to the present . . . .” Dkt. 88-11 (“Jurisdictional
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`Interrogatories”). The dispute before the undersigned concerns the scope of the Jurisdictional
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`Interrogatories Judge Freeman’s order allowed and the adequacy of AGIS Software’s production
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`Case 5:21-cv-04653-BLF Document 129 Filed 05/09/22 Page 3 of 5
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`to date under Patent L.R. 3-2. Both of these disputes turn on the question of whether AGIS
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`Software has custody and control over AGIS Inc. documents.1
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`The Parties appeared before the undersigned for a hearing on April 29, 2022, during which
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`it became clear that additional briefing was needed on issues of custody and control as between
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`AGIS Software and AGIS Inc. as well as the appropriate time frame for evaluation of personal
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`jurisdiction. Dkt. 117. The Court ordered AGIS Software to elucidate the circumstances under
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`which AGIS Software produced AGIS, Inc. documents in the Texas Action. Id. AGIS Software
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`later advised the Court through an ex parte communication that its production of AGIS Inc.
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`documents in the Texas Action had been voluntary. AGIS Software did not file further briefing on
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`this issue. In response, Lyft filed a brief, with evidentiary support, that under the Northern District
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`of California’s Local Patent Rule 3-2 and in response to Jurisdictional Interrogatory No. 1, AGIS
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`Software must produce more than just the AGIS, Inc. documents already produced in the Texas
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`Action. Dkt. 123. The Court also ordered both Parties to file briefs regarding the appropriate time
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`frame for which AGIS Software would be obligated to produce documents regarding its
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`communications with the California Companies involved in the Texas Action. Dkt. 117. The
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`Parties accordingly briefed this issue as well. Dkts. 122, 124.
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`The Court’s rulings are set forth below.
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`II.
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`LYFT’S MOTION TO COMPEL A MORE COMPLETE PRODUCTION UNDER
`PATENT LOCAL RULE 3-2: DENIED.
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`As set forth above, Lyft’s complaint against AGIS Software has been dismissed, pending
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`amendment to demonstrate that AGIS Software is subject to this Court’s jurisdiction. Accordingly,
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`Lyft’s request for additional documentation pursuant to Patent L. R. 3-2 is not proper at this
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`juncture and is therefore DENIED. The issue of custody and control is addressed more fully in
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`section III, below.
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`III. LYFT’S MOTION TO COMPEL MORE COMPLETE RESPONSES FROM AGIS
`SOFTWARE TO JURISDICTIONAL INTERROGATORY NO. 1 REGARDING
`AGIS SOFTWARE’S INTERACTIONS: GRANTED.
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`As the Court indicated at the hearing, identification of interactions, including
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`1 At the hearing, Lyft argued AGIS Software’s custody and control over both AGIS Inc. and AGIS
`Holdings, however only AGIS Inc. is addressed in the supplemental briefing.
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`Northern District of California
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`United States District Court
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`Case 5:21-cv-04653-BLF Document 129 Filed 05/09/22 Page 4 of 5
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`communications, between AGIS Software and any person or entity located in California is
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`relevant to determining whether AGIS Software is subject to the Court’s jurisdiction. See
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`Trimble, 997 F.3d at 1156-57; Apple, 30 F.4th at 1376. The only question is the proper time frame
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`for production. Upon further review of the Parties’ supplemental position statements and relevant
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`legal authority, the Court ORDERS the identification of interactions, including
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`communications, between AGIS Software and any person or entity located in California
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`from the period January 2015 to present. The Court notes AGIS Software’s argument that the
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`earliest date should be the date of its formation, June 2017. Although the company was officially
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`formed as of that date, it is conceivable that it was interacting with third parties prior to that date.2
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`The Parties also dispute the appropriate end date for identification of interactions, whether it
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`should be the date of AGIS Software suing Lyft in the Texas Action, the date of the Complaint in
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`this action or beyond. The Court will adopt Lyft’s time frame from January 2015 to present, and
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`the Parties can argue the relevance of interactions after the disputed dates in their respective briefs
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`addressing jurisdiction.
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`IV.
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`LYFT’S MOTION TO COMPEL MORE COMPLETE RESPONSES FROM AGIS
`SOFTWARE TO JURISDICTIONAL INTERROGATORY NO. 1 REGARDING
`INTERACTIONS OF AGIS, INC. OR AGIS HOLDINGS IN CALIFORNIA:
`GRANTED.
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`In granting AGIS Software’s motion to dismiss, Judge Freeman limited the mechanisms of
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`discovery to those proposed by Lyft: five interrogatories and one 30(b)6 deposition. As the
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`undersigned indicated at the hearing, although the scope of Judge Freeman’s order does not
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`facially provide for third-party discovery, the resolution of this dispute turns on whether AGIS
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`Software has possession, custody or control of AGIS, Inc.’s documents for purposes of Federal
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`Rule of Civil Procedure 34. See Dkt. 125 at 27:1-5. Under Rule 34, “control” has been
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`“construed broadly by the courts as the legal right, authority, or practical ability to obtain the
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`materials sought on demand.” Stella Sys., LLC v Medeanalytics, Inc., No. 14-880, 2015 WL
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`1870052, at *3 (N.D. Cal. Apr. 22, 2015) (quoting Steele v. Software Sys. Corp. v. DataQuick
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`2 In its Complaint, Lyft states that public records reveal that AGIS Software sued Apple Inc. in
`June 2017, the same time frame as AGIS Software’s inception. Dkt. 1 at ¶ 8.
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`Case 5:21-cv-04653-BLF Document 129 Filed 05/09/22 Page 5 of 5
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`Info. Sys., Inc., 237 F.R.D. 561, 564 (D. Md. 2006)). “Common relationships between a party and
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`its related nonparty entity are particularly important to the determination of control. Critical
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`factors here include the ownership of the nonparty, any overlap of directors, officers, and
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`employees, and the financial relationship between the two entities.” Id. In response to further
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`production pursuant to Patent L.R. 3-2, above, Lyft makes a strong showing of AGIS Software’s
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`control over AGIS Inc.’s documents based upon numerous voluntary productions in the Texas
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`Action. First, Lyft asserts, and AGIS Software does not deny, that AGIS Software and AGIS, Inc.
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`have the same CEO, Malcolm K. Beyer, Jr. Dkts. 89-3 at 2, 5; 124; 125 at 29:8-11.
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`Second, Lyft points to specific, voluntary productions of AGIS Inc. documents by AGIS
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`Software in the Texas Action. For example, AGIS Software produced AGIS, Inc. documents in
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`the Texas Action months before Lyft served a subpoena on AGIS, Inc. Dkt. 123-4 at 1. This
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`included making AGIS, Inc.’s source code available for inspection. Dkts. 123-10, 123-4 at 1-2.
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`Further, in response to the subpoena Lyft eventually served in the Texas Action, AGIS, Inc.’s
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`objections and responses acknowledged that AGIS Software already had produced AGIS, Inc.
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`documents in that action. Dkt. 123-7 at 6.
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` The Court finds this evidence indicative of “custody and control” over AGIS Inc.
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`documents. Significantly, in stating its position regarding production of documents in the Texas
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`Action, AGIS Software is utterly silent on the issue of control. Dkt. 124. Accordingly, in light of
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`AGIS Software’s demonstrated control over AGIS Inc. documents in the Texas Action, AGIS
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`Software is ORDERED to identify interactions, including communications, between AGIS,
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`Inc. and any person or entity located in California for the period from January 2015 to the
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`present.
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`SO ORDERED.
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`Dated: May 9, 2022
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`SUSAN VAN KEULEN
`United States Magistrate Judge
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