`
`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 REPLY IN
`SUPPORT OF ITS 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
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`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`CASE NO. 5:21-cv-04653-BLF
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`Case 5:21-cv-04653-BLF Document 130 Filed 05/09/22 Page 2 of 9
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`I.
`
`INTRODUCTION
`None of the arguments presented by AGIS in its Opposition (Dkt. 120) (“Opp’n”) to Lyft’s
`Motion to Stay (Dkt. 103) (“Motion”) overcome the virtual certainty of modification to the asserted
`claims, which would streamline the issues in this case and avoid the time-consuming proceeding
`that would be rendered duplicative or unnecessary following the pending Patent Office proceedings.
`As an initial matter, any argument concerning the ’970 Patent is a red herring. AGIS has not asserted
`any valid claim of the ’970 Patent against Lyft, and thus it is currently immaterial to this Court’s
`analysis concerning a stay. With respect to the remaining four patents, the stay factors
`overwhelmingly favor granting a stay in this case, largely based on undisputed evidence. First,
`AGIS’s argument that it is too early to know whether the Patent Office proceedings will result in a
`simplification of the issues is not persuasive as the parties agree that each patent individually has an
`approximate 78% chance of being cancelled or changed, which results in a 99.8% likelihood that
`the Patent Office proceedings, collectively, will result in some level of simplification across the four
`patents. The Patent Office has already confirmed that the invalidity bases articulated in Lyft’s IPR
`petitions and the EPR requests have merit, and historical Patent Office statistics corroborate Lyft’s
`contention that the Patent Office proceedings will almost certainly impact the scope of this case.
`Second, this case is in the early stages of litigation, where motions on the pleadings are still pending
`and the parties have not engaged in merits discovery. Lastly, because AGIS is seeking a monetary
`award for any alleged infringement, AGIS has failed to articulate undue prejudice supported by
`Federal Circuit caselaw that would result from a stay of this case. Accordingly, Lyft respectfully
`requests the Court grant Lyft’s Motion.
`II.
`ARGUMENT
`A.
`Simplification of the Issues
`A stay will almost certainly simplify the issues in the instant case. Indeed, as Lyft pointed
`out in its Motion, there is a ~99.8% chance that at least one of the claims asserted in this action will
`either be canceled or amended as a result of the pending Patent Office proceedings. See Motion at
`6. The Patent Office has already determined that the invalidity bases identified in each of the IPR
`petitions and EPR requests have merit, thus undermining any argument that simplification is
`
`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`Case 5:21-cv-04653-BLF Document 130 Filed 05/09/22 Page 3 of 9
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`speculative at this point. See Dkts. 103-3; 103-4; 103-7; 103-8; 103-9. Specifically, with respect to
`the IPR petitions concerning the ’100 and ’838 Patents, the Patent Office previously instituted IPRs
`on precisely the same invalidity grounds presented in Lyft’s petitions over the arguments submitted
`by AGIS in those proceedings. See Dkts. 103-7; 103-8; 103-9. As this Court has previously
`recognized under a similar set of facts, “the PTAB’s prior institution decisions are strong indicators
`that IPR will again be instituted here.” Lighting Sci. Grp. Corp. v. Shenzhen Jiawei Photovoltaic
`Lighting Co., Ltd., No. 16-cv-03886-BLF, 2017 U.S. Dist. LEXIS 94182, at *9 (N.D. Cal. June 19,
`2017). In Lighting Sci., the patent challenger argued that there was a high likelihood of IPR
`institution based on the substantive overlap between already-instituted IPR petitions and non-
`instituted IPR petitions. See generally, id. The Court specifically opined that it seemed “highly
`likely” that the “PTAB repeats its previous institution decisions” concerning the same claims and
`grounds of the challenged patents. Id. at *8. Other courts have reached similar conclusions. See,
`e.g., Goodman v. Samsung Elecs. Am., Inc., No. 17-cv-5539 (JGK), 2017 U.S. Dist. LEXIS 193588,
`at *7-8 (S.D.N.Y. Nov. 22, 2017) (finding it “more likely that the PTAB will initiate inter partes
`review” on patent challenger’s IPR petition when the PTAB previously instituted IPR on identical
`grounds). Here, the circumstances are just as in Lighting Sci., as Lyft’s IPR petitions substantially
`overlap with IPR petitions that were previously instituted on the ’100 and ’838 patents.
`Likewise, it is highly likely (and not speculative) that formal rejections concerning the
`claims of the ’728 and ’724 Patents are forthcoming in the relevant EPRs. The Patent Office issued
`its initial findings concerning the patentability of these claims in view of the grounds raised in the
`respective EPR requests, and AGIS failed to contest them by its extended deadline to do so. See
`Motion at 2 (explaining that AGIS requested two-month extensions to respond to the Patent Office’s
`reexamination decisions despite its representations to this Court that it would “try [its] hardest to
`get the [’728 and ’724 Patents] out of the Patent Office as quickly as possible,” and did not ultimately
`file any response). In view of the fact that AGIS presented no argument opposing the Patent Office’s
`initial findings, it seems improbable that the Patent Office would change course at this stage and
`decline to issue rejections in the EPRs.
`Though AGIS contests the likelihood of IPR institutions and EPR rejections (which, as Lyft
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`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`demonstrates above, are actually likely to occur), AGIS does not challenge that the original, asserted
`claims are unlikely to survive IPR and/or EPR. Indeed, AGIS recognizes in its Opposition that
`original claims survive EPR only in the minority of cases (~20%), and that it is far more likely that
`claims will be amended or canceled during reexamination. See Opp’n at 5-6. AGIS also does not
`dispute that at least one challenged claim in an IPR petition is found to be unpatentable about 80%
`of the time. Compare Motion at 6 with Opp’n. These Patent Office statistics make it virtually
`certain that the pending IPR and EPR proceedings will impact the scope of this case, and proceeding
`in parallel or in advance of the conclusions from the Patent Office proceedings will result in
`duplicative and unnecessary efforts by the parties and this Court.
`Finally, this Court should ignore any argument by AGIS regarding the implication of the
`’970 Patent on Lyft’s request for a stay. See, e.g., Opp’n at 4 (arguing that the ’the ’970 Patent is
`not subject to any current challenge at the Patent Office). As Lyft originally argued in its Motion,
`AGIS has, to date, only asserted invalid claims of the ’970 Patent, and has not alleged that Lyft
`infringes any valid claim of the ’970 Patent. See Motion at 1; see also Dkts. 84-6 & 84-12 (Exs. E
`& K) (showing AGIS’s infringement allegations regarding invalid claims of the ’970 Patent). Like
`the ’724 and ’728 Patents, the Patent Office decided to reexamine the ’970 Patent, and ultimately
`found all challenged claims invalid. On December 9, 2021, revised claims emerged from the
`reexamination (See Dkt. 103-2). AGIS, however, has not asserted these revised claims in either its
`infringement contentions served February 25, 2022 or in its amended infringement contentions
`AGIS moved for leave to amend on April 1, 2022. Given the lack of any allegations concerning
`valid claims of the ’970 Patent, it is irrelevant to Lyft’s Motion that the ’970 is not presently involved
`in a Patent Office proceeding.
`Because each and every claim asserted by AGIS is currently involved in Patent Office
`proceedings and because it is a virtual certainty that some or all of the claims will be affected by
`these proceedings, the simplification of issues factor favors a stay.
`B.
`Stage of the Case
`This case is in its initial stages. At present, the parties await rulings on various gating
`motions, including Lyft’s Motion for Leave to File its First Amended Complaint (Dkt. 78) and
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`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`AGIS’s Motion for Leave to Amend Infringement Contentions (Dkt. 84). These motions won’t be
`heard until later this summer, and no discovery beyond the granted jurisdictional discovery has
`occurred. As discussed in Lyft’s Motion, courts in this District routinely grant motions to stay
`pending the outcome of post-grant proceedings in cases where the litigation is in comparable or later
`stages of the case. See Motion at 5. A stay is particularly warranted here where the Court has
`decided to not compel AGIS to comply with Patent Local Rule 3-2 given the early stage of the case
`while AGIS disputes jurisdiction. Dkt. 129 at 3.
`C.
`Undue Prejudice
`Timing of the USPTO Review Requests
`1.
`AGIS’s arguments concerning the timing of USPTO review requests are directed solely at
`Lyft’s filing of its IPR petitions. See Opp’n at 6-7. Specifically, AGIS harps on the fact that Lyft
`filed its IPR petitions “exactly one year from the date of the filing of the complaint against Lyft in
`the EDTX,” ostensibly suggesting that doing so was unreasonable. Id. at 6. But, as explained in its
`Motion, Lyft acted diligently and reasonably in filing its IPR petitions. See Motion at 8-9; see also
`DSS Tech. Mgmt. v. Apple, Inc., No. 14-cv-05330-HSG, 2015 U.S. Dist. LEXIS 57704, at *11 (N.D.
`Cal. May 1, 2015) (declining to “read a ‘dilatory motive’ into Defendant’s timely exercise of its
`statutory rights,” when Defendant “waited until the end of the one-year statutory period to file its
`IPR petitions). First, Lyft filed its IPR petitions well within the statutory timeframe, about one
`month before its bar date and shortly after the Patent Office decided to institute review of the ’100
`and ’838 Patents based on Uber’s IPR petitions. See 35 U.S.C. § 315(b); see also Brinkmann Corp.
`v. A&J Mfg., LLC, No. IPR2015-00056 (P.T.A.B. Mar. 23, 2015) (recognizing that a petitioner is
`deemed to have been served with the complaint on the date that petitioner’s waiver of service is
`filed with the district court); Waiver of the Service of Summons, AGIS Software Development LLC
`v. Lyft, Inc., No. 2:21-cv-00024-JRG-RSP (E.D. Tex. Feb. 26, 2021), ECF No. 10. In fact, but for
`AGIS’s decision to dismiss the instituted Uber IPRs, following settlement with Uber, Lyft’s IPRs
`would have been joined with the Uber IPRs and would have followed the same schedule. AGIS’s
`decision to terminate the Uber IPRs delayed resolution of Lyft’s IPRs by at least six months and
`belie any argument that it would be prejudiced by delay while Lyft’s IPRs proceed.
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`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`Case 5:21-cv-04653-BLF Document 130 Filed 05/09/22 Page 6 of 9
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`The fact that Lyft’s co-defendant Uber filed its IPR petitions before Lyft—a fact AGIS raises
`in its Opposition—has no bearing on Lyft’s diligence in filing its own IPR petitions. See Opp’n at
`7; Asetek Holdings, Inc. v. Cooler Master Co., 2014 U.S. Dist. LEXIS 47134, *15-16 (N.D. Cal.
`Apr. 3, 2014) (“Provided an accused infringer is diligent, delay due to preparing an IPR petition,
`ascertaining the plaintiff’s theories of infringement or otherwise researching the patents that have
`been asserted in an action does not unduly prejudice the patent owner”). As explained previously,
`AGIS’s actions with respect to the Uber IPRs resulted in the delay that AGIS is now seeking to
`leverage to avoid a stay.
`Because Lyft was diligent in filing its IPR petitions and AGIS’s actions resulted in delay,
`this factor weighs against a finding of undue prejudice.
`2.
`Timing of the Stay Request
`At this Court’s suggestion, Lyft filed its Motion shortly after deciding whether to file IPRs.
`See Ex. 17 (Jan. 27, 2022 Tr. of Proceedings) at 43:24-54:2 (“I will expect to see more motions on
`a potential stay . . . obviously Lyft has to decide whether it will [file] IPR’s, and that’s coming up
`pretty soon, so you will be able to let me know.”); id. at 44:21-45:2 (encouraging Lyft to “move
`along” on filing a motion to stay despite the absence of an operative complaint). Any minor delay
`in filing the Motion is hardly dilatory given that Lyft was simultaneously seeking discovery
`(including filing a motion to compel) and amending its complaint.
`3.
`Status of the USPTO Proceedings
`As discussed supra § II(A), it is highly likely that the Patent Office will institute Lyft’s IPRs
`and issue rejections in the pending EPRs. While the institution decisions on the IPRs may not occur
`until as late as August 8, 2022, it is possible that the PTAB may issue decisions earlier given its
`prior decisions to institute IPR on the same grounds. And, as noted above, because the Patent Office
`instituted IPRs on precisely the same substantive grounds in the Uber IPRs, it is highly likely that
`the PTAB will institute review based on Lyft’s IPRs.
`The EPR proceedings are also underway and would have likely already resulted in rejections
`had AGIS not created unnecessary delay by requesting extensions for its patent owner responses
`that it never ultimately filed. See Motion at 7-8. Indeed, the Patent Office usually issues a first
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`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`action on the merits within 4.5 months of receiving a reexamination request, which, in this case,
`would have been in early March. See Dkt. 103-7 at 2 (showing average time from filing to a first
`action on the merits at 4.39 months).
`4.
` The Relationship of the Parties
`The Federal Circuit has confirmed that a stay does not cause undue prejudice to non-
`competitors, and AGIS does not dispute that the parties do not compete. See Smartflash LLC v.
`Apple Inc., 621 F. App'x 995, 1002 (Fed. Cir. 2015) (finding no undue prejudice to plaintiff because
`the parties were not competitors). Monetary relief, therefore, is sufficient to compensate AGIS for
`any damages, and such damages will not be diminished by a stay. See VirtualAgility Inc. v.
`Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014).
`Rather than arguing that AGIS will be unduly prejudiced by a stay based on the parties’
`relationship, AGIS argues that its particular circumstances fail to warrant a stay. Specifically, AGIS
`argues that it will be prejudiced by a stay given the advanced age of its CEO and primary witness,
`Mr. Malcolm K. Beyer, Jr., and because a stay would compress the case schedule. See Opp’n at 8.
`Both arguments are suspect. Notably, if AGIS was—as it contends—actually concerned about faster
`resolution of its claims, it would have immediately dismissed its Eastern District of Texas case
`against Lyft upon being informed that venue was improper there and refiled in an uncontested venue.
`But AGIS did not do this. Instead, AGIS fought Lyft’s venue challenge in the Eastern District of
`Texas, which took nearly a year to resolve in Lyft’s favor. See Order, AGIS Software Development
`LLC v. Lyft, Inc., No. 2:21-cv-00072-JRG (E.D. Tex. Jan. 19, 2022), ECF No. 334. Similarly, if
`AGIS was actually interested in prompt resolution of its infringement claims, it would have waived
`jurisdiction in this case so that the parties could promptly begin litigation on the merits. As this
`Court knows, AGIS has not done this either. Indeed, almost a year has passed since this case was
`initially filed and the parties have yet to engage in merits discovery (and AGIS contends that such
`discovery is not open).
`AGIS’s argument regarding prejudice due to schedule compression is also unavailing. AGIS
`is used to litigating in the Eastern District of Texas where compressed schedules are the norm, and
`there is no reason why the schedule in this case could not be revised to accommodate any needed
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`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`Case 5:21-cv-04653-BLF Document 130 Filed 05/09/22 Page 8 of 9
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`discovery following the stay, as the Court suggested at the Case Management Conference. AGIS
`Software Development LLC v. ZTE Corporation et al., No. 2:17-cv-00517-JRG (E.D. Tex. June 21,
`2017); AGIS Software Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG (E.D. Tex. June 21,
`2017); AGIS Software Development LLC v. LG Electronics, Inc., No. 2:17-cv-00515-JRG (E.D.
`Tex. June 21, 2017); AGIS Software Development LLC v. HTC Corporation, No. 2:17-cv-00514-
`JRG (E.D. Tex. June 21, 2017); AGIS Software Development LLC v. Huawei Device USA Inc. et
`al., No. 2:17-cv-00513-JRG (E.D. Tex. June 21, 2017); AGIS Software Development LLC v.
`Samsung Electronics Co., Ltd. et al, No. 2:19-cv-00362-JRG (E.D. Tex. Nov. 4, 2019); AGIS
`Software Development LLC v. Google LLC, No. 2:19-cv-00361-JRG (E.D. Tex. Nov. 4, 2019);
`AGIS Software Development LLC v. Waze Mobile Limited, No. 2:19-cv-00359-JRG (E.D. Tex. Nov.
`4, 2019); AGIS Software Development LLC v. WhatsApp, Inc., No. 2:21-cv-00029-JRG (E.D. Tex.
`Jan. 29, 2021); AGIS Software Development LLC v. Uber Technologies Inc. d/b/a Uber, No. 2:21-
`cv-00026-JRG (E.D. Tex. Jan 29, 2021); AGIS Software Development LLC v. Lyft, Inc., No. 2:21-
`cv-00024-JRG (E.D. Tex. Jan. 29, 2021); AGIS Software Development LLC v. T-Mobile USA, Inc.
`et al., No. 2:21-cv-00072-JRG (E.D. Tex. Mar. 3, 2021); see also Ex. 17 at 43:11-12 (“If I stay the
`case, schedules can be changed.”) & 49:14-15 (“If I were to grant a stay, of course my comments
`about no continuances will have to fall away. A stay is a stay, that’s a whole different thing.”). Any
`concerns regarding a shortened schedule resulting from a stay could easily be abated by a
`commensurate extension.
`This factor therefore weighs against a finding of undue prejudice.
`CONCLUSION
`Because the balance of the factors weighs in favor of a stay, Lyft respectfully requests the
`Court grant its Motion.
`
`III.
`
`Dated: May 9, 2022
`
`Respectfully submitted,
`
`By:
`
`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
`
`Jeremy J. Taylor (SBN 249075)
`Arya Moshiri (SBN 324231)
`
`LYFT’S REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
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`CASE NO. 5:21-cv-04653-BLF
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`Case 5:21-cv-04653-BLF Document 130 Filed 05/09/22 Page 9 of 9
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`jeremy.taylor@bakerbotts.com
`arya.moshiri@bakerbotts.com
`BAKER BOTTS L.L.P.
`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
`BAKER BOTTS L.L.P.
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: 214.953.6500
`Facsimile: 214.953.6503
`
`Attorneys for Plaintiff Lyft, Inc.
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