`
`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 AMENDED
`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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`CASE NO. 5:21-cv-04653-BLF
`
`
`
`Case 5:21-cv-04653-BLF Document 132 Filed 05/10/22 Page 2 of 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`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 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 caselaw that would result from a stay of this case.
`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
`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. See Dkts. 103-7; 103-8; 103-
`9. As this Court has previously recognized, “the PTAB’s prior institution decisions are strong
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`1
`
`CASE NO. 5:21-cv-04653-BLF
`
`
`
`Case 5:21-cv-04653-BLF Document 132 Filed 05/10/22 Page 3 of 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`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. The circumstances presented here are just as in Lighting
`Sci., as Lyft’s IPR petitions substantially overlap with the previously-instituted Uber petitions.
`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. It seems improbable that the Patent Office would change course at this stage and
`decline to issue rejections in the EPRs without any opposing argument from AGIS.
`Though AGIS contests the likelihood of IPR institutions and EPR rejections (which, as Lyft
`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. 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
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`2
`
`CASE NO. 5:21-cv-04653-BLF
`
`
`
`Case 5:21-cv-04653-BLF Document 132 Filed 05/10/22 Page 4 of 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`(Exs. E & K) (showing AGIS’s infringement allegations regarding invalid claims of the ’970
`Patent). 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.
`In view of the foregoing, 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
`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. Courts in this District routinely grant motions to stay pending the outcome of Patent
`Office 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 not to compel AGIS
`to comply with Patent L.R. 3-2 while it 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”). Lyft filed its IPR petitions well within the statutory timeframe, about one month
`before its bar date and shortly after the Patent Office instituted review of Uber’s IPR petitions. See
`35 U.S.C. § 315(b); 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,
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`3
`
`CASE NO. 5:21-cv-04653-BLF
`
`
`
`Case 5:21-cv-04653-BLF Document 132 Filed 05/10/22 Page 5 of 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`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 Uber’s IPRs and 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.
`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 . . .
`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.
`Accordingly, 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 53:24-54:2 & 44:21-45:2. 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 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.
`4.
`The Relationship of the Parties
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`4
`
`CASE NO. 5:21-cv-04653-BLF
`
`
`
`Case 5:21-cv-04653-BLF Document 132 Filed 05/10/22 Page 6 of 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`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). 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
`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. Rather than doing so,
`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, AGIS could have waived
`jurisdiction in this case so that the parties could promptly begin litigation on the merits. Instead,
`this case has been pending for nearly a near 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
`discovery following the stay, as the Court suggested at the Case Management Conference. See Ex.
`18; see also Ex. 17 at 43:11-12 & 49:14-15. Because any concerns regarding a shortened schedule
`resulting from a stay could easily be abated by a commensurate extension, this factor weighs against
`a finding of undue prejudice.
`III.
`CONCLUSION
`Because the balance of the factors weighs in favor of a stay, Lyft respectfully requests the
`Court grant its Motion.
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`5
`
`CASE NO. 5:21-cv-04653-BLF
`
`
`
`Case 5:21-cv-04653-BLF Document 132 Filed 05/10/22 Page 7 of 7
`
`Dated: May 10, 2022
`
`Respectfully submitted,
`
`By:
`
`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
`
`Jeremy J. Taylor (SBN 249075)
`Arya Moshiri (SBN 324231)
`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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`LYFT’S AMENDED REPLY ISO ITS MOTION TO STAY
`PENDING PATENT OFFICE PROCEEDINGS
`
`6
`
`CASE NO. 5:21-cv-04653-BLF
`
`