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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 1 of 43
`
`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
`Bethany R. Salpietra (pro hac vice pending)
`bethany.salpietra@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: 214.953.6500
`Facsimile: 214.953.6503
`Attorneys for Plaintiff
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`LYFT, INC.
`
`Plaintiffs,
`
`v.
`AGIS SOFTWARE DEVELOPMENT LLC,
`ADVANCED GROUND
`INFORMATION
`SYSTEMS, INC., AGIS HOLDINGS, INC.,
`MALCOM K. BEYER, JR.
`Defendants.
`
`Case No. 21-cv-4653
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`REDACTED VERSION
`JURY TRIAL DEMANDED
`
`Plaintiff Lyft, Inc. (“Lyft”) hereby pleads the following claims for Declaratory Judgment
`
`against Defendants AGIS Software Development LLC (“AGIS Software”), Advanced Ground
`
`Information Systems, Inc. (“AGIS, Inc.”), AGIS Holdings, Inc. (“AGIS Holdings”), and Malcolm
`
`K. Beyer, Jr. (“Beyer”) (collectively “AGIS”) and alleges as follows:
`
`THE PARTIES
`Lyft is a Delaware corporation with its principal place of business located at 185
`1.
`Berry Street, Suite 5000, San Francisco, California 94107.
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`1
`
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`

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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 2 of 43
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`On information and belief, AGIS Software is a Texas limited liability company,
`2.
`having its principal place of business at 100 W. Houston Street, Marshall, Texas 75670, and is a
`wholly owned subsidiary of AGIS Holdings.
`3.
`AGIS Software alleges that it is the owner of all right, title, and interest to United
`States Patent Nos. 7,031,728 (“’728 patent”), 7,630,724 (“’724 patent”), 8,213,970 (“’970 patent”),
`10,299,100 (“’100 patent”), and 10,341,838 (“’838 patent”) (collectively, “Patents-in-Suit”).
`4.
`Lyft disputes whether AGIS Software holds proper title to at least the ’724, ’100, and
`’838 Patents due to named inventor Christopher Rice’s employment with Microsoft Corporation at
`the time the ’724, ’100, and ’838 Patents, or their parent applications, were filed.
`5.
`In June 2017, AGIS, Inc. assigned the Patents-in-Suit to AGIS Holdings, and on the
`same day, AGIS Holdings assigned the Patents-in-Suit to AGIS Software.
`6.
`On information and belief, AGIS Holdings is organized under the laws of the State
`of Florida and maintains its principal place of business at 92 Lighthouse Drive, Jupiter, FL 33469.
`7.
`AGIS Holdings is the sole member of AGIS Software.
`8.
`On information and belief, AGIS, Inc. is organized under the laws of the State of
`Florida and maintains its principal place of business at 92 Lighthouse Drive, Jupiter, FL 33469.
`9.
`AGIS, Inc. is a wholly owned subsidiary of AGIS Holdings.
`10. Malcolm K. Beyer, Jr. is the named inventor of the Patents-in-Suit
`11. Malcolm K. Beyer, Jr. is the CEO of AGIS Software, AGIS Holdings, and AGIS,
`
`Inc.
`
`12. Malcolm K. Beyer, Jr. resides at 92 Lighthouse Drive, Jupiter, FL 33469.
`JURISDICTION AND VENUE
`The Court has subject matter jurisdiction over Lyft’s declaratory judgment claims
`13.
`relating to patent non-infringement under 28 U.S.C. §§ 2201, 2202, 1331, and 1338(a).
`A. AGIS Software accused Lyft of infringing the Patents-in-Suit
`14.
`On January 29, 2021, AGIS Software sued Lyft for alleged past and current
`infringement of the Patents-in-Suit in the United States District Court of the Eastern District of
`Texas by manufacturing, using, distributing, selling, offering for sale, and/or exporting from and
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`2
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`importing into the United States the “the Lyft and Lyft Driver applications and the related services
`and/or servers for the applications.” See AGIS Software Development LLC v. Lyft, Inc., Civil Action
`No. 2:21-cv-00024-JRG (E.D. Tex.), Dkt. 1 at ¶ 23.
`15.
`On April 27, 2021 Lyft moved to dismiss the Eastern District of Texas litigation for
`improper venue. See AGIS Software Development LLC v. T-Mobile USA, Inc. et al., Civil Action
`No. 2:21-cv-00072-JRG (E.D. Tex.), Dkt. 30.
`issued a Report and
`16.
`On November 10, 2021, Magistrate Judge Payne
`Recommendation that Lyft’s motion to dismiss be granted. See AGIS Software Development LLC
`v. T-Mobile USA, Inc. et al., Civil Action No. 2:21-cv-00072-JRG (E.D. Tex.), Dkt. 212.
`17.
`On January 19, 2022,
`the Court adopted
`the Magistrate’s Report and
`Recommendation and directed the clerk of the Court to close the case. See AGIS Software
`Development LLC v. T-Mobile USA, Inc. et al., Civil Action No. 2:21-cv-00072-JRG (E.D. Tex.),
`Dkt. 334.
`B. Lyft seeks a declaratory judgment that it does not infringe the Patents-in-Suit
`18.
`Lyft denies that the Patents-in-Suit have been or currently are infringed through the
`making, using, distributing, sale, offering for sale, exportation, or importation of the Lyft or Lyft
`Driver applications and any related services and/or servers for the applications.
`19.
`AGIS Software’s infringement allegations and related actions threaten actual and
`imminent injury to Lyft that can be redressed by judicial relief and warrants the issue of a declaratory
`judgment, under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.
`20.
`An actual and justiciable controversy with respect to the Patents-in-Suit exists
`between Lyft and AGIS Software and between Lyft and AGIS, Inc., AGIS Holdings, and/or
`Malcolm K. Beyer, Jr. under an alter ego theory.
`C. AGIS Software is subject to the specific jurisdiction of this Court
`21.
`AGIS Software, AGIS, Inc., AGIS Holdings, and/or Malcom K. Beyer, Jr. are subject
`to this Court’s specific jurisdiction, pursuant to due process and/or the California Long Arm Statute
`due to: (1) AGIS Software, AGIS, Inc., AGIS Holdings, and/or Malcom K. Beyer, Jr. purposefully
`directing activities at residents of this forum, and (2) the claims arising out of or relating to these
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`3
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`activities of AGIS Software, AGIS, Inc., AGIS Holdings, and/or Malcom K. Beyer, Jr. Further, the
`assertions of personal jurisdiction are reasonable and fair.
`i. AGIS Software purposefully directed its patent licensing activities to California
`companies subjecting it to specific jurisdiction under Trimble
`AGIS Software is a patent licensing company that licenses its patent portfolio,
`22.
`including the Patents-in-Suit.
`23.
`AGIS Software has no employees.
`24.
`AGIS Software develops software related to the Patents-in-Suit.
`25.
`Software developed by AGIS Software is both used inside and outside the United
`States.
`On information and belief, software developed by AGIS Software related to the
`26.
`Patents-in-Suit is used within California. Lyft attempted to confirm this information from AGIS
`Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1), but AGIS Software has
`refused to provide it. Lyft also sought to confirm this information at the deposition of AGIS
`Software, however, its designated witness, Thomas Meriam, was unable to confirm it.
`27.
`AGIS Software’s principal source of revenue is from patent licenses with California
`companies and other companies operating in the State of California.
`28.
`AGIS Software or its predecessor-in-interest has taken purposeful steps to enforce
`the Patents-in-Suit and/or obtain licenses to the Patents-in-Suit and/or related patents with
`companies having principal places of business and operations in this judicial district, including Lyft,
`Google LLC (“Google”), Apple Inc. (“Apple”), WhatsApp LLC (“WhatsApp”), Facebook, Inc.
`(“Facebook”), Uber Technologies, Inc. d/b/a UBER (“Uber”), Life360, Inc. (“Life360”), and with
`companies or their affiliates having operations and offices in the State of California, including ZTE
`(USA) Inc. (“ZTE”), Waze LLC (“Waze”), HTC Corporation (“HTC”), T-Mobile US, Inc. (“T-
`Mobile”), Huawei Device USA Inc. (“Huawei”), LG Electronics, Inc. (“LG”), and Samsung
`Electronics America, Inc (“Samsung”).
`29.
`On information and belief, AGIS Software or its predecessor-in-interest has taken
`purposeful steps to enforce the Patents-in-Suit and/or obtain licenses to the Patents-in-Suit and/or
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`4
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`related patents with Smith Micro Software (“Smith Micro”), a company having operations and
`offices in the State of California. Lyft attempted to confirm this information from AGIS Software
`via an interrogatory (i.e., Jurisdictional Interrogatory No. 1), but AGIS Software has refused to
`provide it. Lyft also sought to confirm this information at the deposition of AGIS Software,
`however, its designated witness, Thomas Meriam, was unable to confirm it. On information and
`belief, this information could have also been confirmed had AGIS Software complied with its
`obligations under Patent L.R. 3-2 to produce “all agreements, including licenses, transferring an
`interest in any patent-in-suit.” But AGIS Software has not produced all such agreements despite a
`specific request by Lyft that AGIS Software do so.
`30.
`AGIS Software or its predecessor-in-interest alleged infringement of the Patents-in-
`Suit and/or related patents through communications directed at companies with principal places of
`business in this judicial district, including Google, Facebook, and Life360.
`31.
`AGIS Software or its predecessor-in-interest enforced the Patents-in-Suit and/or
`related patents against companies with principal places of business in this judicial district, including
`Lyft, Google, Apple, WhatsApp, Uber, Life360, and against companies or their affiliates having
`operations and offices in the State of California, including ZTE, Waze, HTC, T-Mobile, Huawei,
`LG, and Samsung.
`32.
`
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`On information and belief, AGIS Software negotiated a license agreement involving
`33.
`the Patents-in-Suit and/or related patents through communications with Smith Micro, a company
`having operations and offices in the State of California. Lyft attempted to confirm this information
`from AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1), but AGIS
`Software has refused to provide it. Lyft also sought to confirm this information at the deposition of
`AGIS Software, however, its designated witness, Thomas Meriam, was unable to confirm it. On
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 6 of 43
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`information and belief, this information could have also been confirmed had AGIS Software
`complied with its obligations under Patent L.R. 3-2 to produce “all agreements, including licenses,
`transferring an interest in any patent-in-suit.” But AGIS Software has not produced all such
`agreements despite a specific request by Lyft that AGIS Software do so.
`34.
`On information and belief, AGIS Software or its predecessor-in-interest have
`negotiated and communicated with Google, Waze, and Samsung in an attempt to enter into license
`agreements for the Patents-in-Suit and/or related patents. Lyft requested this information from
`AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1), but AGIS Software
`has refused to provide it. Lyft also sought to confirm this information at the deposition of AGIS
`Software, however, its designated witness, Thomas Meriam, was unable to confirm it.
`35.
`AGIS Software’s communications, including through telephone, mail, and/or other
`means, with companies having principal places of business, offices, and/or operations in the State
`of California to enforce and to negotiate licenses the Patents-in-Suit and/or related patents creates
`specific personal jurisdiction over AGIS Software. See Trimble Inc. v. PerDiemCo LLC, 997 F.3d
`1147, 1155 (Fed. Cir. 2021).
`36.
`AGIS Software’s non-exclusive licenses to the Patents-in-Suit with companies
`having principal places of business, offices, and operations in the State of California are sufficiently
`related to this declaratory judgment action concerning the same patents to support a finding of
`specific jurisdiction. Id. at 1156.
`a. AGIS Entities’ patent license with Apple and related negotiations
`On June 21, 2017, AGIS Software sued Apple, a California corporation with its
`37.
`principal place of business in this District in Cupertino, California, alleging infringement of the ’970
`Patent, one of the Patents-in-Suit, and other patents related to the Patents-In-Suit. See AGIS Software
`Development LLC v. Apple Inc., Civil Action No. 2:17-cv-00516 (E.D. Tex.), Dkt. 1 at ¶¶ 6-9, 18,
`27, 41, 55.
`On information and belief, Apple currently has or previously had headquarters at 1
`38.
`Apple Park Way Cupertino, California 95014.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`On information and belief, in or around March 2019, AGIS Software, AGIS, Inc.,
`39.
`AGIS Holdings, and/or Malcom K. Beyer, Jr. (collectively, “AGIS Entities”) entered into a license
`agreement with Apple (“Apple License”) covering all patents and patent applications assigned to,
`owned by, or controlled by the AGIS Entities, including the Patents-in-Suit. On information and
`belief, this information could have been confirmed had AGIS Software complied with its obligations
`under Patent L.R. 3-2 to produce “all agreements, including licenses, transferring an interest in any
`patent-in-suit.” But AGIS Software has not produced all such agreements despite a specific request
`by Lyft that AGIS Software do so.
`40.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with Apple to obtain the Apple License. Lyft requested
`this information from AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1),
`but AGIS Software has refused to provide it. Lyft also sought to confirm this information at the
`deposition of AGIS Software, however, its designated witness, Thomas Meriam, was unable to
`confirm it.
`
`b. AGIS Software’s patent license with Huawei and related negotiations
`On June 21, 2017, AGIS Software sued Huawei Device USA Inc., Huawei
`41.
`Technologies USA Inc., and Huawei Technologies Co., Ltd. alleging infringement of patents,
`including the ’970 Patent, one of the Patents-in-Suit. AGIS Software Development LLC v. Huawei
`Device USA Inc., Civil Action No. 2:17-cv-00513 (E.D. Tex.), Dkt. 1 at ¶¶ 8-11, 20, 29, 42, 55.
`42.
`On August 17, 2017, AGIS Software filed an amended complaint, adding Huawei
`Device (Dongguan) Co., Ltd. as a defendant.
`43.
`On information and belief, Huawei currently has or previously had an affiliate office
`in California.
`On information and belief, in or around March 2019, AGIS Software entered into a
`44.
`license agreement with Huawei (“Huawei License”) covering all patents and patent applications
`owned or controlled by AGIS Software or its affiliates. On information and belief, this information
`could have been confirmed had AGIS Software complied with its obligations under Patent L.R. 3-
`2 to produce “all agreements, including licenses, transferring an interest in any patent-in-suit.” But
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
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`AGIS Software has not produced all such agreements despite a specific request by Lyft that AGIS
`Software do so.
`45.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with Huawei to obtain the Huawei License. Lyft
`requested this information from AGIS Software via an interrogatory (i.e., Jurisdictional
`Interrogatory No. 1), but AGIS Software has refused to provide it. Lyft also sought to confirm this
`information at the deposition of AGIS Software, however, its designated witness, Thomas Meriam,
`was unable to confirm it.
`c. AGIS Software patent license with HTC and related negotiations
`On June 21, 2017, AGIS Software sued HTC Corporation alleging infringement of
`46.
`patents, including the ’970 Patent, one of the Patents-in-Suit. AGIS Software Development LLC v.
`HTC Corporation, Civil Action No. 2:17-cv-00514 (E.D. Tex.), Dkt. 1 at ¶¶ 6-9, 18, 27, 40, 53.
`47.
`On information and belief, HTC currently has or previously had an affiliate office in
`California.
`On information and belief, in or around July of 2019, AGIS Software entered into a
`48.
`license agreement with HTC (“HTC License”) covering all patents and patent applications owned
`or controlled by AGIS Software or its affiliates. On information and belief, this information could
`have been confirmed had AGIS Software complied with its obligations under Patent L.R. 3-2 to
`produce “all agreements, including licenses, transferring an interest in any patent-in-suit.” But
`AGIS Software has not produced all such agreements despite a specific request by Lyft that AGIS
`Software do so.
`49.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with HTC to obtain the HTC License. Lyft requested
`this information from AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1),
`but AGIS Software has refused to provide it. Lyft also sought to confirm this information at the
`deposition of AGIS Software, however, its designated witness, Thomas Meriam, was unable to
`confirm it.
`
`d. AGIS Software patent license with LG and related negotiations
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 9 of 43
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`On June 21, 2017, AGIS Software sued LG Electronics, Inc. alleging infringement
`50.
`of patents, including the ’970 Patent, one of the Patents-in-Suit. AGIS Software Development LLC
`v. LG Electronics, Inc., Civil Action No. 2:17-cv-00515 (E.D. Tex.), Dkt. 1, ¶¶ 6-9, 18, 27, 40, 53.
`51.
`On information and belief, LG currently has or previously had an affiliate office in
`California.
`On information and belief, in or around July 2019, AGIS Software entered into a
`52.
`license agreement with LG (“LG License”) covering all patents and patent applications owned or
`controlled by AGIS Software or its affiliates. On information and belief, this information could
`have been confirmed had AGIS Software complied with its obligations under Patent L.R. 3-2 to
`produce “all agreements, including licenses, transferring an interest in any patent-in-suit.” But
`AGIS Software has not produced all such agreements despite a specific request by Lyft that AGIS
`Software do so.
`53.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with LG to obtain the LG License. Lyft requested this
`information from AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1), but
`AGIS Software has refused to provide it. Lyft also sought to confirm this information at the
`deposition of AGIS Software, however, its designated witness, Thomas Meriam, was unable to
`confirm it.
`
`e. AGIS Software patent license with ZTE and related negotiations
`On June 21, 2017, AGIS Software sued ZTE Corporation and ZTE (TX) Inc. alleging
`54.
`infringement of patents, including the ’970 Patent, one of the Patents-in-Suit. AGIS Software
`Development LLC v. ZTE Corporation et al., Civil Action No. 2:17-cv-00517-JRG (E.D. Tex.), Dkt.
`1 at ¶¶ 7-10, 19, 28, 41 54.
`55.
`On October 17, 2017, AGIS Software filed an amended complaint, adding ZTE
`(USA) Inc. as a defendant to this litigation and alleging infringement of an additional related patent,
`the ’829 patent. AGIS Software Development LLC v. ZTE Corporation et al., Civil Action No. 2:17-
`v-00517-JRG (E.D. Tex.), Dkt. 32 at ¶¶ 3 & 73.
`
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`On information and belief, ZTE or a ZTE affiliate currently has or previously had an
`56.
`office located in California.
`57.
`On information and belief, in or around October 2019, AGIS Software entered into
`a license agreement with ZTE (“ZTE License”) covering all patents and patent applications owned
`or controlled by AGIS Software or its affiliates. On information and belief, this information could
`have been confirmed had AGIS Software complied with its obligations under Patent L.R. 3-2 to
`produce “all agreements, including licenses, transferring an interest in any patent-in-suit.” But
`AGIS Software has not produced all such agreements despite a specific request by Lyft that AGIS
`Software do so.
`58.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with ZTE to obtain the ZTE License. Lyft requested
`this information from AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1),
`but AGIS Software has refused to provide it. Lyft also sought to confirm this information at the
`deposition of AGIS Software, however, its designated witness, Thomas Meriam, was unable to
`confirm it.
`
`f. AGIS Software patent license with WhatsApp and Facebook and related
`negotiations
`On January 29, 2021, AGIS Software sued WhatsApp, a corporation having its
`59.
`principal place of business in this District in Menlo Park, California, alleging infringement of the
`’728 Patent and ’724 Patent, two of the Patent-in-Suit, and alleging infringement of other patents
`related to the Patents-In-Suit. See AGIS Software Development LLC v. WhatsApp, Inc., Civil Action
`No. 2:21-cv-00029 (E.D. Tex.), Dkt. 1 at ¶¶ 7-12, 21, 40, 59, 78, 97, 116.
`60.
`On information and belief, WhatsApp currently has or previously had an office in
`California.
`In or around September 2021, AGIS Software entered into a license agreement with
`61.
`WhatsApp and Facebook (“WhatsApp/Facebook License”) covering all patents and patent
`applications held or controlled by AGIS Software, including the Patents-in-Suit.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 11 of 43
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`On information and belief, Facebook currently has or previously had an office in
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`62.
`California.
`On information and belief, AGIS Software negotiated, including through numerous
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`written email and/or other communications, with WhatsApp and/or Facebook to obtain the
`WhatsApp/Facebook License. Lyft requested this information from AGIS Software via an
`interrogatory (i.e., Jurisdictional Interrogatory No. 1), but AGIS Software has refused to provide it.
`Lyft also sought to confirm this information at the deposition of AGIS Software, however, its
`designated witness, Thomas Meriam, was unable to confirm it.
`g. AGIS Software patent license with Uber and related negotiations
`On January 29, 2021, AGIS Software sued Uber alleging infringement of all five of
`64.
`the Patents-in-Suit. AGIS Software Development LLC v. Uber Technologies Inc., d/b/a Uber, Civil
`Action No. 2:21-cv-00026 (E.D. Tex.), Dkt. 1 at ¶¶ 18-22, 30, 46, 62, 77, 95.
`65.
`On information and belief, Uber currently has or previously had an office in
`California.
`On information and belief, in or around March of 2022, AGIS Software entered into
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`a license agreement with Uber (“Uber License”) covering all patents and patent applications held or
`controlled by AGIS Software, including the Patents-in-Suit. On information and belief, this
`information could have been confirmed had AGIS Software complied with its obligations under
`Patent L.R. 3-2 to produce “all agreements, including licenses, transferring an interest in any patent-
`in-suit.” But AGIS Software has not produced all such agreements despite a specific request by
`Lyft that AGIS Software do so.
`67.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with Uber to obtain the Uber License. Lyft requested
`this information from AGIS Software via an interrogatory (i.e., Jurisdictional Interrogatory No. 1),
`but AGIS Software has refused to provide it. Lyft also sought to confirm this information at the
`deposition of AGIS Software, however, its designated witness, Thomas Meriam, was unable to
`confirm it.
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`h. AGIS Software patent license with T-Mobile and related negotiations
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 12 of 43
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`On March 3, 2021, AGIS Software sued T-Mobile alleging infringement of patents
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`including the ’728 Patent and the ’724 Patent, two of the Patents-in-Suit. AGIS Software
`Development LLC v. T-Mobile USA, Inc., Civil Action No. 2:21-cv-00072 (E.D. Tex.), Dkt. 1 at ¶¶
`7-12, 24, 46, 67, 98, 120, 147.
`69.
`On information and belief, T-Mobile or a T-Mobile affiliate currently has or
`previously had an office in California.
`70.
`On information and belief, in or around November of 2021, AGIS Software entered
`into a license agreement with T-Mobile (“T-Mobile License”) covering all patents and patent
`applications owned or controlled by AGIS Software or its affiliates. On information and belief, this
`information could have been confirmed had AGIS Software complied with its obligations under
`Patent L.R. 3-2 to produce “all agreements, including licenses, transferring an interest in any patent-
`in-suit.” But AGIS Software has not produced all such agreements despite a specific request by
`Lyft that AGIS Software do so.
`71.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with T-Mobile to obtain the -Mobile License. Lyft
`requested this information from AGIS Software via an interrogatory (i.e., Jurisdictional
`Interrogatory No. 1), but AGIS Software has refused to provide it. Lyft also sought to confirm this
`information at the deposition of AGIS Software, however, its designated witness, Thomas Meriam,
`was unable to confirm it.
`i. AGIS Software patent license with Smith Micro and related negotiations
`On May 17, 2021, Smith Micro sued AGIS Software for a declaratory judgment that
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`Smith Micro did not infringe certain of AGIS Software’s patents, including the ’728 and ’724
`Patents, and that said patents were further invalid. Smith Micro Software, Inc. v. AGIS Software
`Development LLC, Civil Action No. 5:21-cv-03677 (N.D.Cal.), Dkt. 1 at ¶¶ 16, 50, 55, 60, 65, 70,
`75, 81, 88, 96, 103, 110, 117.
`73.
`On information and belief, Smith Micro currently has or previously had an office
`located in California.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 13 of 43
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`On information and belief, in or around October 2021, AGIS Software entered into
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`a license agreement with Smith Micro (“Smith Micro License”) covering all patents and patent
`applications owned or controlled by AGIS Software or its affiliates. On information and belief, this
`information could have been confirmed had AGIS Software complied with its obligations under
`Patent L.R. 3-2 to produce “all agreements, including licenses, transferring an interest in any patent-
`in-suit.” But AGIS Software has not produced all such agreements despite a specific request by
`Lyft that AGIS Software do so.
`75.
`On information and belief, AGIS Software negotiated, including through numerous
`written email and/or other communications, with Smith Micro to obtain the Smith Micro License.
`Lyft requested this information from AGIS Software via an interrogatory (i.e., Jurisdictional
`Interrogatory No. 1), but AGIS Software has refused to provide it. Lyft also sought to confirm this
`information at the deposition of AGIS Software, however, its designated witness, Thomas Meriam,
`was unable to confirm it.
`j. AGIS, Inc.’s negotiations with Life360
`On information and belief, AGIS, Inc. sent a letter to Life360, a company
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`headquartered in San Francisco, California, on May 13, 2014 alleging infringement of AGIS’s
`patents, expressing a willingness to engage in discussions regarding “royalty bearing licensing
`terms,” and stating that “Life360 and its customers must cease and desist from further infringement”
`in the absence of a license. See Advanced Ground Information Sys., Inc. v. Life360, Inc., Civil
`Action No. 9:14-cv-80651 (S.D. Fla.), Dkt. 181 (Transcript of Jury Trial Proceedings Day 1 held on
`Mar. 9, 2015) at 87:2-7.
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`Three days later, on May 16, 2014, AGIS, Inc. sued Life360 alleging infringement
`of the ’728 Patent, one of the Patents-in-Suit, and related patents. Advanced Ground Information
`Sys., Inc. v. Life360, Inc., Civil Action No. 9:14-cv-80651 (S.D. Fla.), Dkt. 1 at ¶¶ 2, 16, 25, 34, 43.
`78.
`On information and belief, Life360 currently has or previously had an office located
`in California.
`On information and belief, AGIS, Inc. negotiated, including through numerous
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`written email and/or other communications, with Life360 to attempt to license AGIS’s patents. Lyft
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-04653-BLF Document 138 Filed 05/25/22 Page 14 of 43
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`requested this information from AGIS, Inc. via a subpoena issued by Lyft on February 4, 2022, in
`addition to requesting such information via an interrogatory (i.e., Jurisdictional Interrogatory No.
`1). Both AGIS, Inc. and AGIS Software have refused to provide the requested information. Lyft
`also sought to confirm this information at the deposition of AGIS Software, however, its designated
`witness, Thomas Meriam, was unable to confirm it.
`ii. AGIS Software is a sham entity created to avoid jurisdiction and the corporate
`structure should be ignored under Dainippon
`On June 1, 2017, twenty days before filing a patent infringement lawsuit against
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`Apple and ZTE, AGIS Software was created as a Texas LLC to hold and manage intellectual
`property asserts previously owned by AGIS, Inc.
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`On June 15, 2017, AGIS, Inc. assigned the Patents-in-Suit to AGIS Holdings.
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`On the same day, AGIS Holdings assigned the Patents-in-Suit to AGIS Software.
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` subsidiaries of AGIS
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`Both AGIS, Inc. and AGIS Software are
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`Holdings.
`86. Malcom K. Beyer, Jr., the named inventor of the Patents-in-Suit, is the CEO of AGIS
`Software, AGIS Holdings, and AGIS, Inc.
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`On information and belief, AGIS Software shares business addresses with AGIS
`Holdings and AGIS, Inc. at 9