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`Alfred R. Fabricant (pro hac vice)
`afabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice)
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice)
`vrubino@fabricantllp.com
`Enrique Iturralde (pro hac vice)
`eiturralde@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Ave., Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Benjamin T. Wang (CA SBN 228712)
`bwang@raklaw.com
`Minna Y. Chan (CA SBN 305941)
`mchan@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-9226
`Attorneys for Defendant
`AGIS Software Development LLC
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`LYFT, INC.,
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`
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`v.
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`Plaintiff,
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`
`AGIS SOFTWARE DEVELOPMENT LLC,
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`
`Defendants.
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` Case No. 5:21-cv-04653-BLF
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`NOTICE OF MOTION AND MOTION TO
`TRANSFER TO THE UNITED STATES
`DISTRICT COURT FOR THE EASTERN
`DISTRICT OF TEXAS PURSUANT TO 28
`U.S.C. § 1404 (a)
`
`Hon. Beth Labson Freeman
`
`Date: January 27, 2022
`Time: 9:00 a.m.
`Location: Courtroom 3
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`[Declaration of Vincent J. Rubino, III and
`exhibits; and Proposed Order filed
`concurrently herewith]
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`NOTICE OF MOTION AND MOTION TO TRANSFER
`PLEASE TAKE NOTICE that, on January 27, 2022 at 9:00 a.m., or as soon thereafter as the
`matter may be heard before The Honorable Beth Labson Freeman in the United States District Court
`for the Northern District of California in the Robert F. Peckham Federal Building & United States
`Courthouse, Courtroom 3, 5th Floor, 280 South 1st Street, San Jose, California 95113. Defendant
`AGIS Software Development LLC (“AGIS Software” or “Defendant”) will and hereby does move
`the Court to transfer venue to the United States District Court for the Eastern District of Texas
`pursuant to 28 U.S.C. §1404(a).
`This motion is made on the grounds that the Eastern District of Texas could exercise personal
`jurisdiction over AGIS Software and venue would be proper there pursuant to 28 U.S.C. §§ 1391
`and 1400(b). AGIS Software is a limited liability company organized and existing under the laws
`of the State of Texas, with its principal place of business in Marshall, Texas. AGIS Software is not
`registered to conduct business in California; does not have a registered agent for service of process
`in California; does not have offices, employees, equipment, bank accounts, or other assets in
`California; is not subject to and has never paid taxes in California; does not manufacture or sell
`products in California; does not solicit or engage in business in California; has not signed contracts
`in California; does not recruit employees in California; and does not own, lease, or rent any property
`in California. Additionally, no lawsuit has ever been filed by AGIS Software in California for any
`reason. The Eastern District of Texas has subject matter jurisdiction over Lyft’s declaratory
`judgment claims relating to patent infringement under 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202.
`The balance of the private factors favors transfer. First, Plaintiff’s choice of forum should
`be accorded no weight as the first-to-file rule favors transfer. Second, litigation in California is
`inconvenient for AGIS Software, which is a limited liability company established and existing under
`the laws of Texas, with its principal place of business in Texas, and transferring this case to the
`Eastern District of Texas would substantially improve the convenience for AGIS Software and its
`witnesses. Third, the relative ease of access to sources of proof weighs in favor of transfer, where
`AGIS Software maintains its documentary evidence in its Marshall, Texas office. Fourth, the
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`MOTION TO TRANSFER PURSUANT TO § 1404, CASE NO. 5:21-cv-04653
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`Case 5:21-cv-04653-BLF Document 34 Filed 10/05/21 Page 3 of 15
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`Eastern District of Texas is already familiar with the subject matter and issues and could consolidate
`the case with other related cases.
`The public interest factors also strongly favor transferring this case to the Eastern District of
`Texas. A transfer will save judicial resources as Chief Judge Rodney Gilstrap is already familiar
`with the technical issues, and transfer would also protect against inconsistent rulings. Chief Judge
`Gilstrap has already expended a substantial amount of time and effort becoming familiar with issues
`relating to the Patents-in-Suit, as seven cases pending before Chief Judge Gilstrap involve one or
`more of the Patents-In-Suit. Similarly, four other cases filed in 2017—involving one of the Patents-
`in-Suit—proceeded before Chief Judge Gilstrap from filing through just before the pre-trial
`conferences. There is also no dispute that Texas has a substantial local interest in adjudicating this
`dispute against AGIS Software, one of its residents. Lastly, the administrative difficulties flowing
`from court congestion favors the Eastern District of Texas, where time from filing to trial in the
`Eastern District of Texas is less than this District.
`This motion is based upon this notice of motion, the accompanying declaration and exhibits,
`the pleadings and papers filed herein, as well as any other and further matters, papers, and arguments
`as may be presented before the Court prior to or at the time of the hearing.
`
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`DATED: October 5, 2021
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`
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`
`Respectfully submitted,
`
`RUSS AUGUST & KABAT
`By: /s/ Benjamin T. Wang
`
` Benjamin T. Wang
`
`Alfred R. Fabricant (pro hac vice)
`afabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice)
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice)
`vrubino@fabricantllp.com
`Enrique Iturralde (pro hac vice)
`eiturralde@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Ave., Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`Case 5:21-cv-04653-BLF Document 34 Filed 10/05/21 Page 4 of 15
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`Benjamin T. Wang (CA SBN 228712)
`bwang@raklaw.com
`Minna Y. Chan (CA SBN 305941)
`mchan@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-9226
`
`
`Attorneys for Defendant
`AGIS Software Development LLC
`
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`MOTION TO TRANSFER PURSUANT TO § 1404, CASE NO. 5:21-cv-04653
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`I.
`
`INTRODUCTION
`Defendant AGIS Software Development LLC (“AGIS Software”) moves to transfer this
`action under 28 U.S.C. § 1404(a) to the Eastern District of Texas (“E.D. Tex.”). Lyft, Inc. (“Lyft”)
`filed this action involving the same patents, issues and parties, nearly five months after AGIS
`Software filed its action against Lyft in the E.D. Tex. See Dkt. 32 at 15-18. Thus, rather than await
`a decision regarding whether venue was proper in the first-filed case or whether the first-filed case
`should be transferred for convenience, Lyft elected to file a duplicative lawsuit. The parties in the
`E.D. Tex case have already begun claim construction, exchanged proposals of terms for
`construction, served expert declarations in support of claim construction, and served discovery. See
`e.g., AGIS Software Dev. LLC v. T-Mobile USA, Inc., Case No. 2:21-cv-72 (E.D. Tex.) (the “T-
`Mobile Texas case”), Dkts. 91-94, Dkts. 102-103, and Dkt. 124. Furthermore, Chief Judge Gilstrap
`has already expended a substantial amount of time and effort becoming familiar with issues relating
`to the Patents-in-Suit, as seven cases pending before Chief Judge Gilstrap involve one or more of
`the Patents-In-Suit. Similarly, four other cases filed in 2017—involving one of the Patents-in-Suit—
`proceeded before Chief Judge Gilstrap from filing through just before the pre-trial conferences.
`Therefore, transferring this case to E.D. Tex. will conserve judicial resources and avoid parallel
`litigation.
`Transfer will also significantly improve the convenience of parties and witnesses, as AGIS
`Software’s key third-party witnesses are located in or near the E.D. Tex. Further, AGIS Software’s
`key party witnesses live significantly closer to the E.D. Tex. than to the N.D. Cal. Permitting these
`parallel actions to proceed in forums approximately two thousand miles apart presents significant
`challenges and would not outweigh the convenience of adjudicating the actions in a single court.
`Broadly, the judicial resources, court congestion, and local interest public factors, and the
`convenience, access to proof, and feasibility of consolidation private factors strongly favor
`transferring this case to the E.D. Tex.
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`MOTION TO TRANSFER PURSUANT TO § 1404, CASE NO. 5:21-cv-04653
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`II.
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`FACTUAL BACKGROUND
`A. The Parties
`AGIS Software is a Texas corporation with its principal place of business at 100 W. Houston
`Street, Marshall, Texas 75670. Dkt. 32-1 ¶¶ 8-9. AGIS Software has been doing business in
`Marshall, Texas since its formation in 2017. T-Mobile Texas case Dkt. 82 at 3. AGIS Software has
`a data center in E.D. Tex., located at 1005 Stuart Lane, Marshall, Texas 75672. Id. AGIS Software’s
`Chief Executive Officer, Mr. Malcolm K. Beyer, Jr., resides in Florida. Beyer Decl. ¶¶ 2, 4. In
`contrast, AGIS Software is not registered to conduct business in California; does not have a
`registered agent for service of process in California; does not have offices, employees, equipment,
`bank accounts, or other assets in California; is not subject to and has never paid taxes in California;
`does not manufacture or sell products in California; does not solicit or engage in business in
`California; has not signed contracts in California; does not recruit employees in California; and does
`not own, lease, or rent any property in California. Dkt. 32-1 ¶¶ 10-19. Further, no lawsuit has ever
`been filed by AGIS Software in California for any reason. Id. ¶ 21.
`AGIS Software is the sole owner of all rights, titles, and interests in and to U.S. Patent Nos.
`7,630,724 (the “’724 Patent”); 7,031,728 (the “’728 Patent”); 8,213,970 (the “’970 Patent”);
`10,299,100 (the “’100 Patent”); and 10,341,838 (the “’1,838 Patent”) (collectively, the “Patents-in-
`Suit”). AGIS Software Development LLC v. Lyft, Inc., Case No. 2:21-cv-00024-JRG, Dkt. 1 ¶ 1
`(E.D. Tex.) (the “Lyft Texas case”); Dkt. 32-1 ¶ 3.
`Lyft is a Delaware corporation and maintains its principal place of busines at 185 Berry
`Street, #5000, San Francisco, California, 94107, and may be served with process via its registered
`agent, CT Corporation System at 1999 Bryan Street, Suite 900, Dallas, Texas, 75201. Dkt. 1 ¶ 2.
`Upon information and belief, Lyft does business in Texas, directly or through intermediaries, and
`offers its products and/or services, including those accused in the Lyft Texas case of infringement,
`to customers and potential customers located in Texas, including in the E.D. Tex. Lyft Texas case,
`Dkt. 1 ¶ 2.
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`B. Prior Enforcement Actions
`In 2017, AGIS Software filed five patent infringement actions involving some of the Patents-
`in-Suit in the E.D. Tex. See AGIS Software Dev. LLC v. Apple, Inc., Case No. 2:17-cv-516 (E.D.
`Tex.); AGIS Software Dev. LLC v. HTC Corp., Case No. 2:17-cv-514 (E.D. Tex.); AGIS Software
`Dev. LLC v. Huawei Device USA Inc., et al., Case No. 2:17-cv-513 (E.D. Tex.); AGIS Software Dev.
`LLC v. ZTE Corp. et al., Case No. 2:17-cv-517 (E.D. Tex.) (“ZTE Texas case”); and AGIS Software
`Dev. LLC v. LG Elecs., Inc., Case No. 2:17-cv-515 (E.D. Tex.) (collectively, “AGIS I cases”). On
`September 28, 2018, Judge Gilstrap issued an order to transfer the ZTE Texas case to the Northern
`District of California, in response to the defendant’s motion to dismiss or transfer for improper
`venue. See ZTE Texas case, Dkt. 86. On October 8, 2018, AGIS Software filed a Notice of
`Voluntarily Dismissal (id. Dkt. 86) which the court granted on October 9, 2018. Id., Dkt. 87. That
`same day, ZTE filed an action in the Northern District of California seeking a judicial declaration of
`non-infringement, invalidity, and/or unenforceability as to certain Patents-in-Suit against AGIS
`Software, AGIS Holdings, Inc. (“AGIS Holdings”), and Advanced Ground Information Systems,
`Inc. (“AGIS, Inc.”). ZTE (USA) Inc. v. AGIS Software Dev. LLC et al., Case No. 4:18-cv-06185-
`HSK (N.D. Cal.).
`In 2019, AGIS Software filed three patent infringement actions involving some of the
`Patents-in-Suit in the E.D. Tex. See AGIS Software Dev. LLC v. Google LLC, Case No. 2:19-cv-361
`(E.D. Tex.); AGIS Software Dev. LLC v. Samsung Elecs. Co., Ltd. et al., Case No. 2:19-cv-362 (E.D.
`Tex.); and AGIS Software Dev. LLC v. Waze Mobile Limited, Case No. 2:19-cv-359 (E.D. Tex.)
`(collectively, “AGIS II cases”). In 2021, AGIS Software filed four infringement actions involving
`all of the Patents-in-Suit in the E.D. Tex., including the action against Lyft. See AGIS Software Dev.
`LLC v. T-Mobile USA, Inc., Case No. 2:21-cv-72 (E.D. Tex.) (the “T-Mobile Texas case”); AGIS
`Software Dev. LLC v. Uber Technologies, Inc. d/b/a Uber, Case No. 2:21-cv-26 (E.D. Tex.); AGIS
`Software Dev. LLC v. WhatsApp, Inc., Case No. 2:21-cv-29 (E.D. Tex.); and AGIS Software Dev.
`LLC v. Lyft, Inc., Case No. 2:21-cv-24 (E.D. Tex.) (collectively, “AGIS III cases”).1 The AGIS II and
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`1 The AGIS III cases—including the Lyft Texas case—were consolidated into the T-Mobile Texas
`case.
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`AGIS III cases remain pending in the E.D. Tex. On April 27, 2021, Lyft filed a motion to dismiss
`for improper venue in the E.D. Tex. T-Mobile Texas case, Dkt. 30.
`III. LEGAL STANDARD
`“For the convenience of parties and witnesses, in the interest of justice, a district court may
`transfer any action to any other district or division where it might have been brought.” 28 U.S.C. §
`1404(a). The purpose is “to prevent the waste of time, energy, and money and to protect litigants,
`witnesses and the public against unnecessary inconvenience and expense.” Van Dusen v. Barrack,
`376 U.S. 612, 616 (1964) (internal citation omitted). The district court must consider both public
`factors, which go to the interests of justice, and private factors, which go to the convenience of the
`parties and witnesses. Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir.
`1986). The public-interest factors include (a) relative degrees of court congestion, (b) local interest
`in deciding local controversies, (c) potential conflicts of laws, and (d) burdening citizens of an
`unrelated forum with jury duty. Id. at 843.
`Courts in the Northern District of California commonly examine the following factors to
`determine convenience and fairness under § 1404(a) (some of which overlap with Decker): (1) the
`plaintiff's choice of forum, (2) the convenience of the parties, (3) the convenience of the witnesses,
`(4) the ease of access to the evidence, (5) the familiarity of each forum with the applicable law, (6)
`the feasibility of consolidation with other claims, (7) any local interest in the controversy, and (8)
`the relative court congestion and time to trial in each forum. Fitbit, Inc. v. Koninklijke Philips N.V.,
`336 F.R.D. 574, 580 (N.D. Cal. 2020). Courts may examine all these factors, but “[n]o single factor
`is dispositive.” Id at 580 (citing Ctr. for Biological Diversity v. Kempthorne, No. C 08-1339 CW,
`2008 WL 4543043, at *2 (N.D. Cal. Oct. 10, 2008)). The weighing of the factors for and against
`transfer is best left to the discretion of the trial judge. Id. at 580 (citing Ventress v. Japan Airlines,
`486 F.3d 1111, 1118 (9th Cir. 2007)).
`IV.
`THIS CASE SHOULD BE TRANSFERRED TO THE UNITED STATES DISTRICT
`COURT FOR THE EASTERN DISTRICT OF TEXAS
`A. This Action Could Have Been Brought in the Eastern District of Texas
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`It is undisputed that AGIS Software is a Texas corporation with its principal place of
`business located in Marshall, Texas. Dkt 1 ¶ 2; see also Dkt. 32-1 ¶ 9. Thus, the E.D. Tex. could
`have properly exercised personal jurisdiction over AGIS Software and venue would have been
`proper there pursuant to 28 U.S.C. §§ 1391 and 1400(b); see supra § II. A. The E.D. Tex. has subject
`matter jurisdiction over Lyft’s declaratory judgment claims relating to patent infringement under 28
`U.S.C. §§ 1331, 1338(a), 2201, and 2202. Therefore, this action could have properly been brought
`in the E.D. Tex.
`B. This Action Should Be Transferred to the Eastern District of Texas
`The judicial resources, court congestion, and local interest public factors, and the
`convenience, access to proof, and feasibility of consolidation private factors strongly favor
`transferring this case to the E.D. Tex.
`1.
`Transfer Saves Judicial Resources and Protects Against Inconsistent
`Rulings
`
`In a highly technical case such as this, the judge’s familiarity of the issues can be decisive.
`See Regents of Univ. of al. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed. Cir. 1997) (“where several
`highly technical factual issues are presented and the other relevant factors are in equipoise, the
`interest of judicial economy may favor transfer to a court that has become familiar with the issues.”)
`(citing Commodity Futures Trading Comm'n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979)); see also
`Reiffen v. Microsoft, 104 F. Supp. 2d 48, 55 (D.D.C. 2000) (transferring because the N.D. Cal. had
`already become familiar with the issues).
`Likewise, Chief Judge Gilstrap has already expended a substantial amount of time and effort
`becoming familiar with issues relating to the Patents-in-Suit, as seven of the cases (i.e., the AGIS II
`and AGIS III cases) pending before Chief Judge Gilstrap involve one or more of the Patents-In-Suit.
`Similarly, the AGIS I cases—involving the ’970 Patent—proceeded before Chief Judge Gilstrap
`from filing through just before the pre-trial conferences. Chief Judge Gilstrap has also issued various
`rulings on issues relevant to this case, including Markman decisions in the AGIS I and II cases. See
`AGIS Software Dev. LLC v. Huawei Device USA, Inc. et al., Case No. 2:17-cv-00513-JRG, Dkt.
`205 (E.D. Tex. Oct. 10, 2018) (Markman Order for the AGIS I cases on disputed terms for the ’970
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`Patent, and construing the meaning of 18 claim terms over 60 pages); AGIS Software Dev. LLC v.
`Google LLC, Case No. 2:19-cv-361-JRG, Dkt. 147 (E.D. Tex. Dec. 8, 2020), Dkt. 147 (Markman
`Order for the AGIS II cases on disputed terms for the ’970 Patent, and construing the meaning of 19
`claim terms over 99 pages). Moreover, both AGIS Software and the defendants in each of the AGIS
`I and II cases prepared and submitted tutorials and other submissions on the technology disclosed
`in the ’970 Patent. Rubino Decl. ¶ 2, 5. As a result, Chief Judge Gilstrap has become familiar with,
`inter alia, the technology, detailed disclosures, claim terms, file histories, expert opinions, and the
`parties’ arguments.
`Given the overlap of the Patents-in-Suit with the AGIS I, II and III cases, Chief Judge
`Gilstrap would likely hear this case if transferred to the E.D. Tex. See E.D. Tex. Local Rules CV-
`42(a-c) (requiring counsel to notify court of cases with related subject matter and allowing
`consolidation of related cases.). Thus, it would be a duplication of effort for this Court to invest the
`time and energy to familiarize itself with the relevant technology when Chief Judge Gilstrap has
`already done so and where transfer would avoid inconsistent rulings. It would also cause
`unnecessary delay and expense for this Court to familiarize itself with the technology when
`significant resources have already been spent doing so in the E.D. Tex. Further, since the defendants
`in the AGIS II and III cases are also challenging the validity of the same Patents-in-Suit at issue
`here, judicial resources will be conserved by not having multiple judges reviewing the numerous
`prior art references submitted by defendants, and would avoid inconsistent decisions on validity.
`Other various issues are likely to overlap as well, including issues relating to the scope of the patents,
`infringement, priority, ownership and inventorship, damages, and various defenses. Accordingly, it
`would serve the interests of justice to transfer this case to the E.D. Tex.
`2. Plaintiff’s Choice of Forum Should be Accorded No Weight
`Lyft’s choice of forum should be disregarded in this instance. Lyft filed this action involving
`the same patents, issues and parties, nearly five months after AGIS Software filed the Lyft Texas
`case. See Dkt. 32 at 15-18. Rather than await a decision regarding whether venue was proper in the
`first-filed case or whether the first-filed case should be transferred for convenience, Lyft elected to
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`file a duplicative lawsuit. Id.; see Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704,
`708 (Fed. Cir. 2013) (“When two actions that sufficiently overlap are filed in different federal
`district courts, one for patent infringement and other for declaratory relief, the declaratory judgment
`action, if filed later, generally is to be stayed, dismissed, or transferred to the forum of the
`infringement action.”); see also ZTE (USA) Inc. v. AGIS Software Dev. LLC et al., Case No. 4:18-
`cv-06185-HSK (N.D. Cal.) (declaratory judgment action filed 10 days after Judge Gilstrap issued
`an order granting Defendant’s motion to transfer the case to the Northern District of California).
`Therefore, Lyft’s choice of forum should be disregarded, while AGIS Software’s choice of forum
`in the first-filed Texas case should be respected in favor of transfer.
`3. Convenience of the Parties and Witnesses Weighs in Favor of Transfer
`The convenience of the parties and witnesses favors transferring the case to the E.D. Tex. In
`considering transfer motions, courts weigh the desire to avoid multiple litigations based on a single
`transaction. Fitbit, Inc. v. Koninklijke Philips N.V., 336 F.R.D. 574, 587 (N.D. Cal. 2020)
`(convenience factor favored transfer where related patent actions between the parties were pending
`in the transferee court). Furthermore, unlike in Fitbit, where both parties had locations in the
`transferor and transferee court, here, AGIS Software is incorporated and headquartered in Texas.
`See supra § II.A. Permitting these parallel actions to proceed in forums approximately two thousand
`miles apart presents significant challenges and would not outweigh the convenience of adjudicating
`the actions in a single court.
`Moreover, “the convenience of witnesses is said to be the most important factor in passing
`on a transfer motion.” Los Angeles Mem’l Coliseum Comm'n v. Nat’l Football League, 89 F.R.D.
`497, 501 (C.D. Cal. 1981). Of particular importance is the convenience of non-party witnesses and
`their relative importance in the case. Saleh v. Titan Corp., 361 F. Supp. 2d 1152, 1160–65 (S.D. Cal.
`2005) (convenience factor weighed heavily in favor of transfer where Defendants demonstrated that
`they had important witnesses with first-hand knowledge relevant and material to Plaintiff’s
`allegations). Three of AGIS Software’s key third-party witnesses are located in or near the E.D.
`Tex. First, Eric Armstrong, a full-time consultant for third-party AGIS, Inc., has lived and worked
`in Allen, Texas, since 2017. T-Mobile Texas case, Dkt. 82-2 ¶¶ 13-14. Second, AGIS Software’s
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`technical expert, Mr. Joseph C. McAlexander III, is based in Richardson, Texas. See Aloft Media,
`LLC v. Adobe Sys. Inc., No. 6:07-cv-355, 2008 WL 819956, at *5 (E.D. Tex. Mar. 25, 2008) (“[A]
`patent trial often revolves around the strength of expert witness testimony, and many experts are
`also non-party witnesses.”). Third, Mr. Christopher Rice, a consultant of AGIS, Inc. and a named
`inventor of the Patents-in-Suit, is located in Superior, Colorado, and has confirmed that the E.D.
`Tex. is more convenient than this district. T-Mobile Texas case, Dkt. 82-2 ¶ 18; T-Mobile Texas
`case, Dkt. 82 at 17; see Aerielle, Inc. v. Monster Cable Prods., Inc., No. 2:06-cv-382 (TJW), 2007
`WL 951639, at *2 (E.D. Tex. Mar. 26, 2007) (considering affidavits of several key defendant
`witnesses stating their willingness to travel to the E.D. Tex.).
`The E.D. Tex. is also more convenient for AGIS Software’s key party witnesses. AGIS
`Software’s Chief Executive Officer and a named inventor on the Patents-in-Suit, Mr. Malcolm K.
`Beyer, Jr., resides in Florida. Dkt. 32-1 ¶¶ 2, 4. David Sietsema, a former AGIS Software employee
`who previously worked from the Austin, Texas office, was responsible for monitoring and
`overseeing licensing activities. T-Mobile Texas case, Dkt. 82-2 ¶ 15. Moreover, Ronald Wisneski,
`Margaret Beyer, and George Barros are potential AGIS Software witnesses who live and work in
`Jupiter, Florida and Vienna, Virginia. Id. ¶ 19. These locations are significantly closer to the E.D.
`Tex. than the Northern District of California, and the witnesses would find it more convenient to
`travel to the E.D. Tex. Id. ¶¶ 8-21.
`In addition, Lyft submitted a declaration from its Regional Director, Max Loosen, who is
`located in Dallas, Texas, who was deposed by AGIS Software in relation to Lyft’s pending motion
`to dismiss in the Eastern District of Texas. See Ex. 1. Mr. Loosen submitted that he is knowledgeable
`about various aspects of Lyft’ sbusiness, including the operation of aspects of the Lyft Accused
`Products. Id. ¶ 3. Mr. Loosen is located significantly closer to the E.D. Tex. than this District.
`Accordingly, litigation in California is inconvenient for the witnesses and transferring this case to
`the E.D. Tex. would be much more convenient for the party and non-party witnesses.
`4. The Relative Ease of Access to Sources of Proof
`As an initial matter, this factor is given diminished importance, because Lyft cannot identify
`any sources of proof that cannot be transferred electronically. See Hansell v. TracFone Wireless
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`Inc., No. C-13-3440-EMC, 2013 WL 6155618, at *4 (N.D. Cal. Nov. 22, 2013) (factor weighed
`“minimally, if at all,” where electronic form of relevant documents was undisputed). Further, access
`to relevant, tangible evidence is easier in Texas. AGIS Software is incorporated and headquartered
`in the E.D. Tex., and maintains its documents, including patents, files histories, assignment records,
`prosecution records, formation documents, licenses, agreements, and corporate records at its office
`in the E.D. Tex. T-Mobile Texas case, Dkt. 82-2 ¶ 8. AGIS Software’s sister entity and non-party
`source code, technical documents, and other data related to the claimed inventions of the Asserted
`Patents, are stored at AGIS’s data center in Marshall, Texas. Id. ¶¶ 9-11. In addition, Mr. Armstrong,
`a third-party witness and consultant of AGIS, Inc. (see infra §IV.B.3), lives and works in Allen,
`Texas, and is expected to have documents and e-mails relevant to this action in his office in the E.D.
`Tex. Id. ¶ 14. Accordingly, this factor weighs in favor of transfer to the E.D. Tex.
`5. The Remaining Public and Private Interest Factors Also Favor Transfer
`The Federal Rules of Civil Procedure shall “be construed and administered to secure the just,
`speedy, and inexpensive determination of every action.” Tafolla v. City of Tustin, 885 F.2d 1473,
`1477 (9th Cir. 1989). Transfer to the E.D. Tex. ensures the expeditious access to judicial resources,
`because Chief Judge Gilstrap is already familiar with the issues. Moreover, this district is
`significantly more congested than the E.D. Tex. See Monarch Networking Solutions LLC v. Cisco
`Sys., Inc., No. 2:20-Cv-00015-JRG, fn. 19 (E.D. Tex. Jan. 15, 2021) (citing National Judicial
`Caseload Profile, ADMIN. OFFICE OF U.S. CTS. (Sept. 30, 2020)) (“For the twelve-month period
`ending September 30, 2020, the median time from filing to trial in civil cases was 18.0 months in
`[the E.D. Tex.] and 44.5 months in the Northern District of California. For the period ending
`September 30, 2019, those figures were 16.8 months in [E.D. Tex.] and 22.8 months in the Northern
`District of California.”). Finally, Texas has a substantial local interest in adjudicating this dispute
`against AGIS Software, one of its residents. Dkt. 1 at 1-2; see, e.g., Seven Networks v. Google LLC,
`No. 2:17-cv-00442-JRG, 2018 WL 4026760, at *14 (E.D. Tex. Aug. 14, 2018) (“There is little doubt
`that this District has a local interest in the disposition of any case involving a resident corporate
`party.”). Thus, the remaining public and private interest factors strongly favor transferring this case
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`MOTION TO TRANSFER PURSUANT TO § 1404, CASE NO. 5:21-cv-04653
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`Case 5:21-cv-04653-BLF Document 34 Filed 10/05/21 Page 14 of 15
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`to the E.D. Tex.
`V.
`CONCLUSION
`For the foregoing reasons, AGIS Software respectfully requests that the Court transfer this
`action to the United States District Court for the Eastern District of Texas.
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`DATED: October 5, 2021
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`Respectfully submitted,
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`RUSS AUGUST & KABAT
`By: /s/ Benjamin T. Wang
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` Benjamin T. Wang
`
`Alfred R. Fabricant (pro hac vice)
`afabricant@fabricantllp.com
`Peter Lambrianakos (pro hac vice)
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (pro hac vice)
`vrubino@fabricantllp.com
`Enrique Iturralde (pro hac vice)
`eiturralde@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Ave., Suite 206 South
`Rye, New York 10580
`Te