Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 1 of 20
`
`Jeremy J. Taylor (SBN 249075)
`jeremy.taylor@bakerbotts.com
`Arya Moshiri (SBN 324231)
`arya.moshiri@bakerbotts.com
`BAKER BOTTS L.L.P.
`101 California St., Ste. 3600
`San Francisco, CA 94111
`Tel: (415) 291-6200
`Fax: (415) 291-6300
`
`Bethany R. Salpietra (pro hac vice)
`bethany.salpietra@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: 214.953.6500
`Facsimile: 214.953.6503
`
`Attorneys for Plaintiff/Counterclaim
`Defendant Lyft, Inc.
`
`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 Road, 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/Counterclaim Plaintiff
`AGIS Software Development LLC
`
`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
`JOINT CASE MANAGEMENT
`CONFERENCE STATEMENT
`Date:
`January 27, 2022
`Time:
`11:00 a.m.
`Dept:
`Courtroom 3 – 5th Floor
`Judge: The Honorable Beth Labson Freeman
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`
`Case No. 5:21-cv-04653-BLF
`
`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
`
`BAKER BOTTS L.L.P.
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 2 of 20
`
`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
`
`Plaintiff Lyft, Inc. (“Lyft”) and Defendant AGIS Software Development, LLC (“AGIS”)
`submit this Joint Case Management Conference Statement pursuant to Rule 26(f) of the Federal
`Rules of Civil Procedure, Civil Local Rule 16-9, Patent Local Rule 2-1, the Standing Order for all
`Judges of the Northern District of California titled “Contents of Joint Case Management Statement,”
`and the Clerk’s Notice Setting Case Management Conference, (Dkt. No. 33), in advance of the Case
`Management Conference scheduled for January 27, 2022.
`1.
`JURISDICTION AND SERVICE
`This Court has subject matter jurisdiction under 28 U.S.C. §§ 2201, 2202, 1331, and 1338(a),
`because this action arises under the laws of the United States, and in particular the Patent Act of
`the United States, 35 U.S.C. § 100 et seq., and seeks relief under the Federal Declaratory Judgment
`Act.
`
`On September 27, 2021, AGIS moved the Court for: (1) an order dismissing the Complaint
`for Declaratory Judgment filed by Plaintiff pursuant to Rule 12(b)(2) of the Federal Rules of Civil
`Procedure; (2) an order dismissing the Complaint for Declaratory Judgment in favor of the first-
`filed action; or (3) in the alternative, an order staying this action pending a decision on Lyft’s
`motion to dismiss, or in the alternative, to transfer to the Eastern District of Texas. Dkt. 32. This
`Motion has been fully briefed and will be heard by the Court on January 27, 2022. Lyft intends to
`file an amended complaint adding AGIS’s affiliate, Advanced Ground Information Systems, Inc.
`(“AGIS, Inc.”), as a defendant to the instant lawsuit and alter ego to AGIS, and adding additional
`allegations to support its contention that this Court has personal jurisdiction over AGIS and AGIS,
`Inc. AGIS has not agreed to allow protected information obtained during discovery in the EDTX
`Action and subject to the protective order in the EDTX Action to be used in the amended pleading.
`If an agreement cannot be reached to include the protected information in Lyft’s amended
`complaint, Lyft intends to seek formal discovery from AGIS in this action and then seek leave to
`amend its complaint. AGIS submits that AGIS, Inc. is a separate and distinct entity and is not the
`assignee or owner of any of the Patents-in-Suit, and AGIS intends to file a motion to dismiss the
`amended complaint.
`AGIS filed a motion to transfer to the United States District Court for the Eastern District of
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`1
`
`Case No. 5:21-cv-04653-BLF
`
`BAKER BOTTS L.L.P.
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 3 of 20
`
`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
`
`2.
`
`Texas pursuant to 28 U.S.C. § 1404(a), on October 5, 2022, asserting that this action should be
`transferred to the first-filed Court for convenience. Dkt. 34.1 This issue has been fully briefed and
`will be heard by the Court on January 27, 2022.
` AGIS does not contest service.
`FACTS
`a.
`Lyft’s Statement
`Lyft, which is headquartered in San Francisco, California, is one of the largest multimodal
`platforms in the United States and Canada that provides a marketplace that allows independent
`drivers to provide rideshare services to people requesting transportation. Since 2012 it has provided
`a marketplace that can help people access transportation and continues to pioneer innovations
`aligned with its mission to improve people’s lives with the world’s best transportation. Prior to Lyft
`filing this declaratory judgment action, AGIS alleged that Lyft infringed U.S. Patent Nos. 7,031,728;
`7,630,724; 8,213,970; 10,299,100; and 10,341,838 (collectively, the “Patents-in-Suit”). Lyft denies
`AGIS’s allegations that it has infringed any claim of any of the Patents-in-Suit and seeks a
`declaratory judgment of non-infringement.
`Because substantial discovery already occurred in the dismissed EDTX Action, Lyft
`proposes limiting discovery allowed in this case and allowing discovery obtained in the EDTX
`Action to be used in the present case. In addition, because there are Patent Office proceedings
`involving four of the five asserted patents pending which have the potential of substantially
`impacting the present case, Lyft proposes delaying entry of a formal schedule and/or staying this
`case until the Patent Office proceedings resolve.
`b.
`AGIS’s Statement
`On June 16, 2021, Lyft filed this action seeking declaratory judgment of noninfringement as
`to the Patents-in-Suit. See Dkt. 1. On September 27, 2021, AGIS moved the Court, for: (1) an order
`dismissing the Complaint for Declaratory Judgment filed by Plaintiff pursuant to Rule 12(b)(2) of
`
`1 On January 19, 2022, Judge Gilstrap issued a ruling adopting Magistrate Judge Payne’s report and
`recommendation granting Lyft’s Motion to Dismiss the EDTX Action for improper venue. See
`AGIS Software Development LLC v. Lyft, Inc., Case No. 2:21-cv-00072-JRG, Dkt. 334.
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`Case No. 5:21-cv-04653-BLF
`2
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 4 of 20
`
`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 Rules of Civil Procedure; (2) an order dismissing the Complaint for Declaratory
`Judgment in favor of the first-filed action; or (3) in the alternative, an order staying this action
`pending a decision on Lyft’s motion to dismiss, or in the alternative, to transfer, which is currently
`pending in the Eastern District of Texas. Dkt. 32. On October 5, 2021, AGIS moved the Court for
`an order to transfer this case to the Eastern District of Texas Pursuant to 28 U.S.C. §1404(a). Dkt.
`34. The Complaint is deficient on the grounds that this Court lacks personal jurisdiction over AGIS
`Software because AGIS Software is not “at home” in California, and it has not purposefully directed
`activities related to the enforcement or defense of the Patents-in-Suit at California sufficient to justify
`the exercise of personal jurisdiction over AGIS Software in California in accordance with Due
`Process. To the extent Lyft files its intended amended complaint, AGIS submits that AGIS, Inc. is a
`separate and distinct entity and is not the assignee or owner of any of the Patents-in-Suit, and AGIS
`intends to file a motion to dismiss the amended complaint. If the Court denies each of AGIS’s
`motion to dismiss (Dkt. 32), AGIS’s motion to transfer under 28 U.S.C. § 1404(a) (Dkt. 34), and
`AGIS’s forthcoming motion to dismiss the forthcoming amended complaint, AGIS Software expects
`to file an answer.
`Malcolm K. “Cap” Beyer, Jr., the CEO of AGIS Software and a named inventor of the
`Patents-in-Suit, is a graduate of the United States Naval Academy and a former U.S. Marine. Mr.
`Beyer founded Advanced Ground Information Systems, Inc. (“AGIS, Inc.”) shortly after the
`September 11, 2001 terrorist attacks because he believed that many first responder and civilian lives
`could have been saved through the implementation of a better communication system. He
`envisioned and developed a new communication system that would use integrated software and
`hardware components on mobile devices to give users situational awareness superior to systems
`provided by conventional military and first responder radio systems. AGIS, Inc. developed
`prototypes that matured into its LifeRing system, which provides first responders, law enforcement,
`and military personnel with what is essentially a tactical operations center build into hand-held
`mobile devices. LifeRing applications and services provide the functionalities so that users can form
`and/or join networks or groups, share and view locations with other users, display symbols
`corresponding to locations (including locations of other users) on a map, and communicate with
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`3
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 5 of 20
`
`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
`
`other users via text, voice, and multimedia-based communication. LifeRing users can also display
`map information, including symbols corresponding with users, entities, and locations, and form
`groups to track other users and communicate with other users, including through text messages and
`voice calls. The claimed inventions of the Patents-in-Suit are directed to these features.
`In this action, Lyft does not contend that the Patents-in-Suit are invalid under 35 U.S.C. 101,
`102, 103, and 112. At this time, AGIS does not agree to permit Lyft to use protected information
`obtained during discovery in the EDTX Action and subject to the protective order in the EDTX
`Action, where that protective order specifically states: “Documents, information or material
`produced in this Action, including but not limited to Protected Material designated as
`DESIGNATED MATERIAL, shall be used by the Parties only in the litigation of this Action and
`shall not be used for any other purpose.” EDTX Action, Dkt. 96 at 8.
`
`3.
`
`LEGAL ISSUES
`The parties currently believe that the principal disputed legal issues are:
` Whether personal jurisdiction exists over AGIS;
` Whether this case should be transferred to the Eastern District of Texas for
`convenience;
` Whether Lyft has infringed the Patents-in-Suit;
` Whether AGIS is barred from construing certain of the asserted claims of the Patents-
`in-Suit in particular ways due to prosecution history estoppel and/or disclaimer (in
`defense of a counterclaim of infringement);
` Whether AGIS is barred by the doctrines of express or implied license, covenant not
`to sue, and/or exhaustion to the extent AGIS has granted rights to any of the Patents-
`in-Suit that extend to the Accused Products (in defense of a counterclaim of
`infringement); Whether any damages awarded may be limited under 35 U.S.C. §§
`271, 286, 287, and/or 288 (in defense of a counterclaim of infringement);
` Whether any claims for relief against Lyft for alleged infringement are barred by the
`doctrine of waiver, acquiescence, unclean hands, and/or estoppel (in defense of a
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`4
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 6 of 20
`
`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
`
`counterclaim of infringement);
` Whether any claims for relief against Lyft are barred, in whole or in part, due to
`breach of contract (in defense of a counterclaim of infringement);
` Whether any of the Patents-in-Suit are unenforceable (in defense of a counterclaim
`of infringement);
` Whether AGIS lacks statutory standing because it failed to join all co-owners of the
`Patents-in-Suit (in defense of a counterclaim of infringement);
` The proper construction of any disputed patent claim terms;
` Whether this case is exceptional under 35 U.S.C. § 285;
` Whether any other forms of relief are due to any party.
`The parties reserve the right to raise additional factual or legal issues that may arise
`throughout the course of this action.
`4.
`MOTIONS
`On September 27, 2021, AGIS moved the Court, for: (1) an order dismissing the Complaint
`for Declaratory Judgment filed by Plaintiff pursuant to Rule 12(b)(2) of the Federal Rules of Civil
`Procedure; (2) an order dismissing the Complaint for Declaratory Judgment in favor of the first-
`filed action; or (3) in the alternative, an order staying this action pending a decision on Lyft’s motion
`to dismiss, or in the alternative, to transfer to the Eastern District of Texas. Dkt. 32. This Motion
`has been fully briefed and will be heard by the Court on January 27, 2022.
`On October 5, 2021, AGIS filed a motion to transfer to the United States District Court for
`the Eastern District of Texas pursuant to 28 U.S.C. § 1404(a) (Dkt. 34), which has been fully briefed
`and will be heard by the Court on January 27, 2022.
`Although Lyft believes its current complaint is sufficient, Lyft intends to file a motion for
`leave to amend its complaint to add AGIS’s alter ego AGIS, Inc. as a named defendant and to add
`further support for jurisdiction over both companies. AGIS submits that Advanced Ground
`Information Systems, Inc. is a separate and distinct entity. AGIS does not agree to allow Lyft to
`include in its amended complaint protected information obtained through discovery in the EDTX
`Action and subject to the protective order in the EDTX Action. When this issue is resolved, either
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`5
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 7 of 20
`
`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
`
`5.
`
`through agreement or discovery in this action, Lyft intends to seek leave to amend its complaint.
`AGIS reserves the right to oppose Lyft’s intended motion for leave to amend its complaint.
`The parties also anticipate dispositive motions will be filed in this case, including summary
`judgment motions that may address issues of patent non-infringement and/or infringement, and
`patent unenforceability and/or enforceability, and/or remedies. The parties also reserve the right to
`file additional motions as the case develops and the need arises.
`No other motions are currently pending.
`AMENDMENT OF PLEADINGS
`On January 10, 2022, Lyft and AGIS met and conferred pursuant to Fed. R. Civ. P. 26(f) and
`Lyft expressed, at that time, that it was considering filing an amended complaint that added AGIS’s
`affiliate, AGIS, Inc., as a defendant to the present lawsuit, and added additional allegations to
`support its contention that this Court has personal jurisdiction over AGIS and AGIS, Inc. Lyft
`shared a draft of its amended complaint with AGIS on January 14, 2022, asking AGIS to confirm
`whether it would oppose Lyft’s filing of the amended complaint and whether the draft included
`confidential information of AGIS that would necessitate it being filed under seal. AGIS responded
`on January 20, 2022, informing Lyft that it would not allow Lyft to use any protected information
`obtained through discovery in the EDTX Action and subject to the protective order in the EDTX
`Action. In view of this development, Lyft is continuing to seek agreement with AGIS to allow
`information from the EDTX Action to be used in this case and, if no agreement is reached, intends
`to seek discovery in this case, and then file an amended complaint. AGIS submits that Advanced
`Ground Information Systems, Inc. is a separate and distinct entity, and AGIS intends to file a motion
`to dismiss the amended complaint.
`6.
`EVIDENCE PRESERVATION
`The parties have reviewed the Guidelines for the Discovery of Electronically Stored
`Information (ESI), revised on December 1, 2015. They are aware of their obligation to cooperate on
`issues relating to the preservation, collection, search, review, and production of ESI and that the
`proportionality standard in Federal Rule of Civil Procedure 26(b)(1) applies to discovery.
`The parties have met and conferred regarding steps taken to preserve evidence related to the
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`6
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 8 of 20
`
`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
`
`issues reasonably evident in this action, and each party represents that it has taken appropriate and
`reasonable measures to preserve any such evidence.
`As this case is in its early stages, the parties are still assessing their positions regarding an
`agreement to govern the discovery and production of Electronically Stored Information (ESI) and
`will continue to work in good faith to come to an agreement. The parties have discussed and are
`considering the adoption of the Northern District’s Model ESI Order.
`7.
`DISCLOSURES
`The parties have stipulated to extend the time to serve initial disclosures pursuant to Federal
`Rule of Civil Procedure 26(a)(1)(C) to February 25, 2022. The parties do not otherwise propose any
`change to the form or requirement for initial disclosures.
`8.
`DISCOVERY
`a.
`Discovery Taken to Date
`The parties have not yet conducted discovery in this case.
`b.
`Scope of Anticipated Discovery
`The parties anticipate that the scope of merits discovery will encompass the factual and legal
`issues raised by the parties’ pleadings, the issues identified in Sections 2 and 3 above, and the relief
`requested by the parties. The parties’ claims and defenses are anticipated to require both party and
`potentially third-party discovery on at least the issue of infringement/non-infringement. As
`discovery progresses, the relevant subject matter may expand.
`If the Court denies AGIS’s motion to dismiss and motion to transfer, AGIS expects to file an
`answer. Regarding Lyft’s allegations of non-infringement, AGIS Software anticipates that it will file
`infringement contentions and seek written and deposition discovery concerning at least the following
`subjects:
` Lyft’s knowledge of the Patents-in-Suit, if any;
` The accused products, including Lyft’s source code for Lyft Rider app, Lyft Driver app,
`and Lyft servers;
` Lyft’s development, production, testing, and distribution of the accused
`products;
`
`
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`7
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 9 of 20
`
`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 prosecution of patents citing the Patents-in-Suit or related publications;
` Sales, marketing, and related materials to Lyft’s allegations of noninfringement;
`and
` Lyft’s business practices concerning patent clearance, freedom to operate, and due
`diligence associated with its products and services.
`Additionally, Lyft believes that discovery may be needed on the following subjects:
`conception, reduction to practice, and priority dates of the patents-in-suit or related
`patents;
`design, development, operation, disclosure, marketing, and sales of alleged embodiments
`of the patents-in-suit or related patents;
`prosecution of the patents-in-suit or related patents, including any post=grant
`proceedings;
`licensing, transfer, or other agreements conferring rights to the patents-in-suit or related
`patents;
`royalties or other payments received by AGIS or affiliates for the patents-in-suit or
`related patents
`compliance with the marking requirements of 35 U.S.C. § 287 for the patents-in-suit or
`related patents;
`appraisal or valuation of the patents-in-suit or related patents;
`ownership of or other economic interest in the patents-in-suit or related patents;
`employment or other agreements with individuals or entities performing work for AGIS
`or AGIS affiliates;
`validity, scope, eligibility, enforceability, or alleged infringement of the patents-in-suit
`or related patents and opinions related thereto;
`prior art to the patents-in-suit or related patents;
`non-infringing alternatives to the patents-in-suit or related patents;
`prior litigations involving the patents-in-suit or related patents;
`pre-suit investigation of alleged infringement of the patents-in-suit or related patents;
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`8
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 10 of 20
`
`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
`
`
`
`corporate structure, formation, and operations of AGIS and its affiliates; and
`preservation of documents and other materials relevant to the above topics;
`
`The parties reserve all rights to seek modifications of such limits and agree to confer in good
`faith if a need arises for additional discovery.
`Because substantial discovery relevant to this case has already been obtained in the
`dismissed EDTX Action, as discussed more fully below, Lyft proposes narrowing the scope of
`permitted discovery to streamline discovery in this case and minimize burden on both parties.
`c.
`Protective Order
`The parties agree that a protective order will be necessary in this case given the sensitive and
`proprietary information that will be exchanged during discovery. The parties are currently
`negotiating what, if any, modifications should be made to the model protective order and will submit
`a final proposed protective order to the Court for entry in this case with a copy of the document in
`Word format being submitted by email as required by Section VIII of the “Judge Freeman’s
`Standing Order for Civil Cases.” In the meantime, the parties agree that the Court’s form interim
`protective order governs this action pursuant to Patent Local Rule 2-2.
`d.
`Report on Stipulated E-Discovery Order
`The parties have reviewed the ESI Guidelines and met and conferred concerning ESI. The
`parties will jointly submit any proposed modifications to the Model Stipulation & Order re:
`Discovery of Electronically Stored Information for Patent Litigation available on the Court’s
`website at https://www.cand.uscourts.gov/eDiscoveryGuidelines, to the extent they have good cause
`to deviate from the ESI Guidelines.
`e.
`Issues Concerning Claims of Privilege or of Protection as Trial-Preparation
`Materials
`The parties agree that privileged communications and work product generated after the filing
`of the complaint in the dismissed EDTX Action between a party to this case and its counsel of record
`in either the Eastern District of Texas or above-captioned case need not be logged. The limitations
`set forth herein shall be without prejudice to either party later seeking further limitations on privilege
`log requirements.
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`9
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 11 of 20
`
`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 parties also agree that issues regarding the inadvertent production of privilege or work
`product material shall be addressed as provided in the Federal Rules of Civil Procedure, the Federal
`Rules of Evidence, and the Protective Order to be entered in this case.
`f.
`Proposed Changes to the Limitations on Discovery
`The parties disagree on the limits which should govern discovery in this case. Lyft proposes
`the following limits in light of the extensive discovery undertaken by both parties in the EDTX
`Action. AGIS proposes that the presumptive limits on discovery provided by the Federal Rules of
`Civil Procedure and this Court’s Local Rules and Standing Orders should govern.
`i.
`Written Discovery
`Requests for Admission.
`In view of the significant amount of discovery previously taken in the EDTX Action, Lyft
`proposes that each party shall be limited to serving no more than 20 requests for admission (“RFAs”)
`relating to any fact, the application of law to fact, or opinions about either. RFAs solely aimed at
`authenticating documents will not count towards this limit on RFAs. Lyft proposes, however, that
`the parties meet and confer in good faith to stipulate to the authentication of documents. To the
`extent a party refuses to stipulate to the authenticity and/or business records status under Fed. R.
`Evid. 803(6) of documents generated and produced by that party, it shall provide its basis for such
`refusal in advance of any meet and confer. The parties will serve the requests for admissions such
`that a timely answer is due no later than on or before the close of fact discovery.
`AGIS proposes the parties may serve 40 requests for admission on each side. AGIS agrees
`with Lyft on the proposed procedure for authentication of documents.
`Interrogatories.
`In view of the significant amount of discovery previously taken in the EDTX Action, Lyft
`proposes following the limit of 10 interrogatories per party as opposed to the 25 granted by Rule 33
`of the Federal Rules of Civil Procedure, in light of the interrogatories which have already been
`exchanged in related litigation between the parties in the Eastern District of Texas. Lyft further
`proposes that the parties should seek leave for additional interrogatories as needed.
`AGIS proposes allowing a limit of 25 interrogatories for each party, following Rule 33 of
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`10
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 12 of 20
`
`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 Rules of Civil Procedure.
`ii.
`Depositions
`In view of the significant amount of discovery previously taken in the EDTX Action, Lyft
`proposes that unless otherwise ordered by the Court or stipulated by the parties, each party shall be
`limited to taking 25 hours of depositions and that the parties will agree to meet and confer regarding
`the need to conduct any additional hours of depositions.
`AGIS proposes the parties may take up to 40 total hours of deposition of the other side.
`Depositions of experts and third parties do not count against these limits.
`g.
`Expert Discovery
`The parties agree that the protections provided in Federal Rule of Civil Procedure
`26(b)(4)(B) and (C) will equally apply to expert declarations as they do to expert reports, including
`both drafts of declarations and communications related to declarations. Pursuant to Federal Rule of
`Civil Procedure 26(b)(4), draft expert reports, notes, outlines, and any other writings leading up to
`an expert’s final report(s) are exempt from discovery. In addition, all communications with and all
`materials generated by a testifying expert with respect to his work on this action are exempt from
`discovery unless relied upon by the expert in forming his or her opinions. If an expert produces a
`report, the expert must produce his or her final report and all materials on which he or she relied.
`The parties agree that depositions of experts shall not count toward the above limitations on
`depositions.
`h.
`
`Any Other Orders that the Court Should Issue Under FRCP 26(c) or Under
`FRCP 16(b)
`i.
`E-mail Service
`The parties consent to service by electronic means as set forth in FRCP 5(b)(2)(e), including
`service by e-mail and via other widely used electronic file transfer services. Service by e-mail will
`be treated as service by hand delivery. The parties agree that service by email by 11:59 P.M. Pacific
`time on a given day will be treated as service by personal delivery that day. Notwithstanding the
`foregoing, the parties further agree that documents filed publicly through the Court’s ECF system
`need not be separately served by email, and that ECF filing constitutes personal service as of the
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`11
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 13 of 20
`
`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
`
`10.
`
`date and time such document was filed, and that documents filed under seal or manually must be
`served by email within a reasonable time following a related ECF filing, and that the email service
`of such documents shall relate back to the time of the related ECF filing.
`ii.
`Electronic Mail and Communications
`The parties acknowledge the burden of discovery involving emails and other forms of
`electronic communication and agree to (a) abide by the Northern District of California’s E-
`Discovery Guidelines, and (b) meet and confer regarding any proposed modifications to the Court’s
`Model Stipulation & Order Re: Discovery of Electronically Stored Information for Patent Litigation
`(“Model ESI Stipulation”). The parties agree that forms of electronic communication other than
`emails—such as text messages, voicemails, tapes, and other messaging applications (e.g., Skype,
`Skype for Business, Slack)—need not be preserved.
`9.
`CLASS ACTIONS
`This litigation is not a class action.
`RELATED CASES
`On January 29, 2021, AGIS filed a lawsuit in the District Court for the Eastern District of
`Texas, in which it alleged that Lyft infringes the same patents at issue in this lawsuit: AGIS Software
`Development LLC v. Lyft, Inc., 2:21-cv-00024-JRG (E.D.T.X.) (later consolidated with 2:21-cv-
`00072-JRG (E.D.T.X.)). On November 10, 2021, Magistrate Judge Roy S. Payne issued a report
`and recommendation recommending the court dismiss the case for improper venue. See Dkt. 212,
`Case No. 2:21-cv-00072-JRG. On November 24, 2021, the parties stipulated to a stay of those
`proceedings until Judge Gilstrap issued a ruling on the report and recommendation. Dkt. 235, Case
`No. 2:21-cv-00072-JRG. AGIS filed a motion for reconsideration and objections to the report and
`recommendation on December 15, 2021, and Lyft filed its response to AGIS’s motion and
`objections on January 12, 2022. Dkt. 258 & 312, Case No. 2:21-cv-00072-JRG. On January 19,
`2022, Judge Gilstrap issued a ruling adopting Magistrate Judge Payne’s report and recommendation,
`overruling AGIS’s objections to the same, and granting Lyft’s Motion to Dismiss (Dkt. 30). Dkt.
`334, Case No. 2:21-cv-00072-JRG.
`The following declaratory judgment actions involve one or more of the Patents-in-Suit and
`
`JOINT CASE MANAGEMENT CONFERENCE STATEMENT
`12
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 51 Filed 01/20/22 Page 14 of 20
`
`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
`
`have been related to the instant case by order of the Court (Dkt. 30), but both actions have been
`dismissed:
` Smith Micro Software, Inc. v. AGIS Software Development LLC, No. 3:21-cv-03677-BLF
`(N.D. Cal. May 17, 2021); and
` WhatsApp LLC. v. AGIS Software Development LLC, No. 4:21-cv-03076-BLF (N.D. Cal.
`April 27, 2021).
`Further, one or more of the Patents-in-Suit have been asserted in the following patent
`infringement actions currently pending in the Eastern District of Texas:
` AGIS Software Development LLC v. Waze Mobile Limited, No. 2:19-cv-00359 (E.D. Tex.
`Nov. 4, 2019)
` AGIS Software Development LLC v. Google LLC, No. 2:19-cv-00361 (E.D. Tex. Nov. 4,
`2019)
` AGIS Software Development LLC v. Samsung Electronics Co., Ltd., No. 2:19-cv-00362
`(E.D. Tex. Nov. 4, 2019)
` AGIS Software Development LLC v. Lyft, I