Case 5:21-cv-04653-BLF Document 84 Filed 04/01/22 Page 1 of 6
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`Alfred R. Fabricant
`afabricant@fabricantllp.com
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Benjamin T. Wang
`bwang@raklaw.com
`Minna Y. Chan
`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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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`LYFT, INC.,
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`v.
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`Plaintiff,
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`
`Defendant.
`
` Case No. 4:21-cv-04653-BLF
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`DEFENDANT AGIS SOFTWARE
`DEVELOPMENT LLC’S NOTICE OF
`MOTION AND OPPOSED MOTION FOR
`LEAVE TO AMEND INFRINGEMENT
`CONTENTIONS PURSUANT TO
`PATENT LOCAL RULE 3-6
`
`Date: July 28, 2022
`Time: 9:00 A.M. PST
`Location: Courtroom 3
`Judge: Hon. Judge Beth Labson Freeman
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`Case 5:21-cv-04653-BLF Document 84 Filed 04/01/22 Page 2 of 6
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`NOTICE OF MOTION
`TO ALL PARTIES AND THEIR ATTORNEYS:
`PLEASE TAKE NOTICE that on July 28, 2022 at 9:00 A.M. PST, or as soon thereafter as
`may be heard before the Honorable Judge 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
`for the Court for an order granting AGIS Software leave to amend its infringement contentions as
`to U.S. Patent No. 7,031,728 (the “’728 Patent”); 7,630,724 (the “’724 Patent”); 8,213,970 (the
`“’970 Patent”); 10,299,100 (the “’100 Patent”); and 10,341,838 (the “’838 Patent”) pursuant to
`Patent Local Rule 3-6. This motion is based on this Notice of Motion, the accompanying
`Memorandum of Points and Authorities, all documents in the Court’s file, and such other written or
`oral evidence and argument as may be presented at or before the time this motion is heard by the
`Court. Plaintiff Lyft, Inc. has indicated that is opposes this motion.
`STATEMENT OF THE RELIEF REQUESTED
`Pursuant to Patent Local Rule 3-6, AGIS Software requests that this Court grant AGIS
`Software leave to amend its infringement contentions as to the ’728, ’724, ’970, ’100, and ’838
`Patents.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`I.
`STATEMENT OF RELEVANT FACTS
`Pursuant to Patent Local Rule 3-1, AGIS Software served its infringement contentions on
`February 25, 2022, including contentions for the ’728, ’724, ’970, ’100, and ’838 Patents. Exhibits
`A-F.
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`On March 18, 2022, AGIS Software served Lyft a copy of AGIS Software’s amended
`infringement contentions (Exs. G-L) which clarified that AGIS Software is not accusing, and will
`not accuse, Lyft iOS applications or any products or Apple, Inc. AGIS Software made clear that
`AGIS’s amended disclosures do not add or modify any theories of infringement. On March 21,
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`Case 5:21-cv-04653-BLF Document 84 Filed 04/01/22 Page 3 of 6
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`2022, AGIS Software informed Lyft that it seeks to amend its infringement contentions to clarify
`that AGIS Software is not accusing, and will not accuse, Lyft iOS applications or any products of
`Apple Inc.
`On March 21, 2022, counsel for Lyft informed AGIS Software that it will “likely oppose a
`motion to amend.” AGIS requested Lyft’s position by March 22, 2022 and received no response.
`AGIS understands that Lyft opposes.
`II. AGIS SOFTWARE HAS GOOD CAUSE FOR THE AMENDMENTS
`Patent Local Rule 3-6 specifies that infringement contentions may be amended for “good
`cause.” P.L.R. 3-6. The traditional two-part inquiry under Patent Local Rule 3-6 is, first, whether a
`party has “proceed[ed] with diligence in amending [its] contentions when new information comes
`to light,” O2 Micro Int’l, Inc. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006),
`and second, whether “a showing of undue prejudice may support denial of leave.” Life Techs. Corp.
`v. Biosearch Techs., Inc., 2012 WL 1831595, at *1 (N.D. Cal. May 18, 2012). This Court has broad
`discretion to grant leave to amend. Tech. Licensing Corp. v. Blackmagic Design Pty Ltd., 2014 WL
`5499511, at *2 (N.D. Cal. Oct. 30, 2014).
`Lyft distributes and updates its applications via the iOS and Android distribution platforms.
`During the consolidated EDTX Litigation, AGIS made clear to both Lyft and Uber that AGIS did
`not, and will not, assert infringement against any Lyft iOS-based applications or any products of
`Apple. This position remains in this case. To the extent Lyft files an amended complaint to assert
`non-infringement of Lyft applications, AGIS will not assert infringement of Lyft iOS-based
`applications or any products of Apple. The purpose of these amend contentions are to memorialize
`this narrowing representation and to avoid unnecessary litigation on non-accused products.
`On March 14, 2022, counsel for Lyft and AGIS Software met and conferred regarding a
`number of items, including whether AGIS opposes adding non-parties Advanced Ground
`Information Systems, Inc., AGIS Holdings, Inc., and Malcolm K. Beyer, Jr. and a claim of breach
`of contract to the forthcoming Amended Complaint. During this teleconference, counsel for AGIS
`opposed the request on the grounds that it will not assert infringement of any Lyft iOS-based
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`RUSS AUGUST & KABAT
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`Case 5:21-cv-04653-BLF Document 84 Filed 04/01/22 Page 4 of 6
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`applications or any products of Apple. Despite AGIS’s position, on March 29, 2022, Lyft requested
`leave to amend its complaint to add the non-parties and the claim of breach of contract based on the
`alleged terms of a settlement agreement between AGIS and Apple. Dkt. 78 at 5-6.
`On March 18, 2022, to memorialize AGIS’s representation and to avoid unnecessary
`litigation over non-accused products, AGIS served amended contentions that expressly stated that
`AGIS did not, and would not, assert infringement against any Lyft iOS-based applications or any
`products of Apple. Lyft rejected these amendments and indicated it would oppose entry of the
`contentions, presumably to force and maintain a breach of contract claim. To the extent Lyft does
`not accept or believe AGIS’s representation, these amendments should be construed as a narrowing
`amendments that eliminate any assertion against Lyft iOS-based applications.
`During correspondence between counsel regarding Lyft’s position on this motion, Lyft
`argued that “it appears AGIS is attempting to add a new accused product, Lyft’s Android
`application.” This understanding ignores the plain text of AGIS’s initial contentions, which
`repeatedly identify and rely on Lyft’s Android applications. Nonetheless, even if Lyft
`misunderstood AGIS’s contentions, the current amended contentions clarify any misunderstanding
`with affirmative statements that AGIS does not accuse any Lyft iOS applications or any Apple
`products. Accordingly, Lyft’s refusal to accept AGIS’s representation and Lyft’s misunderstanding
`of AGIS’s contentions provide sufficient good cause to permit the entry the amendments, which
`narrow the issues and clarify AGIS’s positions in this action.
`AGIS also has sufficient cause because this matter is in its early stages under unique
`circumstances. Currently, there is no operative complaint because the Court dismissed Lyft’s
`declaratory-judgment complaint. [Dkt. 61]. There are no live claims of non-infringement or live
`assertions of infringement. To comply with the Court’s scheduling order and to avoid unnecessary
`delay in advance of discovery, AGIS served the initial amended contentions on a provisional basis
`and reserved the right to amend its provisional contentions upon filing of an amended complaint.
`Entry of the amendments will make clear the scope of the future assertions of infringement after
`Lyft files its amended complaint.
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`Case 5:21-cv-04653-BLF Document 84 Filed 04/01/22 Page 5 of 6
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`Lyft will not suffer undue prejudice from the amendment. Here, the amendments do not add
`or modify any theories of infringement. Rather, AGIS Software seeks to make clear that AGIS
`Software is not accusing, and will not accuse, Lyft iOS applications or any products of Apple Inc.
`To the extent Lyft believes otherwise, these amendments memorialize the narrow position and
`streamlines the parties’ disputes. AGIS Software’s amended contentions remove any ambiguity
`regarding the iOS products, to the extent Lyft believed they existed, and narrow the scope of AGIS’s
`infringement theories. Accordingly, there is no prejudice to Lyft if the Court permits AGIS Software
`to amend its infringement contentions.
`III. CONCLUSION
`For at least the foregoing reasons, AGIS Software respectfully requests the Court to grant
`AGIS Software leave to amend its infringement contentions.
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`DATED: April 1, 2022
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`Respectfully submitted,
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`RUSS AUGUST & KABAT
`By: /s/ Benjamin T. Wang
`
`
` Benjamin T. Wang
`
`FABRICANT LLP
`Alfred R. Fabricant
`ffabricant@fabricantllp.com
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`vrubino@fabricantllp.com
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Attorneys for Defendant
`AGIS Software Development LLC
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`Case 5:21-cv-04653-BLF Document 84 Filed 04/01/22 Page 6 of 6
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`CERTIFICATE OF SERVICE
`The undersigned hereby certified that a true and correct copy of the above and foregoing
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`document has been served via electronic mail on April 1, 2022, to all counsel of record.
`I declare under the penalty of perjury that the foregoing is true and correct.
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`DATED: April 1, 2022
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`/s/ Benjamin T. Wang
` Benjamin T. Wang
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