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`EXHIBIT A
`EXHIBIT A
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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
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`Benjamin T. Wang
`bwang@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-9226
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`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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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Defendant.
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`Plaintiffs,
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` Case No. 5:21-cv-04653-BLF
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`DEFENDANT AGIS SOFTWARE
`DEVELOPMENT LLC’S DISCLOSURE
`OF ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`
`Hon. Judge Beth Labson Freeman
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`DEFENDANT AGIS SOFTWARE’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`5:21-cv-04653-BLF
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`Defendant AGIS Software Development LLC (“AGIS Software”) hereby makes the
`following infringement disclosure under the Patent Local Rules with respect to United States Patent
`Nos. 7,031,728; 7,630,724; 8,213,970; 10,299,100; and 10,341,838 (collectively, the “Patents-in-
`Suit”). AGIS Software’s investigation is ongoing, and discovery has not yet commenced. 1
`Accordingly, these disclosures are based on information available to AGIS Software at this time.
`AGIS Software reserves the right to supplement this disclosure after further discovery regarding the
`Lyft Accused Products set forth below. AGIS Software also reserves the right to assert additional
`claims of the Patents-in-Suit, accuse different products, or find literal and/or equivalent infringing
`elements in the Lyft Accused Products.
`I. DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`PURSUANT TO PATENT LOCAL RULE 3-1
`A. ASSERTED CLAIMS
`Plaintiff Lyft Inc. (“Plaintiff” or “Lyft”) has infringed and continues to infringe at least the
`following claims of the Patents-in-Suit in connection with the Lyft Accused Products set forth
`below:
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`• Claim 7 of U.S. Patent No. 7,031,728 (the “’728 Patent”);
`• Claims 9, 12-16 of U.S. Patent No. 7,630,724 (the “’724 Patent”);
`• Claims 2, 10, 12-13 of U.S. Patent No. 8,213,970 (the “’970 Patent”);
`• Claims 1-31 of U.S. Patent No. 10,299,100 (the “’100 Patent”); and
`• Claims 1-26 of U.S. Patent No. 10,341,838 (the “’838 Patent”).
`AGIS Software reserves the right to seek leave of court to add, delete, substitute, or
`otherwise amend this list of asserted claims should further discovery, the Court’s claim construction,
`or other circumstances so merit.
`B. ACCUSED INSTRUMENTALITIES
`AGIS Software is currently aware that the following Lyft Products infringe each of the
`Patents-in-Suit, either alone or in concert with one or more other Lyft Accused Products:
`• Lyft applications, services, and servers;
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`2
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`1 There is no operative complaint in this action, and AGIS has not filed an answer.
`DEFENDANT AGIS SOFTWARE’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
`5:21-cv-04653-BLF
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`RUSS AUGUST & KABAT
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`• Lyft Driver applications, services, and servers; and
`• Lyft servers related to Lyft applications and Lyft Driver applications.
`AGIS Software reserves the right to amend this list of accused instrumentalities, as well as
`other information contained in this document and the exhibits hereto, to incorporate new information
`learned during the course of discovery including, but not limited to, the inclusion of newly-released
`products or any other equivalent devices ascertained through discovery.
`C. CLAIM CHARTS
`Claim charts identifying a location of every element of every asserted claim of the Patents-
`in-Suit within Lyft Accused Products are attached hereto as Exhibits A-E. AGIS Software believes
`that the citations in the claim charts are representative of all Lyft Accused Products. For example,
`where AGIS Software cites reference material or images representing an application, service, or
`server that citation is representative for all other such applications, services, or servers including all
`prior and future versions unless otherwise noted. AGIS Software reserves the right to amend these
`claim charts as well as other information contained in this document and the exhibits hereto, to
`incorporate new information learned during the course of discovery including, but not limited to,
`information that is not publicly available or readily discernible without discovery. AGIS Software
`further reserves the right to amend these claim charts, as well as other information contained in this
`document and the exhibits attached hereto, pursuant to Patent Local Rules 3-1(g) and 3-6.
`D. LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS
`AGIS Software asserts that, under the proper construction of the asserted claims and their
`claim terms, the limitations of the asserted claims of the Patents-in-Suit are literally present in the
`Lyft Accused Products as set forth in the claim charts attached hereto as Exhibits A-E. AGIS
`Software contends that any and all elements found not to be literally infringed are infringed under
`the doctrine of equivalents because the differences between the claimed inventions and the accused
`instrumentalities, if any, are insubstantial.
`AGIS Software contends that Lyft directly infringes the asserted claims by making, using,
`offering for sale, selling, and importing into the United States the accused instrumentalities as well
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`DEFENDANT AGIS SOFTWARE’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`as indirectly infringe by contributing to and/or inducing others (e.g., Lyft customers or its Lyft
`customers’ customers) to directly infringe those claims by making, using, offering for sale, or selling
`the Lyft Accused Products. AGIS Software contends that Lyft directly infringes the asserted claims
`by testing the Lyft Accused Products in the United States.
`Pursuant to Patent Local Rule 3-6(a), AGIS Software reserves the right to amend its
`Infringement Contentions as to literal infringement or infringement under the doctrine of
`equivalents, e.g., in light of the Court’s claim construction.
`E. PRIORITY DATES
`Under Patent Local Rule 3-1(f), each of the asserted claims of the Patents-in-Suit are entitled
`to a priority date of at least as early as September 21, 2004. 2 For the purposes of this case only,
`AGIS Software intends to assert the following priority dates to earlier applications:
`• April 17, 2006 for Claims 1-31 of U.S. Patent No. 10,299,100 (the “’100 Patent”);
`and
`• April 17, 2006 for Claims 1-26 of U.S. Patent No. 10,341,838 (the “’838 Patent”)
`With the identification of these priority dates, AGIS does not waive the right to assert earlier
`priority dates to earlier applications. AGIS Software reserves the right to establish an earlier date
`of invention based upon actions related to conception and reduction to practice of the claimed
`inventions.
`F. PRACTICING PRODUCTS
`Pursuant to Patent Local Rule 3-1(g), AGIS Software contends that licensee AGIS, Inc.’s
`LifeRing products are covered by at least one of claim 7 of the ’728 Patent; claims 9, 12-16 of the
`’724 Patent; claims 2, 10-13 of the ’970 Patent; claims 1-31 of the ’100 Patent; and claims 1-26 of
`the ’838 Patent. AGIS is not aware of any other licensee that practice any claim of the Patents-in-
`Suit. AGIS Software’s investigation is ongoing and AGIS Software reserves the right to
`supplement, amend, or amend these contentions in view of facts learned during discovery, the
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`2 AGIS continues to rely on interim priority dates identified in each of the Patents-in-Suit to establish
`priority prior to the actual filing date of the Patents-in-Suit.
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`release of new products, or the modification of current products, and/or the Court’s claim
`construction.
`Pursuant to Patent Local Rule 3-1(h), while there is no operative complaint and AGIS has
`not filed an answer, the first date of infringement appears to be at or around May 2012 and AGIS
`reserves the right to seek past damages up to six years before the filing of any counterclaim in this
`action. AGIS Software’s investigation is ongoing and AGIS Software reserves the right to
`supplement, amend, or amend these contentions in view of facts learned during discovery and after
`the filing of the amended complaint.
`Pursuant to Patent Local Rule 3-1(i), while there is no operative complaint and AGIS has
`not filed an answer, Lyft’s infringement of the Asserted Patents has been willful since January 29,
`2021, when it received a complaint in AGIS Software Development LLC v. Lyft Inc. 2:21-cv-
`00024 (E.D. Tex., Jan. 29, 2021), and continues to be willful. AGIS Software’s investigation is
`ongoing and AGIS Software reserves the right to supplement, amend, or amend these contentions
`in view of facts learned during discovery and after the filing of the complaint.
`G. PRODUCTION OF DOCUMENTS PURSUANT TO PATENT LOCAL RULE
`3-2
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`AGIS Software is producing or making available for inspection documents that are in AGIS
`Software’s possession, custody, or control as set forth in Patent Local Rule 3-2. An AGIS Software
`3-2 Production Index identifying these documents is attached hereto.
`This preliminary identification of documents is for convenience and is not an admission that
`each document falls within any exemplary categories in the Patent Local Rules, or that any
`document qualifies as prior art. AGIS Software is continuing with its investigation, particularly
`with respect to ESI. Thus, AGIS Software reserves its right to add to, delete from, or otherwise
`modify its disclosures in this section as its investigation proceeds.
`Production of these documents is governed by Patent Local Rule 2-2, and, with the exception
`of documents produced pursuant to P.R. 3.2(c) and public documents listed in the infringement
`charts, are considered “Highly Confidential –Attorneys Eyes Only” and disclosure of the
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`DEFENDANT AGIS SOFTWARE’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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`confidential document or information shall be limited to each party’s outside attorney(s) of record
`and the employees of such outside attorney(s).
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`DATED: February 25, 2022
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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
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`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
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`Attorneys for Defendant
`AGIS Software Development LLC
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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 February 25, 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: February 25, 2022
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`/s/ Benjamin T. Wang
` Benjamin T. Wang
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`DEFENDANT AGIS SOFTWARE’S DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS
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