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`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 1 of 7
`
`
`
`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)
`bethany.salpietra@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: 214.953.6500
`Facsimile: 214.953.6503
`
`Attorneys for Plaintiff Lyft, Inc.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`Case No. 5:21-cv-04653-BLF
`
`
`LYFT, INC.
`
`PLAINTIFF LYFT, INC.’S MOTION TO
`COMPEL DISCOVERY AND
`COMPLIANCE WITH LOCAL PATENT
`RULES
`
`
`Judge: Hon. Beth Labson Freeman
`Trial Date: October 16, 2023
`Courtroom: 3, Fifth Floor
`
`Plaintiff,
`
`v.
`AGIS SOFTWARE DEVELOPMENT LLC,
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`
` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 2 of 7
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`MEMORANDUM OF POINTS AND AUTHORITIES
`AGIS Software Development LLC’s (“AGIS Software”) Patent L.R. 3-2 deadline passed on
`February 25, 2022 without the production of certain required categories of documents, including
`patent licenses, conception and reduction to practice materials, and documents evidencing third-
`party disclosures of the alleged invention. AGIS Software has provided no reason for withholding
`these materials and continues to refuse to produce them. Likewise, AGIS Software has failed to
`provide full and accurate responses to Lyft, Inc.’s (“Lyft”) discovery served pursuant to this Court’s
`Order (Dkt. 61), which expressly permitted discovery regarding “AGIS Software’s patent
`enforcement communications with California companies” after finding that Lyft had established “a
`‘colorable’ basis for personal jurisdiction” under Trimble v. PerDiemCo LLC, 997 F.3d 1147 (9th
`Cir. 2021)). And, despite the Court’s further explicit grant of discovery into “the relationship
`between AGIS Software, AGIS, Inc., and AGIS Holdings and their contacts with California,” the
`AGIS affiliates have refused to provide any information responsive to discovery about AGIS
`Holdings or AGIS, Inc. because they were not named in the original complaint and because Lyft
`had not yet filed an amended complaint, even though this is precisely why the Court ordered
`discovery. Dkt. 61 at 9-10; see also Exs. 11-14. Lyft therefore seeks court intervention to compel
`AGIS Software to comply with its obligations set forth under the Patent Local Rules and Dkt. 61.
` As a result of AGIS Software’s failure to fulfill its obligations under the Patent Local Rules
`and the Court’s order, Lyft has been forced to unnecessarily repeat discovery previously taken in
`the EDTX Action1 and file this motion to compel the production of relevant information that is
`readily accessible to AGIS Software, much of which was likely produced in the EDTX Action, and
`that AGIS Software is under independent obligation to produce in this case. AGIS Software’s
`refusal to comply with its discovery obligations and the requirements of the Patent L.R. 3-2
`prejudices Lyft’s ability to prepare its amended complaint and prepare defenses, and jeopardizes the
`current case schedule, which was set with deadlines shorter than those provided under the Patent
`Local Rules based on AGIS Software’s assurances of a smooth discovery process that was “virtually
`
`1 AGIS Software Development LLC v. Lyft, Inc., 2:21-cv-00024-JRG (E.D. Tex.) (later consolidated
`with 2:21-cv-00072-JRG (E.D. Tex.)).
` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`Case No. 5:21-cv-04653-BLF
`
`1
`
`

`

`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 3 of 7
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`complete” due to the advanced stages of the EDTX Action. CMC Hearing Tr. at 49:19-50:2. AGIS
`Software’s withholding of this discovery calls into question AGIS Software’s assurance that the
`parties would be able to work through discovery disputes “very quickly.” Id. at 35:4-5.
`A. AGIS Software’s Deficient Patent L.R. 3-2 Production
`Patent L.R. 3-2 requires the production of numerous categories of documents, including
`“[a]ll agreements, including licenses, transferring an interest in any patent-in-suit” (Patent L.R. 3-
`2(f)); documents “sufficient to evidence each discussion with, disclosure to, or other manner of
`providing to a third party, or sale of or offer to sell, or any public use of, the claimed invention prior
`to the date of application for the patent in suit” (Patent L.R. 3-2(a)); and “documents evidencing the
`conception, reduction to practice, design, and development of each claimed invention” (Patent L.R.
`3-2(b)). AGIS Software has not produced any documents for at least these categories.
`AGIS Software’s 30(b)(6) witness and public statements by AGIS Software or its affiliates
`confirm agreements of the kind contemplated by Patent L.R. 3-2(f) exist. See, e.g., Ex. 18 (March
`22, 2022 Deposition Tr. of Thomas Meriam) at 44:14-45:4, 50:23-52:12 (
`
`); 2:21-cv-00024-JRG, Dkt. 1 (“AGIS Software licenses its patent portfolio,
`including the ’970, ’724, ’728, ’838, and ’100 Patents, to AGIS, Inc.”); Ex. 2 (“LifeRing
`applications, solutions, and software products are covered by patents licensed from AGIS Software
`Development LLC.”); Ex. 1. However, AGIS Software failed to produce any license agreements.
`AGIS Software also possesses and has previously relied on documentation relevant to Patent
`L.R. 3-2(b) to establish alleged priority dates in public proceedings. See, e.g., Ex. 3 at 5-150
`(explaining AGIS Software’s conception and reduction to practice evidence for a related patent,
`which specifically identifies features recited in claims of the patents-in-suit). But no such
`documentation was provided in AGIS Software’s Patent Local Rule 3-2 production. Likewise,
`AGIS Software also possesses—and did not produce—documentation evidencing disclosures of the
`claimed inventions that pre-date the filing date of applications of the patents-in-suit (Patent L.R. 3-
`2(a)). Malcolm K. Beyer, Jr. AGIS Software’s CEO and inventor of the patents-in-suit, submitted
`a declaration to the U.S. Patent and Trademark Office (“USPTO”) identifying, describing, and
`providing various third-party disclosures of the practicing LifeRing products, which both AGIS,
` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`Case No. 5:21-cv-04653-BLF
`
`2
`
`

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`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 4 of 7
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`Inc. and AGIS Software claim as their own. See Ex. 3; Ex. 4 at 4; Exs. 5-7. Despite this previous
`disclosure, AGIS Software produced no such documentation in its Patent L.R. 3-2 production.
`Patent L.R. 3-2(a)–(c) are coextensive with the entirety of the Eastern District of Texas
`(“EDTX”) Patent Local Rule 3-2. See Exs. 8 & 9. Patent L.R. 3-2 includes an additional seven
`categories of documents, Patent L.R. 3-2(d)–(j), beyond those required in EDTX. See Ex. 9. Despite
`the fact that Patent L.R. 3-2 require the production of substantially more documents, AGIS
`Software’s 3-2 production in this case contained about 5,000 pages less than AGIS Software’s 3-2
`production in the EDTX Action. AGIS Software provided no explanation for why nearly 5,000
`documents relevant in EDTX would not also be relevant in NDCA, and AGIS Software’s lack of
`response and omission of at least the specifically identified documents suggests AGIS Software is
`intentionally withholding these documents in violation of the duties it owes this Court and Lyft.
`B. AGIS Software’s Deficient Response to Lyft’s Interrogatory No. 1
`Pursuant to the Court’s order granting discovery “regarding the relationship between AGIS
`Software, AGIS, Inc., and AGIS Holdings and their contacts with California,” Lyft served
`Interrogatory No. 1. See Ex. 11 at 6. In response to this interrogatory, AGIS Software claims that
`its only interactions with California are its
`
`. See Ex. 10 at 6-9. Based on publicly available information and AGIS
`Software’s 30(b)(6) witness, however, this is not accurate. AGIS Software has entered into license
`agreements
` Ex.
`18 at 44:14-45:4, 50:23-52:12. It is not possible that AGIS Software executed even one of these
`licenses without communications to and from the licensee. It has become clear through meet and
`confers and testimony from AGIS Software’s 30(b)(6) witness that AGIS Software is improperly
`withholding non-privileged communications made by AGIS Software’s agents, including attorneys
`hired to enforce and negotiate its license agreements. AGIS Software’s position is untenable, as a
`company only acts through its employees, officers, and other agents, including its attorneys.
`
`
`
`
`
` Ex. 18 at 212:23-213:3.
`
` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`3
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 5 of 7
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`, and AGIS Software continues to refuse to
`provide discovery into these communications. See generally Ex. 18 at 55:6-69:21.
`Interrogatory No. 1 seeks information proportional to the needs of the case that is directly
`relevant to Lyft’s claim that this Court has personal jurisdiction over AGIS Software. Indeed, the
`Federal Circuit confirmed in Trimble Inc. v. PerDiemCo LLC that nonexclusive license agreements
`and communications sent into a jurisdiction are relevant to the jurisdictional inquiry in a patent
`infringement case. 997 F.3d 1147, 1156 (Fed. Cir. 2021). AGIS Software is best situated to provide
`the information sought. And, if AGIS Software lacks minimum contacts with California as it asserts,
`the burden and expense associated with providing a full and accurate response to this interrogatory
`would be low. The benefit of Lyft’s proposed discovery therefore outweighs any burden or expense
`to AGIS Software. In view of the foregoing, Interrogatory No. 1 seeks information that is both
`relevant and proportional to the needs of the case, and Lyft respectfully requests this Court compel
`AGIS Software to provide a full and accurate response to this interrogatory and additional time to
`depose AGIS Software on this topic. In particular, Lyft requests an identification of all
`communications or other interactions between AGIS Software (including its employees, officers,
`and/or agents, such as attorneys) and any company or individual located in California (including a
`company’s employees, officers, and/or agents), specifically communications involved in negotiating
`and executing licenses to AGIS Software’s patents.
`C. AGIS Software’s Failure to Provide Discovery from Its Affiliates
`In addition to communications by AGIS Software, Lyft’s Interrogatory No. 1 seeks
`communications and interactions by AGIS Software’s affiliates and alter egos AGIS, Inc. and AGIS
`Holdings. The Court specifically recognized Lyft’s alter ego theory and permitted discovery into
`“the relationship between [the AGIS affiliates] and their contacts with California.” Dkt. 61 at 9.
`Instead of identifying the communications and other interactions for all three affiliates, however,
`
`
` Ex. 10 at 2.
`
` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`4
`
`Case No. 5:21-cv-04653-BLF
`
`

`

`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 6 of 7
`
`id. at 6–8.
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`Despite having the same CEO and officers and being represented by the same attorneys,
`
` See, e.g.,
`
`
`
` See id. at 8–9.
`, AGIS Software’s gamesmanship is
`readily apparent. That Mr. Beyer, Jr. is the CEO of both AGIS Software and AGIS, Inc. and has
`sworn that he has “knowledge of all facets of the businesses” of both AGIS Software and AGIS,
`Inc. further calls into question the motivation behind AGIS Software’s refusal to respond to this
`discovery. Ex. 3, ¶ 6; see also Ex. 17, ¶ 5.
`In anticipation of AGIS Software’s tactics, Lyft served parallel subpoenas on both AGIS
`Holdings and AGIS, Inc. seeking the same information sought in the jurisdictional discovery served
`on AGIS Software. Compare Exs. 11 & 12 with Exs. 13 & 14. The affiliates’ position that no
`documents or witnesses would be produced pursuant to the subpoena because the requests allegedly
`“exceed the scope of jurisdictional discovery ordered by the Court” (see generally, Exs. 15 & 16) is
`contrary to this Court’s order specifically granting Lyft leave to pursue such discovery. Dkt. 61 at
`9. The requests enumerated in Lyft’s subpoenas are relevant to the underlying personal jurisdiction
`inquiry under Lyft’s alter ego theory and do not exceed the discovery limits provided by the Court,
`as they are coextensive with and mirror the discovery directed at AGIS Software. As Lyft’s alter
`ego theory concerns information about AGIS Holdings and AGIS, Inc., discovery from these entities
`is warranted if AGIS Software does not provide such discovery. The discovery is proportional to
`the needs of this case as the requests are narrowly tailored to address the alter ego factors. The
`AGIS affiliates alone have the information and the burden and expense of responding to the
`discovery will not outweigh its likely benefit. And, if AGIS Software and its affiliates truly lacked
`the minimum contacts, there would be little responsive information.
`In view of the foregoing, Lyft also respectfully requests this Court to compel that the sought
`discovery be provided from either AGIS Software or AGIS, Inc. and AGIS, Holdings.
` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`Case No. 5:21-cv-04653-BLF
`
`5
`
`

`

`Case 5:21-cv-04653-BLF Document 88 Filed 04/06/22 Page 7 of 7
`
`Dated: April 6, 2022
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`
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`
`
`
`
`By:
`
` Respectfully submitted,
`
`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
`
`Jeremy J. Taylor (SBN 249075)
`Arya Moshiri (SBN 324231)
`jeremy.taylor@bakerbotts.com
`arya.moshiri@bakerbotts.com
`BAKER BOTTS L.L.P.
`101 California St., Ste. 3600
`San Francisco, CA 94111
`Telephone: 415.291.6200
`Facsimile: 415.291.6300
`
`Bethany R. Salpietra (pro hac vice)
`bethany.salpietra@bakerbotts.com
`BAKER BOTTS L.L.P.
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: 214.953.6500
`Facsimile: 214.953.6503
`
`Attorneys for Plaintiff Lyft, Inc.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record who have consented to electronic service are
`being served with a copy of this document via electronic mail on April 6, 2022.
`
`
`
`
`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
`
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` PLAINTIFF LYFT, INC.’S MOTION TO COMPEL
`DISCOVERY AND COMPLIANCE WITH LOCAL
`PATENT RULES
`
`6
`
`Case No. 5:21-cv-04653-BLF
`
`