Case 5:21-cv-04653-BLF Document 94 Filed 04/12/22 Page 1 of 10
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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
`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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`Case No. 5:21-cv-04653-BLF
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`Plaintiff,
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`v.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`DEFENDANT AGIS SOFTWARE
`DEVELOPMENT LLC’S RESPONSE IN
`OPPOSITION TO LYFT, INC.’S
`MOTION FOR LEAVE TO AMEND
`COMPLAINT (Dkt. 78)
`
`Defendant.
`
`Hon. Judge Beth Labson Freeman
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`DEFENDANT AGIS SOFTWARE DEVELOPMENT LLC’S RESP. IN OPP TO LYFT, INC. MOTION FOR LEAVE
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`Case 5:21-cv-04653-BLF Document 94 Filed 04/12/22 Page 2 of 10
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`I.
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`INTRODUCTION
`Defendant AGIS Software Development LLC’s (“AGIS Software”) filed a Motion to
`Dismiss for Lack of Personal Jurisdiction which was granted by this Court on January 28, 2022.
`Dkt. 61. While the Court granted Plaintiff Lyft, Inc.’s (“Lyft”) leave to amend and conduct
`jurisdictional discovery, Lyft now seeks to add three additional parties to its complaint: Advanced
`Ground Information Systems, Inc. (“AGIS, Inc.”), AGIS Holdings, Inc. (“AGIS Holdings”), and
`Malcolm K. Beyer, Jr. While Lyft alleges these additional parties are “alter ego parties” of AGIS
`Software, the jurisdictional discovery conducted by Lyft are to the contrary. Rather, the discovery
`produced by AGIS Software in response to Lyft’s jurisdictional discovery requests revealed that
`AGIS Software maintains corporate formalities, and thus, there is no intermingling between the
`entities, and naming entities that do not own the Asserted Patents is both unwarranted and has been
`done in the past to no avail. In addition, Lyft has no basis to add Mr. Beyer as a party to this action
`where he is merely the inventor and CEO of AGIS Software, and where he has assigned all his rights
`to the Asserted Patent. Accordingly, AGIS respectfully requests that Lyft’s Motion be denied.
`II.
`STATEMENT OF FACTS
`On June 16, 2021, Lyft filed a Complaint against AGIS Software seeking declaratory
`judgment of non-infringement of United States Patent Nos. 7,031,728; 7,630,724; 8,213,970;
`10,299,100; and 10,341,838 (the “Asserted Patents”). Dkt. 1. AGIS Software moved to dismiss
`Lyft’s Complaint for lack of personal jurisdiction over AGIS Software. Dkt. 32. The Court
`conducted a hearing on January 27, 2022 (Dkt. 57) and granted AGIS Software’s Motion to Dismiss.
`See Dkt. 61. However, the Court granted Lyft leave to amend its complaint and conduct
`jurisdictional discovery. See Dkt. 61 at 10. The Court expressly limited jurisdictional discovery to
`five interrogatories and one four-hour Rule 30(b)(6) deposition. See Dkt. 61 at 10. While the Court
`granted leave to pursue jurisdictional discovery “regarding the relationship between AGIS Software,
`AGIS, Inc., AGIS Holdings and their contacts with California,” the Court’s Order did not authorize
`any third-party discovery and expressly stated that no new claims or parties may be added to Lyft’s
`complaint without “leave of the Court or a stipulation with AGIS Software.” Dkt. 61 at 9-10.
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`Yet in addition to the allotted Rule 30(b)(6) Notice of Deposition and five jurisdictional
`interrogatories, on February 4, 2022, Lyft served deposition and document subpoenas to third-party
`AGIS, Inc. and AGIS Holdings. Lyft’s request for third-party discovery was not authorized by the
`Court and should not be permitted.
`III. LEGAL STANDARD
`Rule 15 of the Federal Rules of Civil Procedure mandates that leave to amend “be freely
`given when justice so requires.” Fed. R. Civ. P. 15(a). In considering whether to grant a motion to
`amend under Rule 15(a), the Supreme Court has stated: “In the absence of any apparent or declared
`reason—such as undue delay, bad faith or dilatory motive on the part of the movant, repeated failure
`to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by
`virtue of allowance of the amendment, futility of amendment, etc.—the leave sought should, as the
`rules require, be ‘freely given.’” Foman v. Davis, 371 U.S. 178, 182 (1962); Smith v. Pac. Prop.
`Dev. Co., 358 F.3d 1097, 1101 (9th Cir. 2004).
`“A proposed amendment is ‘futile if no set of facts can be proved under the amendment to
`the pleadings that would constitute a valid and sufficient claim or defense.’” L.A. Gem & Jewelry
`Design, Inc. v. NJS.COM, LLC, 2018 WL 6131185, at *2 (C.D. Cal. Mar. 5, 2018) (citing Miller v.
`Rykoff-Sexton, Inc., 845 F.2d 209, 214 (9th Cir. 1988)).
`IV.
`ARGUMENT
`Lyft’s motion for leave to amend its complaint (“Motion”) should be denied. First, Lyft
`alleges that it should be permitted to add AGIS, Inc., AGIS Holdings, Inc., and Malcolm K. Beyer,
`Jr. as parties to the present litigation, but AGIS, Inc., AGIS Holdings, Inc., and Malcolm K. Beyer,
`Jr. are (1) not the owners or assignees of the Asserted Patents, and (2) irrelevant to Lyft’s claims for
`non-infringement of the Asserted Patents. While Lyft alleges that addition of these parties is
`necessary “in view of AGIS Software and its affiliates’ refusal to provide the jurisdictional
`discovery,” this is incorrect. The jurisdictional discovery permitted by this Court in dismissing
`Lyft’s original complaint was limited to a four-hour Rule 30(b)(6) deposition of AGIS Software and
`five interrogatories directed to AGIS Software. Dkt. 60 at 10. The Court’s Order did not permit
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`Lyft to serve subpoenas on AGIS, Inc. and AGIS Holdings. See id. Nonetheless, Lyft’s amendment
`would be futile where the discovery produced by AGIS Software do not support Lyft’s alleged alter
`ego theory.
`Second, because the discovery produced by AGIS Software does not support Lyft’s “alter
`ego” theory, Lyft now seeks to add AGIS, Inc., AGIS Holdings, and Malcolm K. Beyer, Jr. as parties
`to the present litigation under the pretense of a breach of contract claim. However, by Lyft’s own
`admission, the breach of contract theory alleged in the parallel Eastern District of Texas action
`(“EDTX Action”) was not included in Lyft’s original complaint for declaratory judgment. See Dkt.
`1. Despite knowledge that it had this “breach of contract” claim, Lyft at no point sought to amend
`its complaint, despite the allegation that the claim was brought against AGIS Software in the EDTX
`Action since at least November 2021, and thus, Lyft was dilatory in seeking its amendment. See
`AGIS Software Dev. LLC v. T-Mobile USA, Inc., No. 2:21-cv-00072-JRG, Dkt. 190 (E.D. Tex. Nov.
`3, 2021) (Lead Case). Accordingly, this Court should deny Lyft’s Motion as such amendments
`would be futile and unduly prejudicial.
`A. Lyft Fails to Establish that Addition of AGIS, Inc., AGIS Holdings, and Malcolm K.
`Beyer, Jr. is Warranted
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`The jurisdictional discovery sought by Lyft and produced by AGIS Software reveals that
`Lyft’s “alter ego” theory fails. By Lyft’s own admission, the subpoenas served by Lyft on AGIS,
`Inc. and AGIS Holdings were not within the narrow scope of jurisdictional discovery permitted by
`this Court. Nonetheless, Lyft persisted in seeking information from these entities and now, Lyft
`appears to argue that it should be permitted to add these parties to the complaint in order to seek
`discovery from them. Dkt. 78 at 4. AGIS Software objects to Lyft’s fishing expedition as improper.
`Moreover, AGIS Software has produced the relevant discovery for jurisdictional discovery.
`Moreover, Lyft mischaracterizes the evidence produced by AGIS Software. Lyft alleges
`that AGIS Software is “undercapitalized” and “routinely moves money out of its account and into
`the accounts of its affiliate.” Dkt. 79-3 at 5. While Lyft alleges such transfers indicate “AGIS
`Software may try to avoid liability . . . by moving its money to an account owned by an affiliate”
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`(Dkt. 78 at 5), Lyft merely points to the complete listing of transfers to and from AGIS Software’s
`bank account.1 Such unfounded speculations are contradicted by the deposition testimony of AGIS
`Software’s Rule 30(b)(6) representative. For example, AGIS Software’s corporate designee
`testified that AGIS Software was initially “
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` Ex. 1, Meriam
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`Dep. Tr. at 97:4-23; 98:18-20; see also id. at 100:5-8
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`AGIS Software has disclosed that
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`at 6-7. Further, AGIS Software has stated that
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` See Dkt. 78-8
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` Id. at 22. Lastly, AGIS Software identified
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` Id. at 23
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`1 Lyft’s allegations that AGIS Software is engaging in a “liability-avoidance issue” is unsupported
`and irrelevant to its pursuit of fees in the EDTX Action.
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`). These
`disclosures are supported by the bank transactions produced by AGIS Software at the request of
`Lyft. Dkt. 78-8 at 10-17.
`In addition, AGIS Software has stated that (1) “AGIS Software, AGIS Holdings, and AGIS,
`Inc. are each separate and distinct business entities,” (2) “AGIS Software maintains corporate
`formalities separate and distinct from AGIS Holdings and AGIS, Inc.,” (3)
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` (4) “AGIS Software keeps separate and distinct documents and records
`from AGIS Holdings, Inc. and AGIS, Inc.,” (5) “AGIS Software’s documents and records are
`located and ordinarily kept in Marshall, Texas,”
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`Dkt. 78-8 at 6-7. AGIS Software has also submitted that it is unaware of any communications with
`AGIS, Inc. and AGIS Holdings regarding any licensees and customers or any “interactions.” Id. at
`7. Further, there have been no communications from AGIS Software to Defendants and any
`mediations were conducted in Dallas, Texas. Id. at 9. This was confirmed by Mr. Meriam who
`testified that
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` See Ex. 1, Meriam Dep. Tr. at 63:6-8. Mr. Meriam further testified that he did not
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` Id. at 65:6-12.
`Accordingly, the discovery produced by AGIS Software disproves Lyft, Inc.’s “alter ego”
`theory and Lyft’s request to add AGIS, Inc., AGIS Holdings, and Malcolm K. Beyer, Jr. is nothing
`more than an effort to manufacture confusion and engage in a fishing expedition. See L.A. Gem &
`Jewelry Design, 2018 WL 6131185, at *2 (“The Proposed FAC’s alter ego allegations are likely
`conclusory boilerplate, alleging only that each new proposed defendant is a ‘principal, guiding spirit,
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`and/or central figure in Defendant NJS, and has control over the day to day operations thereof, and
`directly benefits from the tortious conduct alleged herein. The Proposed FAC is devoice of any facts
`that could establish a plausible basis for that conclusion.”). AGIS Software respectfully requests
`that Lyft’s Motion be denied.
`B.
`Lyft Was Dilatory in Seeking to Add its Breach of Contract Claim
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`Lyft alleges that it be permitted leave to amend its complaint to allege breach of contract.
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`As a preliminary matter, AGIS Software has moved for leave to amend its infringement contentions
`to address this issue. AGIS Software has amended its infringement contentions to clarify that it
`does not and will not assert infringement against any iOS applications devices or Apple products in
`its amended infringement contentions, which Lyft has opposed. See Dkt. 84; see Dkt. 84-8 at 2 n.1
`(“These infringement contentions are provided on a provisional basis to comply with the deadline
`for P.L.R. 3-1. However, at this time, there is no operative complaint asserting non-infringement of
`any patent claim in this action, and these contentions are not responsive to any claim or cause of
`action. AGIS Software reserves the right to update these contentions upon receipt of an amended
`complaint. These March 18, 2022 amended contentions do not add or modify any theories of
`infringement and are provided solely for the purpose of making clear that AGIS Software does not
`allege infringement of any Lyft iOS-based applications and that AGIS Software does not rely on
`any Apple products.”). If the Court grants AGIS Software’s motion for leave to amend its
`infringement contentions at this early stage, Lyft’s Motion regarding addition of a breach of contract
`claim is moot. Fully understanding that AGIS’s request to amend its contentions would obviate its
`request to add AGIS, Inc., AGIS Holdings, and Malcolm K. Beyer, Jr., Lyft has unreasonably
`withheld consent and opposed the motion without reason.
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`In addition, Lyft has remained dilatory in its attempt to amend its complaint to add its breach
`of contract claim. As conceded by Lyft, Lyft counterclaimed for breach of contract in the EDTX
`Action on November 3, 2021. At no point did Lyft seek to amend its complaint, despite the
`allegation that the claim was brought against AGIS Software in the EDTX Action since at least
`November 2021, and thus, Lyft was dilatory in seeking its amendment. See AGIS Software Dev.
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`Case 5:21-cv-04653-BLF Document 94 Filed 04/12/22 Page 8 of 10
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`LLC v. T-Mobile USA, Inc., No. 2:21-cv-00072-JRG, Dkt. 190 (E.D. Tex. Nov. 3, 2021) (Lead
`Case). Lyft offers no explanation for its failure to add its breach of contract claim earlier in the
`present action and waited nearly six months to amend its complaint. While Lyft alleges that it is
`because the EDTX Action has “recently” been dismissed, to the contrary, the EDTX Court closed
`the EDTX Action against Lyft on January 19, 2022. See AGIS Software Dev. LLC v. Lyft, Inc., No.
`2:21-cv-00072-JRG-RSP, Dkt. 12 (E.D. Tex. Jan. 19, 2022). Further, Lyft provides no explanation
`for why it was unable to amend its complaint in the present litigation to add its breach of contract
`claim here until the close of the EDTX Action. Additionally, Lyft’s delay in seeking to amend its
`complaint to add a breach of contract claim weighs against granting leave to amend. Accordingly,
`Lyft’s motion for leave to amend its complaint to add a breach of contract claim should be denied.
`V. CONCLUSION
`For the foregoing reasons, Defendant AGIS Software respectfully requests that Lyft’s
`Motion for Leave to Amend Complaint be denied in its entirety.
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`Case 5:21-cv-04653-BLF Document 94 Filed 04/12/22 Page 9 of 10
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`DATED: April 12, 2022
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`Respectfully submitted,
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`RUSS AUGUST & KABAT
`By: /s/ Benjamin T. Wang
`
`
` 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
`
`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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`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 12, 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 12, 2022
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`/s/ Benjamin T. Wang
` Benjamin T. Wang
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