Case 5:21-cv-03677-BLF Document 33 Filed 09/13/21 Page 1 of 19
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`Robert W. Dickerson, Jr. (SBN 89367)
`E-mail: rdickerson@bwslaw.com
`BURKE, WILLIAMS & SORENSEN, LLP
`444 South Flower Street, Suite 2400
`Los Angeles, CA 90071-2953
`Tel: 213.236.0600
`Fax: 213.236.2700
`Patricia L. Peden (SBN 206440)
`E-mail: ppeden@bwslaw.com
`Burke, Williams & Sorensen, LLP
`1901 Harrison Street, Suite 900
`Oakland, California 94612-3501
`Tel: 510-273-8780
`Fax: 510-839-9104
`Lenny Huang (SBN 264386)
`E-mail: lhuang@bwslaw.com
`BURKE, WILLIAMS & SORENSEN, LLP
`1 California Street, Suite 3050
`San Francisco, California 94111-5432
`Tel: 408-606-6300
`Fax: 408-6064333
`Attorneys for Plaintiffs
`SMITH MICRO SOFTWARE, and SMITH
`MICRO SOFTWARE, LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`SMITH MICRO SOFTWARE, and
`SMITH MICRO SOFTWARE, LLC,
`Plaintiffs,
`
`v.
`AGIS SOFTWARE
`DEVELOPMENT LLC, and DOES
`1 to 10,
`
`Defendants.
`
`Case No. 5:21-cv-03677-BLF
`[Related to Case Nos. 5:21-cv-03076-
`BLF and 21-cv-04653- BLF]
`PLAINTIFFS’OPPOSITION TO
`DEFENDANTS MOTION TO
`DISMISS COMPLAINT FOR
`DECLARATORY JUDGMENT
`Date:
`February 27, 2022
`Time:
`9:00 a.m.
`Ctrm.: 3
`Judge Beth Labson Freeman
`
`Plaintiffs Smith Micro Software, Inc. (“SMSI”) and Smith Micro Software,
`LLC (“SMSL”) (jointly “Smith Micro” or “Plaintiffs”) oppose Defendant AGIS
`Software Development LLC’s Motion to Dismiss (Dkt. 28; “the Motion”).
`5:21-CV-03677-BLF
`PLAINTIFFS’OPPOSITION TO
`DEFENDANTS’MOTION TO DISMISS
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`Case 5:21-cv-03677-BLF Document 33 Filed 09/13/21 Page 2 of 19
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`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`C.
`
`Page
`INTRODUCTION...........................................................................................1
`THE UNCONTESTED REVEVANT FACTS...............................................2
`A.
`Uncontested Factual Allegations Establish A Prima Facia
`Showing of a Parent-Subsidiary Relationship Sufficient to
`Establish Specific Personal Jurisdiction Over Defendant ....................4
`Uncontested Factual Allegations Establish “Minimum Contacts”
`With California .....................................................................................5
`Uncontested Factual Allegations Establish that California Is the
`Appropriate Venue, Not Texas .............................................................8
`THE FIRST-FILED RULE DOES NOT CONTROL ..................................10
`THE EXERCISE OF JURISDICTION OVER DEFENDANT IS
`REASONABLE AND COMPORTS WITH FAIR PLAY AND
`SUBSTANTIAL JUSTICE...........................................................................12
`STAYING OR TRANSFERRING THIS CASE WOULD NOT BE
`REASONABLE, AND WOULD UNDULY PREJUDICE
`PLAINTIFFS.................................................................................................15
`VI. CONCLUSION… … … … … … … … … … … … … … … … … … … … … … … ..15
`.
`
`III.
`IV.
`
`V.
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`CAPTION 5:21-CV-03677-TSH
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`Case 5:21-cv-03677-BLF Document 33 Filed 09/13/21 Page 3 of 19
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`Advanced Ground Information Sys., Inc. v. Life360, Inc.,
`9:14-cv-80651 (S.D. Fla.)......................................................................................4
`AFTG-TG, LLC v. Nuvoton Tech. Corp.,
`689 F.3d 1358 (Fed. Cir. 2012).............................................................................2
`Dainippon Screen Manufacturing Co, Ltd. v. CMFT, Inc.,
`142 F.3rd 1266, 1271 (Fed. Cir. 1998)..................................................................2
`Data Disc, Inc. v. Systems Tech. Assocs. Inc.,
`557 F.2d 1280 (9th Cir. 1977)...............................................................................3
`In re Google Inc.,
`588 F. App’x 988 (Fed. Cir. 2014)......................................................................11
`Life360, Inc. v. Advanced Ground Information Systems, Inc.,
`2015 WL 5612008 (N.D. Cal Sept 21, 2015)......................................................12
`Life360, Inc. v. Advanced Ground Sys., Inc.,
`2014 WL 5612008 (ND Cal Case No. 5:15-cv-00151-BLF)....................1, 4, 6, 7
`In re Nintendo of Am., Inc.,
`756 F.3d 1363 (Fed. Cir. 2014).....................................................................10, 11
`Spread Spectrum Screening LLC v. Eastman Kodak Co.,
`657 F.3d 1349 (Fed. Cir. 2011)...........................................................................10
`Trimble Inc. v. Perdienco LLC,
`997 F.3rd 1147 (Fed.Cir 2021)......................................................................12, 14
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`5:21-CV-03677-BLF
`PLAINTIFFS’OPPOSITION TO
`DEFENDANTS’MOTION TO DISMISS
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`I.
`
`INTRODUCTION
`This Court has previously addressed the issue of whether Defendant’s
`predecessor-in-interest as to the Patents-in-Suit, AGIS, Inc., is subject to specific
`jurisdiction in this state. Life360, Inc. v. Advanced Ground Sys., Inc., 2014 WL
`5612008 (ND Cal Case No. 5:15-cv-00151-BLF). The Motion does not dispute the
`holding in that case, or establish why it’s holding is not applicable here..
`Rather, Defendant’s Motion in essence asserts that even though this Court
`has already decided that specific jurisdiction exists as to Defendant’s predecessor-
`in-interest parent company based upon its many intentional and directed contacts
`with the state of California, the successor-in-interest subsidiary company and
`current holder of the Patents-in-Suit, AGIS Software, is completely isolated from
`that contact, and therefore specific jurisdiction does not extend to it.
`This argument has been already been addressed and rejected by the Federal
`Circuit, as follows:
`We also agree with Dainippon that the parent-subsidiary
`relationship between CFM and CFMT leads to the conclusion that
`the imposition of personal jurisdiction over CFMT is “reasonable
`and fair,” one of the due process factors cited in Akro. See also
`Genetic Implant, 123 F.3d at 1458, 43 USPQ2d at 1788. Stripped
`to its essentials, CFM contends that a parent company can
`incorporate a holding company in another state, transfer its patents
`to the holding company, arrange to have those patents licensed back
`to itself by virtue of its complete control over the holding company,
`and threaten its competitors with infringement without fear of being
`a declaratory judgment defendant, save perhaps in the state of
`incorporation of the holding company. This argument qualifies for
`one of our “chutzpah” awards. See Refac Int’l, Ltd. v. Lotus Dev.
`Corp., 81 F.3d 1576, 1584, 38 USPQ2d 1665, 1671 (Fed.Cir.1996);
`5:21-CV-03677-BLF
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`Checkpoint Sys., Inc. v. United States Int’l Trade Comm’n, 54 F.3d
`756, 763 n. 7, 35 USPQ2d 1042, 1048 n. 7 (Fed.Cir.1995) (noting
`that “chutzpah” describes “the behavior of a person who kills his
`parents and pleads for the court’s mercy on the ground of being an
`orphan”). While a patent holding subsidiary is a legitimate creature
`and may provide certain business advantages, it cannot fairly be
`used to insulate patent owners from defending declaratory judgment
`actions in those fora where its parent company operates under the
`patent and engages in activities sufficient to create personal
`jurisdiction and declaratory judgment jurisdiction. After
`considering all of the relevant factors, we conclude that the court
`erred in holding that it lacked personal jurisdiction over defendant
`CFMT.
`
`Dainippon Screen Manufacturing Co, Ltd. v. CMFT, Inc., 142 F.3rd 1266, 1271
`(Fed. Cir. 1998).
`The Court also confirmed that it was not necessary to “pierce the corporate
`veil” in order to reach this conclusion. [See Footnote 4: “Agreeing that the parent-
`subsidiary relationship in this case is legally proper, Dainippon does not seek here
`to pierce the corporate veil.”]. Therefore, the Motion’s assertion that the Complaint
`does not contain sufficient factual allegations to do so is irrelevant.1
`This Court’s prior ruling as to AGIS being subject to specific jurisdiction
`her applies equally to AGIS Software.
`II.
`THE UNCONTESTED REVEVANT FACTS
`Defendant correctly states, on page 4 (10 of 23) of the Motion, that “the court
`
`1 Equally irrelevant is that the situation in Dainippon Screen involved the parent
`corporation attempting to evade jurisdiction based upon the in-state contacts of the
`subsidiary, which is the converse of the situation here –a distinction without
`significance. The same principle applies.
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`must accept uncontested allegations as true” that are not “bare formulaic
`accusations;” and that the court “may not assume the truth of allegations … which
`are contested by affidavit.” 2 The corollary is also correct –that the court may (and
`should) assume the truth of relevant factual allegations which are either admitted or
`are not contested by affidavit.
`Here, Defendant has supported its Motion only with the 1½ page Declaration
`of Malcolm K. Beyer, Jr. (Dkt. 28-1) (“Breyer Decl.”). His declaration includes
`statements regarding only AGIS Software’s direct activities or lack thereof in
`California, and says nothing about the activities of its predecessors-in-interest that
`amounted to “minimum contacts” with California (as this Court has previously
`held).
`
`Therefore, his Declaration is much more significant for what it doesn’t state,
`than for what it does. Very significantly, his Declaration does not include any
`statements that deny the facts alleged in the Complaint regarding AGIS Software
`being the successor-in-interest to AGIS, and that he is the person in charge of all
`the AGIS companies. Nor does he contest any of the detailed factual allegations
`regarding his and AGIS Inc.’s contacts with California.3
`In sum on this point, neither the Motion nor the Breyer Declaration even
`attempts to rebut the key factual allegation that the only difference between AGIS,
`Inc. and AGIS Software is an entity and name change; otherwise it is the same
`operation controlled by the same person –Mr. Breyer. This fact alone is sufficient
`to establish the necessary link between the AGIS companies for purposes of
`personal jurisdiction.
`
`2 AFTG-TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1365 (Fed. Cir. 2012);
`Data Disc, Inc. v. Systems Tech. Assocs. Inc., 557 F.2d 1280, 1284 (9th Cir. 1977).
`3 Much of the Breyer Declaration (see, e.g., paragraphs 10 - 21) addresses facts that
`if were otherwise would establish general jurisdiction over the AGIS companies in
`California. Plaintiffs do not make that assertion. Therefore, those statements are
`not relevant to the issue of specific jurisdiction.
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`Important facts that Mr. Breyer admits in his Declaration, and relevant
`factual allegations in the Complaint which are not contested and thus are to be
`accepted as true, are:
`A.
`Uncontested Factual Allegations Establish A Prima Facia Showing
`of a Parent-Subsidiary Relationship Sufficient to Establish Specific
`Personal Jurisdiction Over Defendant
`Defendant AGIS Software Development LLC (“AGIS Software”) is
`
`wholly owned by AGIS Holdings, Inc. (“AGIS Holdings”). Breyer Decl. ¶ 6.
`AGIS Holdings is the successor to Advanced Ground Information
`
`Systems, Inc. (“AGIS”). Id. ¶ 2.
`Mr. Malcolm Breyer is the CEO of AGIS Software, and is an owner,
`
`member, managing member, officer and/or director of each of the AGIS
`Companies, including AGIS and AGIS Software; and Mr. Beyer has at all
`relevant times been actively involved in directing the business activities of each
`of the AGIS Companies. [Id. ¶ 2; Complaint ¶¶ 22 and 23].
`Mr. Breyer has engaged in activities acting as CEO concurrently for
`
`both companies: in 2014, Mr. Beyer, acting as the CEO of both AGIS Software
`and AGIS attended a U.S. Navy military exercise in San Diego where he
`demonstrated LifeRing on PCs and smartphones when asked to do so. (Id., 2014
`WL 5612008, at *3). And during this demonstration, Mr. Beyer (again wearing
`both CEO hats) also discussed AGIS’LifeRing product with companies
`including ADI Technology and Maven Consulting. [Complaint ¶ 24].
`AGIS Software holds itself out as the successor-in-interest with respect
`
`to ownership and enforcement of the Patents-in-Suit through acquisition from
`AGIS Holdings and AGIS. [Complaint ¶ 24].
`Only two months prior to the registration of AGIS Software, AGIS
`
`was litigating a patent infringement action in the Southern District of Florida
`against Life360, Inc., a company headquartered in San Francisco, California (see
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`Advanced Ground Information Sys., Inc. v. Life360, Inc., 9:14-cv-80651 (S.D.
`Fla.)). [Complaint ¶ 13].
`AGIS’s claims against Life360 resulted in a jury finding of no-
`
`infringement and, on December 1, 2015, an award of nearly $700,000 in
`attorneys’fees against AGIS for litigating “an exceptionally weak case.”
`[Complaint ¶ 13].
`AGIS and AGIS Holdings, in an attempt to remake AGIS and to
`
`distance AGIS from the adverse result in Life360 case and from the federal
`district court in Florida, created the Texas LLC, AGIS Software, and listed its
`only “office” as being in the Eastern District of Texas. [Complaint ¶ 14].
`AGIS Holdings then registered AGIS Software as an LLC in Texas on
`
`June 1, 2017, a mere twenty (20) days before filing patent infringement cases
`against Apple and ZTE in the Eastern District of Texas. [Complaint ¶ 12].
`B.
`Uncontested Factual Allegations Establish “Minimum Contacts”
`With California
`AGIS Software and/or AGIS have taken intentional and purposeful
`
`steps to enforce the Patents-in-Suit against residents of this judicial district,
`including by suing companies that Mr. Beyer and the AGIS Companies knew
`had their principal places of business or operations in this judicial district for
`infringement of the Patents-in-Suit. [Complaint ¶ 25]
`In 2017, AGIS Software sued Apple Inc. (“Apple”), a California
`
`corporation with its principal place of business at One Apple Park Way,
`Cupertino, California 95014, alleging infringement of patents including the ’055
`patent, ’251 patent, ’838 patent, and ’829 patent. [Complaint ¶ 26].
`In 2017, AGIS Software sued ZTE (USA) Inc. (among others) alleging
`
`infringement of patents, including four of the Patents-in-Suit here. ZTE (USA)
`Inc. has an office located at 1900 McCarthy Boulevard, Milpitas, California
`95035. [Complaint ¶ 28].
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`On January 29, 2021, AGIS Software sued WhatsApp LLC in the
`
`United States District Court for the Eastern District of Texas, accusing
`WhatsApp of infringing the Patents-In-Suit (Case No. 2:21-cv-00029, E.D.
`Tex.). WhatsApp LLC is a Delaware corporation with its principal place of
`business in Menlo Park, California. [Complaint ¶ 29].
`AGIS Software has entered into agreements relating to the Patents-in-
`
`Suit with Apple and ZTE Corporation, ZTE (USA) Inc). Apple is headquartered
`in California; and ZTE (USA) has an office in Milpitas, California. [Complaint
`¶ 31].
`AGIS Software has also sued other California companies for alleged
`
`patent infringement of the Patents-in-Suit, including Waze (its U.S. office is in
`Menlo Park, California), Uber (its headquarters are in San Francisco, California)
`and Lyft (also headquartered in San Francisco, California). [Complaint ¶ 32].
`AGIS has marketed and/or provided downloads of its LifeRing
`
`product, which AGIS Software contends is covered by one or more of the
`Patents-in-Suit, in California. [Complaint ¶ 34].
`AGIS has a website (https://www.agisinc.com/). The website is not
`
`passive and is not purely informational. Rather, the website is commercially
`active, is for a commercial purpose, and is accessible in the state of California to
`entities and individuals residing in this state. [Complaint ¶ 34].
`AGIS Software’s product (LifeRing software) is available on the AGIS
`
`website for downloading upon request, including by residents in the state of
`California. [Complaint ¶ 34].
`AGIS actively does business over the Internet via this website (among
`
`other ways), including to residents in the state of California. [Complaint ¶ 34].
`AGIS (and/or its alter egos) transact business and engage in the
`
`knowing and repeated transmission of computer files over the Internet, including
`into California. [Complaint ¶ 34].
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`The issue of whether the AGIS Companies are subject to specific
`
`personal jurisdiction in this judicial district has been previously addressed by the
`district court for the Northern District of California in the case Life360, Inc. v.
`Advanced Ground Sys., Inc., 2014 WL 5612008 (ND Cal Case No. 5:15-cv-
`00151-BLF) (“the Life360 case”). [Complaint ¶¶ 35 and 36].
`In the Life360 case, AGIS filed a Motion to Dismiss for lack of
`
`jurisdiction and lack of proper service of process (Life360 case, Dkt. 19).
`Life360 then filed a motion for leave to conduct jurisdictional discovery of
`AGIS (id., Dkt. 24), which was granted by the court (id., Dkt. 36). After that
`discovery, and all briefing and submission of evidence by the parties on the
`motion, the court denied AGIS’s motion to dismiss for lack of personal
`jurisdiction (id., Dkt. 52). [Complaint ¶¶ 35 and 36].
`The Court found that AGIS had marketed its LifeRing product into
`
`California, and held that “marketing LifeRing into California is an act expressly
`aimed at the forum state itself.” (Life360 case at *10). [Complaint ¶ 37].
`In 2014, Mr. Beyer, acting as the CEO of AGIS, attended a U.S. Navy
`
`military exercise in San Diego where he demonstrated LifeRing on PCs and
`smartphones when asked to do so. (Life360 case, 2014 WL 5612008, at *3).
`[Complaint ¶ 38].
`During this demonstration, Mr. Beyer also discussed LifeRing with
`
`companies including ADI Technology and Maven Consulting. [Complaint ¶38].
`AGIS marketed its LifeRing product to companies that resulted in
`
`downloads of LifeRing in California. [Life360 case at *4; Complaint ¶ 38].
`AGIS marketed LifeRing to at least CornerTurn LLC, Integrity
`
`Applications, and American Reliance, Inc., which AGIS has stated reside in
`California. [Id., Complaint ¶ 39].
`AGIS has marked its LifeRing product as being covered by the
`
`Patents-in-Suit. And AGIS Software has licensed the Patents-in-Suit to end
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`users residing in California who have downloaded the LifeRing software in this
`state from the AGIS Website. [Complaint ¶ 40].4
`AGIS also formed a “strategic partnership” with Green Hills Software,
`
`Inc., a California company and security software firm located in Santa Barbara,
`California. [See the Life360 case at *4; Complaint ¶ 41].
`AGIS Software either individually or as an alter ego of AGIS and as
`
`the current owner of the Patents-in-Suit which were involved in its predecessor-
`in-interest’s contacts with California, is subject to specific personal jurisdiction
`within this judicial district. [Complaint ¶ 42].
`C.
`Uncontested Factual Allegations Establish that California Is the
`Appropriate Venue, Not Texas
`AGIS Software Development LLC (“AGIS Software”) is a Texas
`
`limited liability company listing 100 W. Houston Street, Marshall, Texas 75670
`as its office address. [Complaint ¶ 9].
`The AGIS companies, including AGIS Software, have no other
`
`“office” in Texas; have no employees who reside or work in Texas; and do not
`conduct any meaningful business from the “office” in Marshall, Texas, other
`than bringing patent infringement lawsuits in the federal district court in
`Marshall, Texas, in which the Truelove Law Firm acts as local counsel for AGIS
`Software. [Complaint ¶¶ 10 and 11].
`
`4 What is particularly relevant here in terms of whether AGIS Software is properly
`burdened with the California-contacts of its predecessor-interest-interest is that, just
`as in the Dainippon Screen case, AGIS Software has merely taken a hand-off from
`AGIS in terms of filing patent infringement cases on the Patents-in-Suit. Even
`more compelling, their businesses and business models are the same. Their CEO is
`the same. This is not a situation in which a subsidiary or sister corporation has a
`different business and business model. Here, there is no difference other than the
`change in corporate entity and name. All times, Mr. Breyer wears the CEO hat for
`all of the AGIS companies. The creation of a successor entity to carry on the same
`activity is not sufficient to insulate the successor from the California contacts of the
`predecessor.
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`Case 5:21-cv-03677-BLF Document 33 Filed 09/13/21 Page 12 of 19
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`According to Google Maps, the only sign on the building at that
`
`address says “Truelove Law Firm” and a Google search for the Truelove Law
`Firm lists its address as 100 W. Houston Street, Marshall, Texas 75670.
`[Complaint ¶ 9].
`Plaintiff SMSI maintains its office in Aliso Viejo, which is the home
`
`office for the company’s CEO and other key members of the company’s
`leadership team, including SMSI’s Chief Technology Officer, who has been
`with the company since 1989, has held the position of Chief Technology Officer
`since 1999, and resides and works in California. [Complaint ¶ 2].
`Plaintiff SMSL (formerly known as Location Labs, LLC) is wholly
`
`owned by plaintiff SMSI. SMSI acquired Location Labs, LLC and related assets
`in April, 2021, and at that time changed its name to Smith Micro Software, LLC.
`As a result of that acquisition, plaintiffs SMSI and/or SMSL have in excess of
`fifty (50) employees who reside and work in Northern California. [Complaint
`¶ 3].
`In terms of the SMSI and SMSL documents and personnel who are
`
`most likely to have knowledge and information relevant to the technology at
`issue in this lawsuit, the majority currently resides and works in California, and
`many of those work and reside in Northern California. [Complaint ¶ 4].
`SMSI also acquired some of the technology at issue in this lawsuit
`
`from Circle Media Labs, Inc., located in Portland, Oregon. Documents and
`personnel having knowledge and information relevant to that technology are
`located in and around Portland, Oregon, and that trial in Northern California
`would be much more convenient for them than in Marshall, Texas. [Complaint
`¶ 5].
`Plaintiffs SMSI and/or SMSL have offices in Northern California in
`
`Emeryville, California (where Location Labs, LLC had its headquarters) and
`also in Petaluma, California. SMSI further maintains certain servers in Santa
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`Case 5:21-cv-03677-BLF Document 33 Filed 09/13/21 Page 13 of 19
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`Clara, California for the operation of its business. [Complaint ¶ 6].
`Plaintiffs SMSI and SMSL are both registered to do business in the
`
`state of California, and both conduct business in the state of California on a
`regular and continuous basis [Complaint ¶ 7].
`Mr. Breyer and his wife, who is corporate secretary for AGIS
`
`Software, live in Florida. [Breyer Decl. ¶ 4]. Venue is California is a convenient
`forum for all parties, and on balance is much more convenient than the Eastern
`District of Texas. [Complaint ¶ 46].5
`Given these many, important uncontested facts, and the holding of the
`Federal Circuit in Dainippon Screen, and the prior holding of this court in the
`Life360 case, specific personal jurisdiction over Defendant is well established.
`III. THE FIRST-FILED RULE DOES NOT CONTROL
`While courts generally favor first-filed actions, “[w]hen a patent owner files
`an infringement suit against a manufacturer’s customer and the manufacturer then
`files an action of noninfringement or patent invalidity, the suit by the manufacturer
`generally take[s] precedence.” In re Nintendo of Am., Inc., 756 F.3d 1363, 1365
`(Fed. Cir. 2014). This doctrine, called the customer-suit exception, “‘is based on
`the manufacturer’s presumed greater interest in defending its actions against
`charges of patent infringement; and to guard against possibility of abuse.’” Spread
`Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d 1349, 1357 (Fed. Cir.
`2011) (quoting Kahn v. General Motors Corp., 889 F.2d 1078, 1081 (Fed. Cir.
`1989)). The rule is designed “to avoid, if possible, imposing the burdens of trial on
`the customer, for it is the manufacturer who is generally the ‘true defendant’in the
`dispute,” and to assist in a “just, convenient, efficient, and less expensive
`determination.” Nintendo at 1365.
`In determining whether to apply the customer-suit rule, courts look to
`
`5 As Defendant has submitted no contrary evidence, this “factual allegation” is to be
`accepted as true. Therefore, this Opposition will not further address the issue.
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`whether the litigation against the manufacturer will “resolve the ‘major issues’
`concerning the claims against the customer.” Spread Spectrum Screening, 657 F.3d
`at 1358 (quoting Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990)).
`Here, this case will resolve all issues.
`In making this determination, the Court should not apply “a ‘mechanical
`solution’or ‘precise rule,”’but instead should take “a flexible approach, including
`staying proceedings if the other suit is so closely related that substantial savings of
`litigation resources can be expected.” In re Google Inc., 588 F. App’x 988, 991
`(Fed. Cir. 2014) (quoting Colo. River Water Cons. Dist. v. United States, 424 U.S.
`800, 817 (1976); Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 U.S. 180, 183
`(1952)).
`This is just such a case. Smith Micro is the manufacturer and T-Mobile is the
`customer in the EDTex case as Smith Micro provides the technology that is used in
`the Accused Products. Smith Micro is thus the “true defendant” against AGIS’s
`claims regarding the Accused Products in the EDTex Case. Nintendo at 1365.
`However, T-Mobile is not Plaintiffs’only customer as to the technology that is
`involved in the Accused Products in the EDTex case. Thus, the EDTex case will
`not resolve all issues or potential issues as between Plaintiffs (and their other
`customers) and Defendant. Even if the result in the EDTex case is that those
`specific Accused Products do not infringe any valid claim of the Patents-in-Suit, the
`cloud over Plaintiffs’technology would remain, and Plaintiffs and/or Plaintiffs’
`other customers who use Plaintiffs’technology might be subject to future litigation
`from Defendant. The market for Plaintiffs’technology could be harmed.
`That is why this Declaratory Judgment action was filed, as alleged in
`Paragraph 51 of the Complaint:
`AGIS Software’s actions have and will continue to negatively
`affect Smith Micro’s legal relations concerning its sales of the
`Accused Products in the United States. AGIS Software has taken
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`a position that puts Smith Micro in the position of either pursuing
`allegedly infringing behavior or abandoning that which Smith
`Micro claims a right to do, namely, continuing to offer and sell
`[the technology in] the Accused Products.
`This Declaratory Judgment action will resolve all issues, and provide the
`most efficient manner for doing so.
`IV. THE EXERCISE OF JURISDICTION OVER DEFENDANT IS
`REASONABLE AND COMPORTS WITH FAIR PLAY AND
`SUBSTANTIAL JUSTICE
`This Court has already found that specific jurisdiction over Defendant’s
`predecessor-in-interest AGIS exists:
`Plaintiff has made a prima showing of specific personal
`jurisdiction and Defendant has not met its burden of demonstrating
`that exercise of jurisdiction would not be reasonable. Accordingly,
`Defendant’s motion to dismiss for lack of personal jurisdiction is
`DENIED.
`Life360, Inc. v. Advanced Ground Information Systems, Inc., 2015 WL 5612008
`(N.D. Cal Sept 21, 2015) (at *6). Similarly, Defendant here has not met its burden.
`The Federal Circuit has recently reached a similar conclusion in a case which,
`like here, involved a Declaratory Judgment action in NDCal against a patent-
`owning Texas LLC. Trimble Inc. v. Perdienco LLC, 997 F.3rd 1147 (Fed.Cir. 2021)
`(holding that the NDCal court had personal jurisdiction over the Texas LLC).
`Similar to AGIS, the Texas LLC merely rented office space in Marshall,
`Texas, but had no other presence there, such as employees. The Trimble court first
`stated:
`
`The sole issue in this case is whether the district court erred in
`holding that there is not specific personal jurisdiction over
`PerDiemCo in the Northern District of California. “[W]e apply
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`Federal Circuit law because the jurisdictional issue is ‘intimately
`involved with the substance of the patent laws.’” Autogenomics,
`Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir.
`2009) (quoting Avocent Huntsville Corp. v. Aten Int’l Co., 552
`F.3d 1324, 1328 (Fed. Cir. 2008)).
`Determining whether jurisdiction exists over an out-of-state
`defendant involves two inquires: whether a forum state’s long-
`arm statute permits service of process and whether assertion of
`personal jurisdiction violates due process.” Autogenomics, 566
`F.3d at 1017 (quoting Genetic Implant Sys. Inc. v. Core-Vent
`Corp., 123 F.3d 1455, 1458 (Fed. Cir. 1997)). California, where
`Trimble filed suit, permits service of process to the limits of the
`Due Process Clauses