Case 5:21-cv-03677 Document 1 Filed 05/17/21 Page 1 of 28
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`Robert W. Dickerson, Jr. (SBN 089367)
`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
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`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
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`Fax: 510-839-9104
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`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
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`Fax: 408-606-6333
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`Attorneys for Plaintiffs
`SMITH MICRO SOFTWARE, INC. and
`SMITH MICRO SOFTWARE, LLC
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`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`SMITH MICRO SOFTWARE, INC.,
`and SMITH MICRO SOFTWARE,
`LLC
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`Plaintiffs,
`
`v.
`AGIS SOFTWARE
`DEVELOPMENT LLC, and DOES
`1 to 10
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`Defendants.
`
`Case No. 5:21­cv­3677
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
`JURY TRIAL DEMANDED
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`BURKE, WILLIAMS &
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`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`BURKE, WILLIAMS &
`SORENSEN, LLP
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`Plaintiffs Smith Micro Software, Inc. (“SMSI”) and Smith Micro Software,
`LLC (“SMSL”) (jointly “Smith Micro” or “Plaintiffs”) hereby bring this Complaint
`for Declaratory Judgment against Defendant AGIS Software Development LLC
`(“AGIS Software”) and Does 1-10, and allege as follows:
`THE PARTIES
`Smith Micro Software, Inc. and Smith Micro Software, LLC
`SMSI is a corporation that was originally founded, incorporated, and
`1.
`opened its first office in California in 1983. The company reincorporated in
`Delaware in 1995 in conjunction with its initial public offering, and the California
`corporation merged into the Delaware corporation SMSI at that time. SMSI is
`currently organized under the laws of Delaware. SMSI’s headquarters were located
`in Aliso Viejo, California until 2019, at which time its office in Pittsburgh,
`Pennsylvania was designated as the company headquarters.
`SMSI continues to maintain its office in Aliso Viejo, which is the
`2.
`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.
`SMSL (formerly known as Location Labs, LLC) is a Delaware limited
`3.
`liability company that is wholly owned by 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, SMSI and/or SMSL have in
`excess of fifty (50) employees who reside and work in Northern California.
`In terms of the SMSI and SMSL documents and personnel who are
`4.
`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.
`SMSI also acquired some of the technology at issue in this lawsuit
`5.
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-03677 Document 1 Filed 05/17/21 Page 3 of 28
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`from Circle Media Labs, Inc., located in Portland, Oregon. Plaintiffs are informed
`and believe that some 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.
`SMSI and/or SMSL have offices in Northern California in Emeryville,
`6.
`California (where Location Labs, LLC had its headquarters) and also in Petaluma,
`California. SMSI further maintains certain servers in Santa Clara, California for the
`operation of its business.
`SMSI and SMSL are both registered to do business in the state of
`7.
`California, and both conduct business in the state of California on a regular and
`continuous basis.
`Smith Micro is a leading global provider of highly scalable mobile
`8.
`applications and value-added solutions for mobile and cable operators.
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`AGIS Software and Related Entities
`Smith Micro is informed and believes that AGIS Software is a Texas
`9.
`limited liability company, listing 100 W. Houston Street, Marshall, Texas 75670 as
`its office address. 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.
`10. Smith Micro is informed and believes that AGIS Software has no other
`“office” in Texas; that AGIS Software has no employees who reside or work in
`Texas; and that AGIS Software does not conduct any meaningful business from its
`“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..
`11. According to Texas public records, the sole member of AGIS Software
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`BURKE, WILLIAMS &
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`is AGIS Holdings, Inc. (“AGIS Holdings”). According to Florida public records,
`AGIS Holdings is organized and existing under the laws of the state of Florida, and
`maintains its principal place of business at 92 Lighthouse Drive, Jupiter, FL 33469.
`AGIS Holdings shares the same address with Advanced Ground Information
`Systems, Inc. (“AGIS”), a corporation organized and existing under the laws of the
`state of Florida that also maintains its principal place of business at 92 Lighthouse
`Drive, Jupiter, FL 33469. Smith Micro is informed and believes that neither AGIS
`nor AGIS Holdings has any office, officers or employees that reside and work in
`the state of Texas. Hereinafter, AGIS, AGIS Holdings and AGIS Software will be
`collectively referred to as “the AGIS Companies.”
`12. Smith Micro is informed and believes that AGIS Holdings registered
`AGIS Software as an LLC in Texas on June 1, 2017, twenty (20) days before filing
`patent infringement cases against Apple and ZTE in the Eastern District of Texas.
`13. Smith Micro is informed and believes that 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 Advanced Ground Information Sys., Inc. v.
`Life360, Inc., 9:14-cv-80651 (S.D. Fla.)). Based on Public Access to Court
`Electronic Records (“PACER”), AGIS asserted that Life360 infringed the ’728
`patent (one of the Patents-in-Suit) and other related patents. Based on PACER,
`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.” Id., Dkts. 200, 212.
`14. Smith Micro is informed and believes that AGIS and AGIS Holdings
`thereafter, in an attempt to remake AGIS and to distance AGIS from the adverse
`result in Advanced Ground Information Sys., Inc. v. Life360, Inc., 9:14-cv-80651
`(S.D. Fla.), 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
`COMPLAINT FOR
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`Texas. Smith Micro is informed and believes that the creation of AGIS Software as
`a Texas LLC was a pretext and a façade for the sole purpose of being able to file
`patent infringement suits in the Eastern District of Texas and allege that AGIS
`Software “resides” in that judicial district. Smith Micro is informed and believes
`that the AGIS Companies consider the Eastern District of Texas to be a venue that
`favors patent plaintiffs, and an inconvenient forum for non-Texas-based defendants,
`including those primarily located in California.
`15. Smith Micro does not have access to complete information concerning
`all of the corporate relationships, responsibilities and decision-making processes
`within, between and among AGIS, AGIS Holdings, AGIS Software and each of
`their owners, officers, directors, members and managers, but is informed and
`believes that from time to time there have been corporate realignments among and
`between them. Smith Micro therefore reserves the right to add defendants or to
`substitute the current correct name of a defendant as that information is obtained
`through discovery, and to amend the complaint to identify a DOE defendant.
`NATURE OF THE ACTION
`16. Smith Micro brings this action for a declaratory judgment that U.S.
`Patent Nos. 7,031,728 (“the ‘728 patent”), 7,630,724 (“the ‘724 patent”), 9,408,055
`(“the ‘055 patent”), 9,445,251 (“the ‘251 patent”), 9,467,838 (“the ‘838 patent”),
`and 9,749,829 (“the ‘829 patent”) (collectively, the “Patents-in-Suit”) are not
`infringed, directly or indirectly, by the Family Mode application and systems and
`the FamilyWhere application and systems (including all related services and
`infrastructure) owned by Smith Micro (“Accused Products” or “Smith Micro
`Products”) that Smith Micro sells to T-Mobile USA, Inc., among others.
`17. Smith Micro acquired the FamilyWhere application and systems as
`part of its April 2021 acquisition of Avast plc’s Family Safety Mobile Business,
`mainly based in Emeryville, California, in this judicial district. Smith Micro is
`informed and believes that the persons involved in the development of the
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`FamilyWhere application and systems, and relevant documents relating thereto, are
`located in this judicial district.
`18. Smith Micro also seeks a declaratory judgment that each of the claims
`of the Patents-in-Suit that has not been invalidated with finality is invalid for failure
`to comply with at least one or more of 35 U.S.C. §§ 101, 102, 103 and 112.
`In a complaint filed on March 3, 2021 in AGIS Software Development
`19.
`LLC v. T-Mobile USA, Inc., et al., 2:21-cv-00072-JRG (E.D. Tex.), AGIS Software
`asserted the Patents-in-Suit against T-Mobile, USA, Inc. and T-Mobile US, Inc.
`(collectively, “T-Mobile”) based upon T-Mobile’s sales of the Accused Products.
`Smith Micro has an adverse legal interest to AGIS Software by virtue of AGIS
`Software’s patent infringement claims against Smith Micro Products. Smith
`Micro’s reasonable apprehension that AGIS Software will pursue patent
`infringement claims against Smith Micro has been amplified by AGIS Software’s
`recently-filed patent lawsuit against Smith Micro’s customer, T-Mobile, and its
`products. Accordingly, Plaintiffs seek the declaration requested herein to establish
`their right to continue to offer and sell their its products in the United States free
`from suit or threat of suit from AGIS Software for infringement of the Patents-in-
`Suit.
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`JURISDICTION AND VENUE
`20. The Court has subject matter jurisdiction over Smith Micro’s
`declaratory judgment claims relating to patent non-infringement and invalidity
`under 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202.
`21. Smith Micro is informed and believes that AGIS Software is subject to
`this Court’s specific jurisdiction, pursuant to due process and/or the California
`Long Arm Statute due to: (1) the activities by AGIS Software and/or AGIS over a
`long period of time purposefully directed at the state of California, including at
`residents of this state; (2) AGIS Software and/or AGIS having over a long period of
`time performed purposeful acts intended to harm residents of the state of California;
`COMPLAINT FOR
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`(3) AGIS Software and/or AGIS having engaged in business-related activities over
`a long period of time that are directed to customers and potential customers in the
`state of California such that AGIS Software and/or AGIS have purposefully availed
`themselves of the privilege of doing business in this state; and (4) the claims
`asserted herein arise out of or relate to activities by AGIS Software and/or AGIS
`within and directed at this forum.
`22. Smith Micro is informed and believes that AGIS Software is an agent
`and alter ego of AGIS and AGIS Holdings. Smith Micro is further informed and
`believes that Mr. Malcom K. Beyer, Jr., (“Mr. Beyer”), who is a named inventor on
`each of the Patents-in Suit, is an owner, member, managing member, officer and/or
`director of each of the AGIS Companies, including AGIS and AGIS Software.
` Smith Micro is further informed and believes that Mr. Beyer has at all
`23.
`relevant times been actively involved in directing the business activities of each of
`the AGIS Companies.
`24. Smith Micro is further informed and believes (based upon records of
`the U.S. Patent & Trademark Office (“USPTO”) and PACER) that 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.
`25. Smith Micro is informed and believes that 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.
`26. Based on PACER, on June 21, 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. See AGIS
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Software Development LLC v. Apple Inc., 2:17-cv-00516 (E.D. Tex.). Based on
`USPTO records, on July 31, 2018, Apple filed a petition for inter partes review of
`the ’829 patent (IPR2018-01471). Based on USPTO records, on December 13,
`2018, Apple filed a petition for inter partes review of the ’055 patent (IPR2019-
`00432). Based on USPTO records, on January 3, 2019, Apple filed petitions for
`inter partes review of the ’251 patent (IPR2019-00523, IPR2019-00524). Based on
`USPTO records, on or around April 2, 2019, each of these inter partes review
`proceedings were terminated as a result of the Apple and AGIS Software reaching a
`settlement agreement. See, e.g., “Decision Granting Joint Motion to Terminate and
`Granting Request to Treat Settlement Document as Confidential Business
`Information,” IPR2018-01471, Paper No. 15. Based on PACER, on March 14,
`2019, the Eastern District of Texas dismissed the district court litigation between
`AGIS Software and Apple as a result of a settlement between the parties. Order,
`AGIS Software Development LLC v. Apple Inc., 2:17-cv-00516 (E.D. Tex. Mar. 14,
`2019), Dkt. 87.
`27. Based on PACER, on June 21, 2017, AGIS Software sued ZTE
`Corporation and ZTE (TX) Inc. alleging infringement of patents, including the ’055
`patent, the ’251 patent, the ’838 patent, and the ’829 patent. AGIS Software
`Development LLC v. ZTE Corporation, 2:17-v-00517 (E.D. Tex.). Based on
`PACER, on October 17, 2017, AGIS Software filed an amended complaint, adding
`ZTE (USA) Inc. to this litigation. Smith Micro is informed and believes that ZTE
`(USA) Inc. has an office located at 1900 McCarthy Boulevard, Milpitas, California
`95035. Smith Micro is informed and believes that ZTE (TX) Inc. keeps its
`principal place of business at 1900 McCarthy Boulevard, Milpitas, CA 95035.
`28. Based on PACER, on October 9, 2018, ZTE (USA) Inc. filed a
`declaratory judgment action against AGIS Software in the Northern District of
`California; AGIS filed a Motion to Dismiss based upon lack of personal
`jurisdiction, and for sanctions; on September 12, 2019, the Court denied the request
`COMPLAINT FOR
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`for sanctions, and allowed jurisdiction discovery to proceed on the Motion to
`Dismiss (Dkt 114); and on October 30, 2019, AGIS Software and ZTE (USA) Inc.
`filed a joint motion to stay all deadlines as a result of a settlement in principle (ZTE
`(USA) Inc. v. AGIS Software Development LLC, No. 4:18-cv-06185-HSG (N.D.
`Cal. Oct. 30, 2019, Dkt. 130). Based on PACER, less than a week later, on
`November 4, 2019, AGIS Software filed an unopposed renewed motion to dismiss.
`Id., Dkt. 135; and on November 5, 2019, the Court granted the unopposed motion.
`Id., Dkt. 138.
`29. Based on PACER, 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.
`30. Based on PACER, on April 27, 2021, WhatsApp LLC filed a suit for
`declaratory judgment against AGIS Software Development LLC in the United
`States District Court for the Northern District of California (Case No. 5:21-cv-
`03076-BLF) seeking a judgment that WhatsApp does not infringe, under any theory
`of infringement, any valid claim of the Patents-in-Suit.
`31. Smith Micro is informed and believes that AGIS Software has entered
`into agreements relating to the Patents-in-Suit with Apple and ZTE Corporation,
`ZTE (USA) Inc., and ZTE (TX) Inc. (“ZTE”). Apple is headquartered in
`California. Smith Micro is informed and believes that ZTE does business in the
`state of California.
` AGIS Software has also sued other companies for alleged patent
`32.
`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).
`33. Smith Micro is informed and believes that AGIS (and/or its alter egos)
`COMPLAINT FOR
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`have committed a number of other business-related intentional acts directed at the
`state of California.
`34. Smith Micro is informed and believes that 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. For example, 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. The LifeRing software is available on the AGIS
`website for downloading upon request, including by residents in the state of
`California. AGIS actively does business over the Internet via this website (among
`other ways), including to residents in the state of California. Smith Micro is
`informed and believes that 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.
`35. The issue of whether AGIS is subject to specific personal jurisdiction
`in this judicial district has been previously addressed by the district court for the
`Northern District of California. On January 12, 2015, AGIS was sued in the
`Northern District of California by Life360, Inc. See Life360, Inc. v. Advanced
`Ground Sys., Inc., 2014 WL 5612008 (ND Cal Case No. 5:15-cv-00151-BLF) (“the
`Life360 case”), in which Life360 asserted claims against AGIS for false marking
`(that is, that AGIS had marked products with patent numbers, including one or
`more of the Patents-in-Suit, even though the “marked” product was not covered by
`the patent(s)); for tortious interference with contract (that is, AGIS threatened to sue
`The ADT Corporation (“ADT”), which was an investor in Life360, for patent
`infringement); and for interference with economic advantage (that is, AGIS, in
`threatening ADT with infringement, had misrepresented the scope of AGIS’s
`patents, Life360’s potential liability, and ADT’s potential liability). Life360
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`asserted that AGIS engaged in this activity intentionally to interfere with Life360’s
`contractual relationship and prospective economic advantage with ADT, “and to
`thereby pressure Life360 into settling a meritless lawsuit.” (Id., Dkt 1).
`36. On March 18, 2015, AGIS filed a Motion to Dismiss the Life360 case
`for lack of jurisdiction and lack of proper service of process (id., Dkt. 19). Life360
`then filed a motion for leave to conduct jurisdictional discovery of AGIS (id., Dkt.
`24), which was granted by the Court on May 5, 2015 (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).
`In that well-reasoned Order, the Court found that AGIS had marketed
`37.
`its LifeRing product into California, and held that “marketing LifeRing into
`California is an act expressly aimed at the forum state itself.” (Id. 2014 WL
`5612008 at *10). The Court then addressed other ways in which AGIS had
`contacts with the state of California and purposefully availed itself of the privilege
`of doing business in California, and concluded that Life360 had made a more than
`sufficient showing that met all prongs of the purposeful direction test for specific
`personal jurisdiction over AGIS.
`In this regard, Smith Micro is informed and believes that in 2014, Mr.
`38.
`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). Smith Micro is
`informed and believes that during this demonstration, Mr. Beyer also discussed
`LifeRing with companies including ADI Technology and Maven Consulting. (Id.).
`39. Smith Micro is informed and believes that AGIS marketed LifeRing to
`companies that resulted in downloads of LifeRing in California. (Id. at *4). Smith
`Micro is informed and believes that AGIS marketed LifeRing to at least
`CornerTurn LLC, Integrity Applications, and American Reliance, Inc., which AGIS
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`BURKE, WILLIAMS &
`SORENSEN, LLP
`ATTO RN EY S AT LAW
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`has stated reside in California. (Id.).
`40. Smith Micro is informed and believes that AGIS has marked LifeRing
`as covered by the Patents-in-Suit. See, e.g., AGIS Website | Patents,
`http://agisinc.com/about/patents (last visited May 17, 2021). Smith Micro is
`informed and believes that AGIS Software has licensed the Patents-in-Suit to end
`users residing in California who have downloaded the LifeRing software in this
`state from the AGIS Website.
`41. Smith Micro is informed and believes that 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,
`2014 WL 5612008, at *4).
`42. As a result of the foregoing allegations, 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.
`43. Since the Court’s Order was entered in the Life360 case, there have
`been additional and continued intentional and purposeful activities by AGIS
`Software, its predecessors and alter-egos that have contacted, done business, and
`caused harm in the state of California.
`44. Specific personal jurisdiction over AGIS Software exists in this
`judicial district.
`It is AGIS Software’s burden to set forth a compelling case as to why
`45.
`exercise of specific personal jurisdiction of it in this matter would not be
`reasonable. Given all of the acts by which AGIS Software, its predecessors and
`alter-egos have intentionally and purposefully made contacts, conducted business,
`and caused harm in the state of California, no such compelling case can be made.
`46. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 in
`that a substantial part of the acts giving rise to the claim occurred in this judicial
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-03677 Document 1 Filed 05/17/21 Page 13 of 28
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`BURKE, WILLIAMS &
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`ATTO RN EY S AT LAW
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`district, and because AGIS Software is subject to personal jurisdiction in this
`district based upon it owns acts as alleged above, and based upon the cumulative
`acts of the AGIS companies as alter-egos of one another, and/or pursuant to the
`corporate succession doctrine. This venue is also a convenient forum for all parties,
`and on balance is much more convenient than the Eastern District of Texas.
`COUNT I
`Declaratory Relief Regarding Non-Infringement
` of U.S. Patent No. 7,031,728
`47. Smith Micro restates and incorporates by reference each of the
`allegations set forth in paragraphs 1 - 46 above, as if fully set forth herein.
`48. Smith Micro is informed and believes that AGIS Software is the
`current owner by assignment from another AGIS Company of all right, title, and
`interest in the ‘728 patent, including the right to assert all causes of action arising
`under that patent and the right to any remedies for infringement of it. A copy of the
`‘728 patent is attached hereto as Exhibit A.
`49. Smith Micro has a reasonable apprehension that AGIS Software will
`assert the ‘728 patent against Smith Micro or Smith Micro’s current and future
`customers in the United States for alleged infringement of the ‘728 patent, based on
`AGIS Software’s allegation against T-Mobile that the Accused Products infringe
`the ‘728 patent.
`50. Smith Micro does not infringe any claim of the ‘728 patent, directly or
`indirectly, contributorily or otherwise through its or its users’ activities in
`conjunction with the Accused Products or any other Smith Micro product.
`51. An actual and justiciable controversy has arisen between Smith Micro
`and AGIS Software that is properly presented for judicial relief under the
`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. AGIS Software has sued
`T-Mobile for patent infringement based on the allegation that Smith Micro’s
`Accused Products infringe the ‘728 patent. AGIS Software’s patent infringement
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-03677 Document 1 Filed 05/17/21 Page 14 of 28
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`claims establish that Smith Micro and AGIS Software have adverse legal interests
`with respect to the sale of Smith Micro’s Accused Products. 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 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 Accused Products. Smith Micro thus
`requests a judicial determination and declaration of the respective rights of the
`parties.
`
`COUNT II
`Declaratory Relief Regarding Non-Infringement
` of U.S. Patent No. 7,630,724
`52. Smith Micro restates and incorporates by reference each of the
`allegations set forth in paragraphs 1 - 46 above, as if fully set forth herein.
`53. Smith Micro is informed and believes that AGIS Software is the
`current owner by assignment from another AGIS Company of all right, title, and
`interest in the ‘724 patent, including the right to assert all causes of action arising
`under that patent and the right to any remedies for infringement of it. A copy of the
`‘724 patent is attached hereto as Exhibit B.
`54. Smith Micro has a reasonable apprehension that AGIS Software will
`assert the ‘724 patent against Smith Micro or Smith Micro’s current and future
`customers in the United States for alleged infringement of the ‘724 patent, based on
`AGIS Software’s allegation against T-Mobile that the Accused Products infringe
`the ‘724 patent.
`55. Smith Micro does not infringe any claim of the ‘724 patent, directly or
`indirectly, contributorily or otherwise through its or its users’ activities in
`conjunction with the Accused Products or any other Smith Micro product.
`56. An actual and justiciable controversy has arisen between Smith Micro
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:21-cv-03677 Document 1 Filed 05/17/21 Page 15 of 28
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`and AGIS Software that is properly presented for judicial relief under the
`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. AGIS Software has sued
`T-Mobile for patent infringement based on the allegation that Smith Micro’s
`Accused Products infringe the ‘724 patent. AGIS Software’s patent infringement
`claims establish that Smith Micro and AGIS Software have adverse legal interests
`with respect to the sale of Smith Micro’s Accused Products. 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 a position that puts Smith Micro in the position of either pursuing
`allegedly infringing behavior or abandoning that which Smith Micro c