Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 1 of 48
`
`
`
`DARIN SNYDER (CA S.B. #136003)
`dsnyder@omm.com
`LUANN L. SIMMONS (CA S.B. #203526)
`lsimmons@omm.com
`MARK LIANG (CA S.B. # 278487)
`mliang@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Telephone:
`+1 415 984 8700
`
`Attorneys for Plaintiff
`GOOGLE LLC
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`Case No.
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`DEMAND FOR JURY TRIAL
`
`
`
`GOOGLE LLC,
` Plaintiff,
`v.
`AGIS HOLDINGS, INC., ADVANCED
`GROUND INFORMATION SYSTEMS,
`INC., AND AGIS SOFTWARE
`DEVELOPMENT LLC,
`Defendants.
`
`
`
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 2 of 48
`
`
`
`
`Plaintiff Google LLC (“Google”) brings this action for declaratory judgment against
`Defendants AGIS Holdings, Inc. (“AGIS Holdings”), Advanced Ground Information Systems,
`Inc. (“AGIS, Inc.”), and AGIS Software Development LLC (“AGIS Software”) (collectively
`“AGIS” or “AGIS Entities”) and alleges:
`NATURE OF THE ACTION
`1.
`This is an action for declaratory judgment of non-infringement, invalidity, and
`unenforceability of U.S. Patent No. 8,213,970 (“’970 Patent”) against AGIS pursuant to the
`Declaratory Judgment Act, 28 U.S.C. §§ 2201-02, and the patent laws of the United States, 35
`U.S.C. § 100 et seq., and for other relief the Court deems just and proper.
`2.
`Google requests this relief because AGIS has asserted in multiple cases that
`Google and others infringe the ’970 Patent based on Google’s Find My Device (“FMD”)
`application.
`3.
`In 2017, AGIS asserted infringement of the ’970 Patent based on FMD in cases
`filed in the Eastern District of Texas (“EDTX”), against Huawei, LG, ZTE, and HTC. See AGIS
`Software Development LLC v. ZTE Corp., 2:17-cv-00517 (E.D. Tex.); AGIS Software
`Development LLC v. LG Elecs. Inc.., 2:17-cv-00515 (E.D. Tex.); AGIS Software Development
`LLC v. HTC Corp., 2:17-cv-00514 (E.D. Tex.); AGIS Software Development LLC v. Huawei
`Device USA Inc., 2:17-cv-00513 (E.D. Tex.). As part of those actions, AGIS served a subpoena
`to Google seeking discovery relating to FMD.
`4.
`In 2019, AGIS filed a complaint against Google in the Eastern District of Texas
`(“EDTX”) asserting, among other claims, the ’970 Patent against FMD. AGIS Software
`Development LLC v. Google LLC, EDTX, No. 2:19-CV-00361-JRG (“AGIS I”). While AGIS I
`was pending, AGIS amended the claims of the ’970 Patent to overcome prior art asserted during
`an ex parte reexamination (“EPR”) of the patent. After the EPR proceedings concluded, Google
`filed a Rule 12(b)(1) motion to dismiss AGIS’s claims regarding the ’970 Patent for lack of
`subject matter jurisdiction because AGIS had substantively amended the patent’s asserted claims
`to avoid prior art. Before the EDTX court resolved that motion, the Federal Circuit ordered the
`case transferred to the Northern District of California (“NDCA”). In re Google LLC, No. 2022-
`
`
`- 2 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 3 of 48
`
`
`
`
`140-42, 2022 WL 1613192, at *1 (Fed. Cir. May 23, 2022).
`5.
`The case was assigned to Judge Beth Labson Freeman in this District. AGIS
`Software Development LLC v. Google LLC, NDCA, No. 5:22-CV-04826-BLF (“the NDCA
`Case”). Google then refiled in this District its motion to dismiss the ’970 Patent for lack of
`subject matter jurisdiction. In response, AGIS dismissed the ’970 Patent with prejudice. See
`NDCA Case, Dkts. 437, 438. The remainder of the NDCA Case remains pending before Judge
`Freeman.
`6.
`Before AGIS agreed to dismiss the ’970 Patent with prejudice from the NDCA
`case, it filed a duplicative action against Google in the Western District of Texas, asserting the
`amended claims of the ’970 Patent against the same Google FMD application. AGIS Software
`Development LLC v. Google LLC, No. 6:23-CV-00160-DC-DTG (“the WDTX Case”).
`7.
`On April 4, 2023, the WDTX granted Google’s unopposed motion to stay the
`WDTX Case. See WDTX Case, Dkt. 11. As stated in the unopposed motion to stay, AGIS
`agreed to transfer the WDTX Case to this District following the stay: “[t]he parties have agreed
`that if and after the requested stay has been lifted, AGIS will not oppose a motion by Google to
`transfer this case to the Northern District of California following the stay.” See WDTX Case,
`Dkt. 10 at 3 n.1.
`8.
`On July 20, 2023, while the case was still stayed, AGIS voluntarily dismissed the
`WDTX Case without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(i). See
`WDTX Case, Dkt. 12.
`9.
`Google denies that it has infringed or is infringing any claims of the ’970 Patent,
`denies that any claim of the ’970 Patent is valid or enforceable, and denies that AGIS can assert
`any claim of the ’970 Patent against Google.
`10.
`An actual and justiciable controversy therefore exists under 28 U.S.C. §§ 2201-
`2202 between Google and AGIS regarding the ’970 Patent.
`THE PARTIES
`11.
`Plaintiff Google LLC is a subsidiary of Alphabet Inc. with its principal place of
`business located at 1600 Amphitheatre Parkway, Mountain View, California 94043.
`
`
`- 3 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 4 of 48
`
`
`
`
`12.
`According to Florida public records, Defendant AGIS Holdings, Inc. 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.
`13.
`According to Florida public records, Defendant AGIS, Inc. 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.
`14.
`On information and belief, Defendant AGIS Software is an agent and alter ego of
`AGIS, Inc. According to AGIS Software’s allegations in another litigation between the parties,
`AGIS software is a Texas limited liability company, having its principal place of business at 100
`W. Houston Street, Marshall, Texas 75670. Exhibit K ¶ 1.
`JURISDICTION AND VENUE
`15.
`This is a declaratory judgment action for patent non-infringement, invalidity, and
`unenforceability arising under the patent laws of the United States, Title 35, United States Code,
`Section 100 et seq. This Court has subject matter jurisdiction over this controversy pursuant to 28
`U.S.C. §§ 1331, 1338(a), 2201 and 2202.
`I.
`AGIS Accused Google of Infringing the ’970 Patent Based on FMD
`16.
`AGIS asserted the ’970 Patent against FMD and Google in AGIS I, which was
`transferred to the NDCA and became the NDCA Case, in International Trade Commission
`(“ITC”) Investigation No. 337-TA-1347 (“ITC Action”), and in the WDTX Case. AGIS
`dismissed its ’970 Claims from the NDCA case and voluntarily dismissed the WDTX case.
`
`II.
`
`Google Seeks Declaratory Judgments That It Does Not Infringe The ’970 Patent
`and That The ’970 Patent Is Invalid and Unenforceable
`17.
`Google denies that it infringes or has infringed the ’970 Patent through the
`making, using, distributing, sale, offering for sale, exportation, or importation of FMD or any
`related services for FMD or through the making, using, distributing, sale, offering for sale,
`exportation, or importation of devices that a may be configured to run FMD.
`18.
`AGIS’s infringement allegations, asserted in related actions, threaten actual and
`imminent injury to Google that can be redressed by judicial relief and warrants the issue of a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`- 4 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 5 of 48
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`declaratory judgment, under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.
`19.
`An actual and justiciable controversy with respect to the ’970 Patent exists
`between Google and AGIS Software, and between Google and AGIS Inc., and AGIS Holdings
`under an alter ego theory.
`III.
`AGIS Software is Subject to the Specific Jurisdiction of This Court
`20.
`AGIS Software is subject to this Court’s specific jurisdiction, pursuant to due
`process and/or the California Long Arm Statute based on: (1) AGIS’s agreement in the WDTX
`Case to transfer the very dispute that is the subject of this declaratory judgment action to the
`NDCA; (2) the activities of AGIS over a long period of time purposefully directed at the state of
`California, including at residents of this state; (3) AGIS having over a long period of time
`performed purposeful acts intended to harm residents of the state of California; (4) 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 has purposefully availed itself of the
`privilege of doing business in this state; and (5) the claims asserted herein arise out of or relate to
`activities by AGIS within and directed at this forum. Further, the assertions of personal
`jurisdiction are reasonable and fair.
`
`A.
`
`AGIS Software Purposefully Directed Its Patent Licensing Activities to
`California Companies Subjecting It To Specific Jurisdiction Under Trimble
`
`21.
`AGIS Software is a patent licensing company that licenses its patent portfolio,
`including the ’970 Patent.
`22.
`AGIS Software has no employees.
`23.
`AGIS Software’s principal source of revenue is from patent licenses with
`California companies and other companies operating in the State of California.
`24.
`AGIS Software or its predecessor-in-interest has taken purposeful steps to enforce
`the ’970 Patent and/or obtain licenses to the ’970 Patent and/or related patents with companies
`having principal places of business and operations in this judicial district, including Lyft, Apple
`Inc. (“Apple”), WhatsApp LLC (“WhatsApp”), Facebook, Inc. (“Facebook”), Uber Technologies,
`Inc. d/b/a UBER (“Uber”), and Life360, Inc. (“Life360”), and with companies or their affiliates
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`- 5 -
`
`
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 6 of 48
`
`
`
`
`having operations and offices in the State of California, including ZTE (USA) Inc. (“ZTE”), HTC
`Corporation (“HTC”), T-Mobile US, Inc. (“TMobile”), Huawei Device USA Inc. (“Huawei”), LG
`Electronics, Inc. (“LG”), and Samsung Electronics America, Inc (“Samsung”), and Smith Micro
`Software (“Smith Micro”).
`25.
` On information and belief, AGIS Software or its predecessor-in-interest has taken
`purposeful steps to enforce the ’970 Patent and/or obtain licenses to the ’970 Patent and/or related
`patents with Smith Micro, a company having operations and offices in the State of California.
`26.
`AGIS Software or its predecessor-in-interest alleged infringement of the ’970
`Patent and/or related patents through communications directed at companies with principal places
`of business in this judicial district, including Google, Facebook, and Life360.
`27.
`AGIS Software or its predecessor-in-interest enforced the ’970 Patent and/or
`related patents against companies with principal places of business in this judicial district,
`including Lyft, Google, Apple, WhatsApp, Uber, Life360, and against companies or their
`affiliates having operations and offices in the State of California, including ZTE, HTC, T-Mobile,
`Huawei, LG, and Samsung.
`28.
`On information and belief, AGIS Software negotiated a license agreement
`involving the ’970 Patent and/or related patents through communications with Smith Micro, a
`company having operations and offices in the State of California.
`29.
`AGIS Software or its predecessor-in-interest have negotiated and communicated
`with Google in an attempt to enter into license agreements for the ’970 Patent and/or related
`patents.
`30.
`AGIS Software’s communications, including through telephone, mail, and/or other
`means, with companies having principal places of business, offices, and/or operations in the State
`of California to enforce and to negotiate licenses the ’970 Patent and/or related patents creates
`specific personal jurisdiction over AGIS Software. See Trimble Inc. v. PerDiemCo LLC, 997
`F.3d 1147, 1155 (Fed. Cir. 2021).
`31.
`AGIS Software’s non-exclusive licenses to the ’970 Patent with companies having
`principal places of business, offices, and operations in the State of California are sufficiently
`
`
`- 6 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 7 of 48
`
`
`
`
`related to this declaratory judgment action concerning the same patents to support a finding of
`specific jurisdiction. Id. at 1156.
`i.
`AGIS Entities’ Past License With Apple and Related Negotiations
`32.
`On June 21, 2017, AGIS Software sued Apple, a California corporation with its
`principal place of business in this District in Cupertino, California, alleging infringement of
`the ’970 Patent and other patents related to the ’970 Patent. See AGIS Software Development LLC
`v. Apple Inc., Civil Action No. 2:17-cv-00516 (E.D. Tex.), Dkt. 1 ¶¶ 6-9, 18, 27, 41, 55.
`33.
`On information and belief, Apple currently has or previously had headquarters at 1
`Apple Park Way Cupertino, California 95014.
`34.
`On information and belief, in or around March 2019, AGIS Software, AGIS, Inc.,
`and/or AGIS Holdings entered into a license agreement with Apple (“Apple License”) covering
`all patents and patent applications assigned to, owned by, or controlled by the AGIS Entities,
`including the ’970 Patent.
`35.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with Apple to obtain the Apple License.
`ii.
`AGIS Software’s Patent License With Huawei and Related Negotiations
`36.
`On June 21, 2017, AGIS Software sued Huawei Device USA Inc., Huawei
`Technologies USA Inc., and Huawei Technologies Co., Ltd. alleging infringement of patents,
`including the ’970 Patent. AGIS Software Dev. LLC v. Huawei Device USA Inc., Civil Action No.
`2:17-cv-00513 (E.D. Tex.), Dkt. 1 ¶¶ 8-11, 20, 29, 42, 55.
`37.
`On information and belief, Huawei currently has or previously had an affiliate
`office in California.
`38.
`On information and belief, in or around March 2019, AGIS Software entered into a
`license agreement with Huawei (“Huawei License”) covering all patents and patent applications
`owned or controlled by AGIS Software or its affiliates.
`39.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with Huawei to obtain the Huawei
`License.
`
`
`- 7 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 8 of 48
`
`
`
`
`iii.
`AGIS Software Patent License With HTC and Related Negotiations
`40.
`On June 21, 2017, AGIS Software sued HTC Corporation alleging infringement of
`patents, including the ’970 Patent. AGIS Software Dev. LLC v. HTC Corp., Civil Action No.
`2:17-cv-00514 (E.D. Tex.), Dkt. 1 ¶¶ 6-9, 18, 27, 40, 53.
`41.
`On information and belief, HTC currently has or previously had an affiliate office
`in California.
`42.
`On information and belief, in or around July of 2019, AGIS Software entered into
`a license agreement with HTC (“HTC License”) covering all patents and patent applications
`owned or controlled by AGIS Software or its affiliates.
`43.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with HTC to obtain the HTC License.
`iv.
`AGIS Software Patent License With LG and Related Negotiations
`44.
`On June 21, 2017, AGIS Software sued LG Electronics, Inc. alleging infringement
`of patents, including the ’970 Patent. AGIS Software Development LLC v. LG Electronics, Inc.,
`Civil Action No. 2:17-cv-00515 (E.D. Tex.), Dkt. 1 ¶¶ 6-9, 18, 27, 40, 53.
`45.
`On information and belief, LG currently has or previously had an affiliate office in
`California.
`46.
`On information and belief, in or around July 2019, AGIS Software entered into a
`license agreement with LG (“LG License”) covering all patents and patent applications owned or
`controlled by AGIS Software or its affiliates.
`47.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with LG to obtain the LG License.
`v.
`AGIS Software Patent License With ZTE and Related Negotiations
`48.
`On June 21, 2017, AGIS Software sued ZTE Corporation and ZTE (TX) Inc.
`alleging infringement of patents, including the ’970 Patent. AGIS Software Dev. LLC v. ZTE
`Corp. et al., No. 2:17-cv-00517-JRG (E.D. Tex.), Dkt. 1 ¶¶ 7-10, 19, 28, 41 54.
`49.
`On October 17, 2017, AGIS Software filed an amended complaint, adding ZTE
`(USA) Inc. as a defendant to this litigation and alleging infringement of an additional related
`
`
`- 8 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 9 of 48
`
`
`
`
`patent, the ’829 patent. AGIS Software Dev. LLC v. ZTE Corp., et al., No. 2:17-cv-00517-JRG
`(E.D. Tex.), Dkt. 32 ¶¶ 3 & 73.
`50.
`On information and belief, ZTE or a ZTE affiliate currently has or previously had
`an office located in California.
`51.
`On information and belief, in or around October 2019, AGIS Software entered into
`a license agreement with ZTE (“ZTE License”) covering all patents and patent applications
`owned or controlled by AGIS Software or its affiliates.
`52.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with ZTE to obtain the ZTE License.
`
`vi.
`
`AGIS Software Patent License with WhatsApp and Facebook and Related
`Negotiations
`53.
`On January 29, 2021, AGIS Software sued WhatsApp, a corporation having its
`principal place of business in this District in Menlo Park, California, alleging infringement of
`patents related to the ’970 Patent. See AGIS Software Dev. LLC v. WhatsApp, Inc., No. 2:21-cv-
`00029 (E.D. Tex.), Dkt. 1 ¶¶ 7-12, 21, 40, 59, 78, 97, 116.
`54.
`On information and belief, WhatsApp currently has or previously had an office in
`California.
`55.
`In or around September 2021, AGIS Software entered into a license agreement
`with WhatsApp and Facebook (“WhatsApp/Facebook License”) covering all patents and patent
`applications held or controlled by AGIS Software, including the ’970 Patent.
`56.
`On information and belief, Facebook currently has or previously had an office in
`California.
`57.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with WhatsApp and/or Facebook to obtain
`the WhatsApp/Facebook License.
`
`vii.
`AGIS Software Patent License With Uber and Related Negotiations
`58.
`On January 29, 2021, AGIS Software sued Uber alleging infringement of the ’970
`Patent. AGIS Software Dev. LLC v. Uber Techs. Inc., d/b/a Uber, No. 2:21-cv-00026 (E.D. Tex.),
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`- 9 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 10 of 48
`
`
`
`
`Dkt. 1 ¶¶ 18-22, 30, 46, 62, 77, 95.
`59.
`On information and belief, Uber currently has or previously had an office in
`California.
`60.
`On information and belief, in or around March of 2022, AGIS Software entered
`into a license agreement with Uber (“Uber License”) covering all patents and patent applications
`held or controlled by AGIS Software, including the ’970 Patent.
`61.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with Uber to obtain the Uber License.
`
`viii.
`AGIS Software Patent License With T-Mobile and Related Negotiations
`62.
`On March 3, 2021, AGIS Software sued T-Mobile alleging infringement of patents
`related to the ’970 Patent. AGIS Software Dev. LLC v. T-Mobile USA, Inc., No. 2:21-cv-00072
`(E.D. Tex.), Dkt. 1 ¶¶ 7-12, 24, 46, 67, 98, 120, 147.
`63.
`On information and belief, T-Mobile or a T-Mobile affiliate currently has or
`previously had an office in California.
`64.
`On information and belief, in or around November of 2021, AGIS Software
`entered into a license agreement with T-Mobile (“T-Mobile License”) covering all patents and
`patent applications owned or controlled by AGIS Software or its affiliates.
`65.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with T-Mobile to obtain the -Mobile
`License.
`
`ix.
`
`AGIS Software Patent License with Smith Micro and Related
`Negotiations
`66.
`On May 17, 2021, Smith Micro sued AGIS Software for a declaratory judgment
`that Smith Micro did not infringe patents related to the ’970 Patent, and that said patents were
`invalid. Smith Micro Software, Inc. v. AGIS Software Development LLC, No. 5:21-cv-03677
`(N.D.Cal.), Dkt. 1 ¶¶ 16, 50, 55, 60, 65, 70, 75, 81, 88, 96, 103, 110, 117.
`67.
`On information and belief, Smith Micro currently has or previously had an office
`located in California.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`- 10 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 11 of 48
`
`
`
`
`68.
`On information and belief, in or around October 2021, AGIS Software entered into
`a license agreement with Smith Micro (“Smith Micro License”) covering all patents and patent
`applications owned or controlled by AGIS Software or its affiliates.
`69.
`On information and belief, AGIS Software negotiated, including through
`numerous written email and/or other communications, with Smith Micro to obtain the Smith
`Micro License.
`
`x.
`AGIS, Inc.’s Negotiations With Life360
`70.
`On information and belief, AGIS, Inc. sent a letter to Life360, a company
`headquartered in San Francisco, California, on May 13, 2014 alleging infringement of AGIS’s
`patents, expressing a willingness to engage in discussions regarding “royalty bearing licensing
`terms,” and stating that “Life360 and its customers must cease and desist from further
`infringement” in the absence of a license. See Advanced Ground Info. Sys., Inc. v. Life360, Inc.,
`No. 9:14-cv-80651 (S.D. Fla.), Dkt. 181 (Transcript of Jury Trial Proceedings Day 1 held on Mar.
`9, 2015) at 87:2-7.
`71.
`Three days later, on May 16, 2014, AGIS, Inc. sued Life360 alleging infringement
`of patents related to the ’970 Patent. Advanced Ground Info. Sys., Inc. v. Life360, Inc., No. 9:14-
`cv-80651 (S.D. Fla.), Dkt. 1 ¶¶ 2, 16, 25, 34, 43.
`72.
`On information and belief, Life360 currently has or previously had an office
`located in California.
`73.
`On information and belief, AGIS, Inc. negotiated, including through numerous
`written email and/or other communications, with Life360 to attempt to license AGIS’s patents.
`
`B.
`
`AGIS Software is a Sham Entity Created to Avoid Jurisdiction and the
`Corporate Structure Should Be Ignored Under Dainippon
`74.
`On June 1, 2017, twenty days before filing a patent infringement lawsuit against
`Apple and ZTE, AGIS Software was created as a Texas LLC to hold and manage intellectual
`property assets previously owned by AGIS, Inc.
`75.
`On June 15, 2017, AGIS, Inc. assigned the ’970 Patent to AGIS Holdings.
`76.
`On the same day, AGIS Holdings assigned the ’970 Patent to AGIS Software.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`- 11 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 12 of 48
`
`
`
`
`Both AGIS, Inc. and AGIS Software are wholly owned subsidiaries of AGIS
`
`77.
`Holdings.
`78. Malcom K. Beyer, Jr., the named inventor of the ’970 Patent, is the CEO of AGIS
`Software, AGIS Holdings, and AGIS, Inc.
`79.
`On information and belief, AGIS Software shares business addresses with AGIS
`Holdings and AGIS, Inc. at 92 Lighthouse Drive, Jupiter, FL 33469, and all of AGIS Software’s
`board members and shareholders are employees, officers, board members, or shareholders of
`AGIS Inc.
`80.
`AGIS, Inc. has regular contacts with California as discussed above.
`81.
`AGIS, Inc. cannot create AGIS Software to insulate itself from declaratory
`jurisdiction, as it is an improper use of the corporate structure and should be disregarded for the
`jurisdictional analysis. See Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142 F.3d 1266, 1271
`(Fed. Cir. 1998); Google Inc. v. Rockstar Consortium U.S. LP, No. C 13-5933-CW, 2014 WL
`1571807, at *4 (N.D. Cal. Apr. 17, 2014).
`
`C.
`
`AGIS Software, AGIS, Inc., and/or AGIS Holdings are Alter Egos of Each
`Other
`82.
`AGIS Software, AGIS, Inc., and/or AGIS Holdings are alter egos of each other,
`and contacts with the State of California by any of the AGIS Entities should be considered in the
`personal jurisdiction analysis.
`83.
`On information and belief, AGIS Software self-describes as an “inanimate entity.”
`84.
`On information and belief, AGIS Software is inadequately capitalized.
`85.
`AGIS Software’s principal source of revenue is from patent licenses.
`86.
`AGIS Software, AGIS Holdings, and AGIS, Inc. commingle funds and other
`
`assets.
`
`87.
`On information and belief, AGIS, Inc. and AGIS Holdings transfer funds between
`their bank accounts to pay expenses when one does not have an adequate revenue source for a
`particular time period.
`88.
`On information and belief, proceeds from lawsuits filed by AGIS Software
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`- 12 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 13 of 48
`
`
`
`
`involving the ’970 Patent and related patents were paid to AGIS, Inc. or AGIS Holdings rather
`than AGIS Software.
`89.
`AGIS Software and AGIS, Inc. each claim the LifeRing products to be their
`product, and each represent that the LifeRing products practice at least one claim of the ’970
`Patent.
`
`90.
`On information and belief, AGIS Software, AGIS Holdings, and AGIS, Inc.
`disregard corporate formalities and fail to maintain an arm’s length relationship.
`91.
`On information and belief, AGIS, Inc. transferred patents and patent applications,
`including the ’970 Patent, to AGIS Holdings without consideration.
`92.
`On information and belief, AGIS Holdings. transferred patents and patent
`applications, including the ’970 Patent, to AGIS Software without consideration.
`93.
`On information and belief, electronic inquiries submitted to AGIS Software’s
`website are transmitted to AGIS, Inc.
`94.
`On information and belief, AGIS, Inc. pays for office expenses at the business
`location in Jupiter, Florida.
`95.
`AGIS Software, AGIS Holdings, and AGIS, Inc. use the same employees.
`96.
`AGIS Software has no employees of its own, and employees of AGIS, Inc.
`perform work for AGIS Software.
`97.
`On information and belief, AGIS Holdings has no employees of its own, and
`employees of AGIS, Inc. perform work on behalf of AGIS Holdings.
`98.
`On information and belief, AGIS Software does not hold regular officer, board, or
`other company meetings, and does not record and maintain regular minutes from officer, board,
`or other company meetings.
`99.
`On information and belief, AGIS, Inc. does not hold regular officer, board, or
`other corporate meetings and does not record and maintain regular minutes from officer, board, or
`other corporate meetings.
`100. AGIS Software, AGIS Holdings, and AGIS, Inc. have identical directors and/or
`officers.
`
`
`- 13 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 14 of 48
`
`
`
`
`101. AGIS, Inc., AGIS Software, and AGIS Holdings have overlapping officers.
`Malcolm K. Beyer Jr. is the CEO of AGIS Software, the CEO/Director/Chairman of AGIS
`Holdings, and the CEO/Director/Chairman of AGIS, Inc. Margaret Beyer is the Secretary of
`AGIS Software, the Secretary/Director of AGIS Holdings, and the Secretary/Director of AGIS,
`Inc. Ronald Wisneski is the CFO/Treasurer of AGIS Software, the CFO/Treasurer of AGIS
`Holdings, and the CFO/Treasurer of AGIS, Inc. Sandel Blackwell is the President of AGIS
`Software, the President/Director of AGIS Holdings, and the President of AGIS, Inc.
`102. Because there is a unity of interest and ownership between AGIS Software, AGIS,
`Inc., AGIS Holdings, and/or Malcom K. Beyer, Jr. the separate personalities of the entities no
`longer exist, and the corporate structure should be disregarded. See, e.g. City & Cnty. of S.F. v.
`Purdue Pharma L.P., 491 F. Supp. 3d 610, 635 (N.D. Cal. 2020).
`103. Failure to disregard the separate identities of AGIS Software, AGIS, Inc., AGIS
`Holdings, and/or Malcom K. Beyer, Jr. would result in fraud or injustice to Google’s ability to
`seek the declaratory judgment relief it seeks with this complaint and to recover any damages
`resulting from this lawsuit. See, e.g., Reynolds v. Binance Holdings Ltd., 481 F. Supp. 3d 997,
`1009 (N.D. Cal. 2020) (“To establish inequity in the absence of alter ego liability, a plaintiff must
`plead facts sufficient to demonstrate that conduct amounting to bad faith makes it inequitable for
`the corporate owner to hide behind the corporate form.”); Successor Agency to Former
`Emeryville Redevelopment Agency v. Swagelok Co., 364 F. Supp. 3d 1061, 1072 (N.D. Cal.
`2019).
`
`104. Because Malcom K. Beyer, Jr. and/or AGIS, Inc. controls the actions of the AGIS
`Software and AGIS Holdings such that AGIS Software and AGIS Holdings are mere alter egos of
`AGIS, Inc., the Court may exercise jurisdiction collectively over the AGIS entities.
`
`D.
`AGIS, Inc. Has Regular Contacts With California Involving the ’970 Patent
`105. AGIS, Inc. has intentionally directed activities and communications to the State of
`California.
`106. On information and belief, AGIS, Inc. maintains or maintained a bank account in
`California.
`
`
`- 14 -
`
` COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`

`

`Case 5:23-cv-03624-BLF Document 1 Filed 07/21/23 Page 15 of 48
`
`
`
`
`107. AGIS, Inc. communicated with California companies, including Google and
`Facebook, to pursue joint ventures, acquisition, or patent licensing agreements involving the ’970
`Patent and/or related patents.
`108. On information and belief, AGIS, Inc. formed partnerships with one or more
`California companies or individuals involving products that allegedly embody the ’970 Patent
`including the LifeRing products.
`109. On information and belief, AGIS, Inc. entered into non-disclosure agreements with
`California companies and organizations to pursue business opportunities involving products
`and/or services that embody the ’970 Patent, including the LifeRing products.
`110. AGIS, Inc. sent a letter to California-based company Life360 alleging
`infringement of and seeking a license to one or more of the ’970 Patent and/or related patents.
`111. On information and belief, AGIS, Inc. marketed and continued to market its
`LifeRing product, which allegedly embodies the ’970 Patent, in California.
`112. On information and belief, AGIS, Inc. marketed LifeRing, which allegedly
`embodies the ’970 Patent, to California companies CornerTurn LLC, Integrity Applications and
`American Reliance, Inc. See Life360, Inc. v. Advanced