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`Case 5:23-cv-03624-BLF Document 42 Filed 11/13/23 Page 1 of 56
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`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
`BILL TRAC (CA S.B. #281437)
`btrac@omm.com
`AMY LIANG (CA S.B. #291910)
`aliang@omm.com
`SORIN ZAHARIA (CA S.B. #312655)
`szaharia@omm.com
`DANIEL SILVERMAN (CA S.B. #319874)
`dsilverman@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
`
`
`STACY YAE (CA S.B. #315663)
`syae@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street, 18th Floor
`Los Angeles, California 90071
`Telephone:
`+1 213 430 6000
`
`CASON COLE (TX S.B. #24109741)
`ccole@omm.com
`GRANT GIBSON (TX S.B.
`#24117859)
`ggibson@omm.com
`O’MELVENY & MYERS LLP
`2501 N. Harwood St., 17th Floor
`Dallas, Texas 75201
`Telephone:
`+1 972 360 1916
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`GOOGLE LLC,
` Plaintiff,
`v.
`AGIS HOLDINGS, INC., ADVANCED
`GROUND INFORMATION SYSTEMS,
`INC., AND AGIS SOFTWARE
`DEVELOPMENT LLC,
`Defendants.
`
`Case No. 5:23-cv-03624-BLF
`AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`DEMAND FOR JURY TRIAL
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` PLAINTIFF’S AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`CASE NO. 5:23-CV-03624-BLF
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`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”) (attached hereto as Exhibit L)
`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 Software 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 Software served
`subpoenas on Google seeking discovery relating to FMD.
`4.
`In 2018, Google filed a petition for inter partes review (“IPR”) challenging the
`patentability of claims 1 and 3-9 of the ’970 Patent. Google LLC v. AGIS Software Development
`LLC, IPR2018-01079 (P.T.A.B.) (the “Google IPR”). The Patent Trial and Appeal Board issued
`a Final Written Decision determining that claims 1 and 3-9 were unpatentable. Id., Paper No. 34
`(Nov. 19, 2019). AGIS Software appealed the decision, which the Federal Circuit summarily
`affirmed. AGIS Software Development, LLC v. Google LLC, No. 20-1401, Dkt. 46 (Fed. Cir.
`Feb. 4, 2021).
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`PLAINTIFF’S AM. COMPLAINT FOR
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`CASE NO. 5:23-CV-03624-BLF
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`5.
`Before the PTAB’s Final Written decision issued, in 2019, AGIS Software 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, No.
`2:19-CV-00361-JRG (E.D. Tex. Nov. 4, 2019) (“AGIS I”). On May 15, 2020, a third-party ex
`parte reexamination (“EPR”) request was filed challenging the patentability of claims 2 and 10-
`13 of the ’970 Patent. While AGIS I was pending, AGIS Software amended the claims of the
`’970 Patent to overcome the prior art asserted during the EPR. After the EPR proceedings
`concluded, Google filed a Rule 12(b)(1) motion to dismiss AGIS Software’s claims regarding the
`’970 Patent for lack of subject matter jurisdiction because AGIS Software 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. 2022-140-42, 2022 WL 1613192, at *1 (Fed. Cir. May 23,
`2022).
`6.
`The AGIS I case was assigned to Judge Beth Labson Freeman in this District.
`AGIS Software Development LLC v. Google LLC, 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 Software dismissed the ’970 Patent with prejudice. See the
`NDCA Case, Dkts. 437, 438. Other aspects of the NDCA Case remain pending before Judge
`Freeman.
`7.
`Before AGIS Software 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”).
`8.
`On April 4, 2023, the WDTX court granted Google’s unopposed motion to stay the
`WDTX Case. See WDTX Case, Dkt. 11. As stated in the unopposed motion to stay, AGIS
`Software 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
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`Google to transfer this case to the Northern District of California following the stay.” See WDTX
`Case, Dkt. 10 at 3 n.1.
`9.
`On July 20, 2023, while the case was still stayed, AGIS Software voluntarily
`dismissed the WDTX Case, stating that the dismissal was without prejudice pursuant to Federal
`Rule of Civil Procedure 41(a)(1)(A)(i). See WDTX Case, Dkt. 12.
`10.
`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.
`11.
`An actual and justiciable controversy therefore exists under 28 U.S.C. §§ 2201-
`2202 between Google and AGIS regarding the ’970 Patent.
`THE PARTIES
`12.
`Plaintiff Google LLC is a subsidiary of Alphabet Inc. with its principal place of
`business located at 1600 Amphitheatre Parkway, Mountain View, California 94043.
`13.
`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.
`14.
`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.
`15.
`On information and belief, Defendant AGIS Software is an agent and alter ego of
`AGIS, Inc and AGIS Holdings, 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
`16.
`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
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`PLAINTIFF’S AM. COMPLAINT FOR
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`U.S.C. §§ 1331, 1338(a), 2201 and 2202.
`I.
`AGIS Software And AGIS, Inc. Accused Google Of Infringing The ’970 Patent
`Based On FMD
`17.
`AGIS Software asserted the ’970 Patent against FMD and Google in AGIS I,
`which was transferred to the NDCA, in the WDTX Case, and, along with AGIS, Inc., in
`International Trade Commission (“ITC”) Investigation No. 337-TA-1347 (“ITC Action”). AGIS
`Software dismissed its ’970 Claims from the NDCA Case, voluntarily dismissed the WDTX case,
`and, along with AGIS, Inc., voluntarily withdrew its complaint in the ITC Action.
`II.
`Google Seeks Declaratory Judgments That It Does Not Infringe The ’970 Patent
`And That The ’970 Patent Is Invalid And Unenforceable
`18.
`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 may be configured to run FMD.
`19.
`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
`declaratory judgment, under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.
`20.
`An actual and justiciable controversy with respect to the ’970 Patent exists
`between Google and AGIS Software, and also exists between Google and AGIS, Inc., and AGIS
`Holdings under an alter ego theory.
`III. AGIS Is Subject To The Specific Jurisdiction Of This Court
`21.
`AGIS Software, AGIS, Inc., and AGIS Holdings are each subject to this Court’s
`specific jurisdiction, pursuant to due process and/or the California Long Arm Statute. As an
`initial matter, the facts supporting personal jurisdiction individually over AGIS Software and
`AGIS, Inc. also confer jurisdiction over each other AGIS entity because: (A) AGIS Software,
`AGIS, Inc., and/or AGIS Holdings are alter egos of each other, such that contacts with the State
`of California by any of the AGIS Entities should be considered in the personal jurisdiction
`analysis for each AGIS Entity; and (B) AGIS Software is a sham entity created to avoid
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`jurisdiction and its corporate structure should be ignored. Specific jurisdiction exists based on
`(i) the activities of AGIS Software and AGIS Inc. over a long period of time purposefully directed
`at the state of California, including at Google and other residents of this state; (ii) AGIS Software
`and AGIS Inc. having purposefully directed its patent licensing activities at the State of
`California, including at Google and other California companies; (iii) AGIS Software and AGIS
`Inc. having engaged in business-related activities over a long period of time that are directed to
`Google and other customers and potential customers in the state of California such that AGIS
`Software and AGIS Inc. has purposefully availed itself of the privilege of doing business in this
`state; and (iv) AGIS Software’s agreement in the WDTX Case to transfer the very dispute that is
`the subject of this declaratory judgment action to the NDCA. The claims asserted herein arise out
`of or relate to activities by AGIS Software and AGIS Inc. within and directed at this forum.
`Further, the assertions of personal jurisdiction are reasonable and fair.
`A.
`AGIS Software, AGIS, Inc., And/Or AGIS Holdings Are Alter Egos Of Each
`Other
`
`22.
`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 for each AGIS Entity.
`23.
`On information and belief, AGIS Software self-describes as an “inanimate entity.”
`24.
`On information and belief, AGIS Software is inadequately capitalized.
`25.
`AGIS Software, AGIS Holdings, and AGIS, Inc. commingle funds and other
`
`assets.
`
`26.
`On information and belief, AGIS Software, 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.
`27.
`AGIS Software’s principal source of revenue is from patent licenses.
`28.
`On information and belief, proceeds from lawsuits filed by AGIS Software
`involving the ’970 Patent and related patents, and related patent license agreements, were paid to
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`PLAINTIFF’S AM. COMPLAINT FOR
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`CASE NO. 5:23-CV-03624-BLF
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`AGIS, Inc. or AGIS Holdings rather than AGIS Software.
`29.
`On information and belief, AGIS, Inc. and AGIS Holdings’ principal source of
`revenue comes from proceeds from lawsuits filed by AGIS Software involving the ’970 Patent
`and related patents and related patent license agreements.
`30.
`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.
`
`31.
`On information and belief, AGIS Software, AGIS Holdings, and AGIS, Inc.
`disregard corporate formalities and fail to maintain an arm’s length relationship.
`32.
`On information and belief, AGIS, Inc. transferred patents and patent applications,
`including the ’970 Patent, to AGIS Holdings without consideration.
`33.
`On information and belief, AGIS Holdings transferred patents and patent
`applications, including the ’970 Patent, to AGIS Software without consideration.
`34.
`On information and belief, electronic inquiries submitted to AGIS Software’s
`website are transmitted to AGIS, Inc.
`35.
`AGIS Holdings and AGIS, Inc. share a business address at 92 Lighthouse Drive,
`Jupiter, FL 33469. On information and belief, AGIS Software shares business addresses with
`AGIS Holdings and AGIS, Inc.
`36.
`On information and belief, AGIS, Inc. pays for office expenses at the business
`location shared between AGIS, Inc., AGIS Holdings, and AGIS Software in Jupiter, Florida.
`37.
`AGIS Software, AGIS Holdings, and AGIS, Inc. use the same employees.
`38.
`AGIS Software has no employees of its own, and employees of AGIS, Inc.
`perform work for AGIS Software.
`39.
`On information and belief, AGIS Holdings has no employees of its own, and
`employees of AGIS, Inc. perform work on behalf of AGIS Holdings.
`40.
`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,
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`PLAINTIFF’S AM. COMPLAINT FOR
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`CASE NO. 5:23-CV-03624-BLF
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`or other company meetings.
`41.
`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.
`42.
`AGIS Software, AGIS Holdings, and AGIS, Inc. have identical directors and/or
`officers.
`43.
`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.
`44.
`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).
`45.
`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.
`B.
`AGIS Software Is A Sham Entity Created To Avoid Jurisdiction And Its
`Corporate Structure Should Be Ignored
`
`46.
`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.
`47.
`On June 15, 2017, AGIS, Inc. assigned the ’970 Patent to AGIS Holdings. On
`information and belief, the assignment was without consideration.
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`CASE NO. 5:23-CV-03624-BLF
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`48.
`On the same day, AGIS Holdings assigned the ’970 Patent to AGIS Software. On
`information and belief, the assignment was without consideration.
`49.
`Both AGIS, Inc. and AGIS Software are wholly owned subsidiaries of AGIS
`Holdings.
`50. Malcom K. Beyer, Jr., the named inventor of the ’970 Patent, is the CEO of AGIS
`Software, AGIS Holdings, and AGIS, Inc.
`51.
`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.
`52.
`AGIS, Inc. has regular contacts with California as discussed below.
`53.
`AGIS Software and AGIS, Inc. collectively asserted the ’970 Patent against FMD
`and Google in the ITC Action.
`54.
`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 Purposefully Directed Its Patent Licensing Activities To
`California Companies Subjecting It To Specific Jurisdiction
`
`55.
`AGIS Software is a patent licensing company that licenses its patent portfolio,
`including the ’970 Patent.
`56.
`AGIS Software has no employees.
`57.
`AGIS Software has intentionally directed activities and communications to the
`State of California.
`58.
`AGIS Software’s principal source of revenue is from patent licenses with
`California companies and other companies operating in the State of California.
`
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`CASE NO. 5:23-CV-03624-BLF
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`i.
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`AGIS Entities’ Negotiations, Pre-Suit Communications, And Other
`Pre-Suit Contacts With Google
`
`59.
`As part of AGIS I, AGIS Software argued that its pre-suit communications, and
`those of AGIS, Inc., with Google gave Google pre-suit knowledge of AGIS’s patents and
`Google’s alleged infringement of those patents, including the ’970 Patent. See AGIS I, Dkt. 297.
`AGIS Software argued that these communications demonstrated that AGIS had provided pre-suit
`notice of Google’s alleged infringement of the ’970 Patent based on FMD under 35 U.S.C. § 287,
`and that Google had pre-suit knowledge of its alleged infringement to sustain claims by AGIS
`Software that Google is liable for willful infringement, inducing infringement, and contributing to
`infringement of the ’970 Patent based on FMD. Id.
`60.
`For example, as part of AGIS I, AGIS Software argued that its subpoenas to
`Google regarding FMD in 2018 gave Google pre-suit knowledge of AGIS’s patents and Google’s
`alleged infringement of those patents, including the ’970 Patent. Id.
`61.
`On June 21, 2017, AGIS Software asserted the ’970 Patent, among other claims,
`against Huawei Device Co., Ltd., Huawei Device USA, Inc., Huawei Technologies Co., Ltd.,
`Huawei Technologies USA, Inc., HTC Corporation, LG Electronics, Inc., ZTE Corporation, ZTE
`(TX), Inc., and ZTE (USA) Inc. based on their hardware devices’ use of FMD. AGIS Software
`Development, LLC v. Huawei Device USA Inc., No. 2:17-cv-0513-JRG (E.D. Tex.) (lead case).
`62.
`In connection with AGIS Software’s litigation asserting the ’970 Patent against
`these defendants, on August 24, 2018, AGIS Software served Google with third-party deposition
`and document subpoenas, requesting testimony, source code, and documents about FMD.
`Service was made on Google’s Registered Agent in the Northern District of California.
`63.
`As another example, as part of AGIS I, AGIS Software argued that its settlement
`licensing negotiations with Google in 2018 gave Google pre-suit knowledge of AGIS’s patents
`and Google’s alleged infringement of those patents, including the ’970 Patent. See AGIS I, Dkt.
`297.
`
`64.
`
`On May 15, 2018, Google filed a petition for inter partes review (“IPR”)
`
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`PLAINTIFF’S AM. COMPLAINT FOR
`DECLARATORY JUDGMENT
`CASE NO. 5:23-CV-03624-BLF
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`Case 5:23-cv-03624-BLF Document 42 Filed 11/13/23 Page 11 of 56
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`challenging the patentability of claims 1 and 3-9 of the ’970 Patent. See Google IPR, Paper No.
`1. Shortly after the Google IPR was filed, but before AGIS Software filed suit asserting
`infringement of the ’970 Patent by Google, AGIS entities including at least AGIS Software
`directly engaged in settlement and patent licensing negotiations with Google, pertaining to
`AGIS’s patents. The negotiations included calls between AGIS and Google on at least June 25,
`2018, and July 16, 2018.
`65.
`As another example, as part of AGIS I, AGIS Software argued that other pre-suit
`contacts between AGIS, Inc. and Google since 2008 (as detailed below in Section III.D) gave
`Google pre-suit knowledge of AGIS’s patents and Google’s alleged infringement of those patents,
`including the ’970 Patent. See AGIS I, Dkt. 297.
`66.
`In connection with the NDCA Case, AGIS entities including at least AGIS
`Software agreed to private mediation before California-based mediator Jeff Kichaven.
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`ii. AGIS Entities’ Licensing Activities, Commercial Relationship, And
`Negotiations With Third Parties
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`67.
`AGIS entities including at least AGIS Software have 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.1 (“Facebook”), Uber
`Technologies, Inc. d/b/a UBER (“Uber”), and Life360, Inc. (“Life360”), and with companies or
`their affiliates 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”).
`
`1 On information and belief, Facebook, Inc. is now Meta Platforms, Inc.
`
`PLAINTIFF’S AM. COMPLAINT FOR
`- 11 -
`DECLARATORY JUDGMENT
`CASE NO. 5:23-CV-03624-BLF
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`Case 5:23-cv-03624-BLF Document 42 Filed 11/13/23 Page 12 of 56
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`68.
`AGIS’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. See Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147,
`1155 (Fed. Cir. 2021).
`69.
`AGIS’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 related to this
`declaratory judgment action concerning the same patent to support a finding of specific
`jurisdiction. Id. at 1156.
`iii.
`AGIS Entities’ Past License With Apple And Related Negotiations
`
`70.
`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.
`71.
`On information and belief, Apple currently has or previously had headquarters at 1
`Apple Park Way Cupertino, California 95014.
`72.
`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.
`73.
`On information and belief, AGIS entities including at least AGIS Software
`negotiated, including through numerous written email and/or other communications, with Apple
`to obtain the Apple License.
`iv.
`AGIS Entities’ Patent License With Huawei And Related Negotiations
`
`74.
`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.
`
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`PLAINTIFF’S AM. COMPLAINT FOR
`DECLARATORY JUDGMENT
`CASE NO. 5:23-CV-03624-BLF
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`Case 5:23-cv-03624-BLF Document 42 Filed 11/13/23 Page 13 of 56
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`2:17-cv-00513 (E.D. Tex.), Dkt. 1 ¶¶ 8-11, 20, 29, 42, 55.
`75.
`On information and belief, Huawei currently has or previously had an affiliate
`office in California.
`76.
`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.
`77.
`On information and belief, AGIS entities including at least AGIS Software
`negotiated, including through numerous written email and/or other communications, with Huawei
`to obtain the Huawei License.
`v.
`AGIS Entities’ Patent License With HTC And Related Negotiations
`
`78.
`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.
`79.
`On information and belief, HTC currently has or previously had an affiliate office
`in California.
`80.
`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.
`81.
`On information and belief, AGIS entities including at least AGIS Software
`negotiated, including through numerous written email and/or other communications, with HTC to
`obtain the HTC License.
`vi.
`AGIS Entities’ Patent License With LG And Related Negotiations
`
`82.
`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.
`83.
`On information and belief, LG currently has or previously had an affiliate office in
`California.
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`
`PLAINTIFF’S AM. COMPLAINT FOR
`DECLARATORY JUDGMENT
`CASE NO. 5:23-CV-03624-BLF
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`Case 5:23-cv-03624-BLF Document 42 Filed 11/13/23 Page 14 of 56
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`84.
`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.
`85.
`On information and belief, AGIS entities including at least AGIS Software
`negotiated, including through numerous written email and/or other communications, with LG to
`obtain the LG License.
`vii. AGIS Entities’ Patent License With ZTE And Related Negotiations
`
`86.
`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.
`87.
`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
`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.
`88.
`On information and belief, ZTE or a ZTE affiliate currently has or previously had
`an office located in California.
`89.
`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.
`90.
`On information and belief, AGIS entities including at least AGIS Software
`negotiated, including through numerous written email and/or other communications, with ZTE to
`obtain the ZTE License.
`viii. AGIS Entities’ Patent License With WhatsApp And Facebook And
`Related Negotiations
`
`91.
`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.
`
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`- 14 -
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`PLAINTIFF’S AM. COMPLAINT FOR
`DECLARATORY JUDGMENT
`CASE NO. 5:23-CV-03624-BLF
`
`
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`On information and belief, WhatsApp currently has or previously had an office in
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`92.
`California.
`93.
`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 or its affiliates, including the ’970 Patent.
`94.
`On information and bel