Case 5:23-cv-03624-BLF Document 44-1 Filed 11/27/23 Page 1 of 9
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`Alfred R. Fabricant
`afabricant@fabricantllp.com
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`Benjamin T. Wang
`bwang@raklaw.com
`Minna Y. Chan (CA SBN 305941)
`mchan@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-9226
`Attorneys for Defendants
`AGIS Holdings Inc., Advanced Ground
`Information Systems, Inc., and
`AGIS Software Development LLC
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`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`GOOGLE LLC,
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`
`
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`v.
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`Plaintiff,
`
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`AGIS HOLDINGS, INC., ADVANCED
`GROUND INFORMATION SYSTEMS,
`INC., AND AGIS SOFTWARE
`DEVELOPMENT LLC,
`
`
`Defendants.
`
` Case No. 3:23-cv-03624-PHK
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`DECLARATION OF MALCOLM K.
`BEYER, JR. IN SUPPORT OF MOTION
`TO DISMISS COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Complaint for Declaratory Judgment Filed:
`21-JUL-2023
`Deadline to Respond: 16-OCT-2023
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`Hearing Date: March 21, 2024
`Time: 9:00 a.m.
`Location: TBD
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`Case 5:23-cv-03624-BLF Document 44-1 Filed 11/27/23 Page 2 of 9
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`DECLARATION OF MALCOLM K. BEYER, JR.
`I, Malcolm K. Beyer, Jr., do hereby declare as follows:
`1.
`I submit this declaration based on my personal knowledge and in support of
`Defendants AGIS Holdings, Inc. (“AGIS Holdings”), Advanced Ground Information Systems, Inc.
`(“AGIS, Inc.”), and AGIS Software Development LLC’s (“AGIS Software”) (collectively,
`“Defendants”) Motion to Dismiss, Or in The Alternative, to Transfer to the Eastern District of Texas
`(“EDTX”), the Complaint for Declaratory Judgment filed by Google LLC (“Google” or “Plaintiff”)
`(Dkt. 1).
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`Background
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`I am the Chief Executive Officer (“CEO”) of Defendant AGIS Software, Defendant
`2.
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`AGIS, Inc., and Defendant AGIS Holdings.
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`3.
`I am the first-named inventor on U.S. Patent No. 8,213,970 (the “’970 Patent” or the
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`“Patent-in-Suit”) issued by the U.S. Patent and Trademark Office.
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`4.
`I live in Jupiter, Florida with my wife Margaret Beyer. We have lived in Jupiter,
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`Florida for over three decades.
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`5.
`I graduated from the U.S. Naval Academy in 1962 and was commissioned as a
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`Second Lieutenant in the U.S. Marine Corps. I later attended the U.S. Navy’s programming school
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`and was the lead programmer for the first automated Marine Corps Tactical Operations Center Link-
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`11 Navy Interface. After leaving active service, I worked at a number of well-known technology
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`companies, including System Development Corporation (considered the world’s first computer
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`software company) and Litton Industries. I then started several businesses which provided
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`technology and engineering solutions supporting defense and military customers.
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`In 1987, I co-founded Advanced Programming Concepts, Inc. (“APC”), a Texas
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`corporation based in Austin, Texas. APC operated primarily out of its main business location in
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`Austin, Texas. APC specialized in designing, building, and supporting systems for enabling
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`integration and sharing time-critical information across dissimilar military and defense applications.
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`At APC, I was the majority shareholder and Chairman until we sold the business to Ultra Electronics
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`RUSS AUGUST & KABAT
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`Case 5:23-cv-03624-BLF Document 44-1 Filed 11/27/23 Page 3 of 9
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`RUSS AUGUST & KABAT
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`in July 1999.
`In 2004, I founded Advanced Ground Information Systems, Inc. (“AGIS, Inc.”), a
`7.
`Florida corporation. AGIS, Inc.’s main business location is located at 92 Lighthouse Drive, Jupiter
`Florida. AGIS, Inc. also maintains business locations in Austin, TX and Kansas City, KS. AGIS,
`Inc. employs approximately 15 people.
`8.
`None of AGIS Inc.’s employees and consultants live or work in the Northern District
`of California.
`In 2013, AGIS, Inc. began a corporate restructuring plan for business growth
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`purposes. By 2017, AGIS, Inc.’s board of directors approved the restructuring plan which resulted
`in the formation of a parent corporation, AGIS Holdings, Inc. (“AGIS Holdings”), a Florida
`corporation. AGIS Holdings consists of two subsidiaries, AGIS, Inc. and AGIS Software
`Development LLC (“AGIS Software”), a limited liability company organized under Texas law. Each
`is a separate corporate entity and maintains separate corporate formalities. Each entity maintains
`separate bank accounts and keeps separate business records. AGIS Software was established in
`Texas because of my previous successful business operation in Texas and because of my
`longstanding personal connections to Texas, which I describe in more detail below. AGIS Software
`has an office and a separate data center in Marshall, Texas.
`10.
`As the CEO of AGIS Software, AGIS Inc., and AGIS Holdings, and as first-named
`inventor of the Patent-in-Suit, I will be one of the primary witnesses because I have knowledge of
`the businesses and the conception and reduction to practice of the Patent-in-Suit. I live and work in
`Jupiter, Florida. The distance from Jupiter, Florida to the Northern District of California is
`approximately 2,560 miles, while the distance to the Eastern District of Texas is approximately 940
`miles.
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`AGIS Software is the sole and exclusive owner of all right, title, and interest in and
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`to the ’970 Patent.
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`AGIS Software is a limited liability company organized under Texas law.
`13.
`AGIS Software maintains an office and its principal place of business at 100 W.
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`RUSS AUGUST & KABAT
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`Houston Street, Marshall, Texas 75670.
`14.
`AGIS, Inc. is a corporation organized under Florida law.
`15.
`AGIS, Inc. maintains its principal place of business at 92 Lighthouse Drive, Jupiter,
`FL 33469.
`AGIS Holdings is a corporation organized under Florida law.
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`AGIS Holdings maintains its principal place of business at 92 Lighthouse Drive,
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`Jupiter FL 33469.
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`AGIS Software, AGIS, Inc., and AGIS Holdings are not registered to do business in
`California.
`AGIS Software, AGIS, Inc., and AGIS Holdings do not have a registered agent for
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`service of process in California.
`20.
`AGIS Software, AGIS, Inc., and AGIS Holdings do not have offices, employees,
`equipment, bank accounts, or other assets in California.
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`AGIS Software, AGIS, Inc., and AGIS Holdings are not subject to taxes in California.
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`AGIS Software, AGIS, Inc., and AGIS Holdings do not manufacture products in
`California.
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`California.
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`in California.
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`California.
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`California.
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`AGIS Software, AGIS, Inc., and AGIS Holdings do not sign contracts in California.
`AGIS Software, AGIS, Inc., and AGIS Holdings do not recruit employees in
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`AGIS Software, AGIS, Inc., and AGIS Holdings do not sell products or services in
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`AGIS Software, AGIS, Inc., and AGIS Holdings do not solicit or engage in business
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`AGIS Software, AGIS, Inc., and AGIS Holdings do not lease or rent any property in
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`AGIS Software, AGIS, Inc., and AGIS Holdings do not own property in California.
`AGIS Software, AGIS, Inc., and AGIS Holdings have never filed a lawsuit in
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`Case 5:23-cv-03624-BLF Document 44-1 Filed 11/27/23 Page 5 of 9
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`California.
`AGIS Software’s efforts to enforce its rights in the ’970 Patent consist only of
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`litigating patent infringement lawsuits filed in the Eastern District of Texas.
`Defendants’ Witnesses and Other Sources of Proof are in or Closer to the Eastern District of
`Texas Than to the Northern District of California
`As stated above, AGIS Software is a limited liability company organized and existing
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`under the laws of the State of Texas. AGIS Software maintains an office and its principal place of
`business at 100 W. Houston Street, Marshall, Texas 75670. The lease on AGIS Software’s Marshall
`office has run from June 1, 2017, and continues to present. AGIS Software’s documents are
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`maintained at this location, including patents, files histories, assignment records, prosecution
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`records, formation documents, licenses, agreements, and corporate records. AGIS, Inc. also conducts
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`business and maintains documents and records at AGIS Software’s Marshall office.
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`AGIS Software has a data center located at 1005 Stuart Lane, Marshall, Texas 75672.
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`The Marshall data center hosts servers, code, applications, and services necessary to run operations
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`for AGIS, Inc.’s LifeRing and ASSIST products and solutions. The Marshall data center is used to
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`store code, documents, and other data related to AGIS Inc.’s LifeRing and ASSIST products and
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`solutions. The Marshall data center is used for research and development projects. AGIS, Inc.
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`invoices AGIS Software for AGIS Inc.’s provision of personnel and services related to the use,
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`maintenance, and operation of the Marshall data center and for labor, travel expenses, and other
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`expenses related to work performed at the Marshall data center.
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`AGIS, Inc. also maintains a business location in Jupiter, Florida, at which it employs
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`several software developers. Documents relevant to this action are located at AGIS Software’s
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`Marshall office, AGIS Software’s Marshall data center, and AGIS Inc.’s Jupiter office.
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`AGIS Software and AGIS, Inc. have no business locations, employees, or other
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`presence in or connection to the Northern District of California.
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`For over 15 years, AGIS Inc.’s primary business has revolved around offering the
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`“LifeRing” products and solutions which include client-based applications and a server-based
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`solutions for, generally, enabling smartphone, tablet, and PC users to easily and rapidly establish
`secure ad hoc digital networks. LifeRing 5.0 and its predecessor versions have been offered and sold
`to military, defense, and first-responder customers, as well as private industry customers. In addition
`to LifeRing, AGIS, Inc. offers the “ASSIST” solution which is an emergency broadcast and response
`system connecting employees to a company command center and a network of responders through
`personal smartphones. Technical documents and code relevant to LifeRing and ASSIST products
`and solutions are located in or accessible from Marshall, Texas.
`36.
`The research, development, design, testing, manufacture, marketing, contract
`procurement, and sales activities for the LifeRing and ASSIST solutions has occurred in Florida,
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`Kansas, and Texas. Thus, AGIS Software and AGIS, Inc.’s documents relevant to this action and
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`such activities are located at these locations, each of which is substantially closer to the Eastern
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`District of Texas than to the Northern District of California.
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`37.
`The Eastern District of Texas is a far more convenient forum for this action than the
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`Northern District of California for individuals working for or affiliated with AGIS.
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`For example, since 2010, Eric Armstrong has worked as a programmer and software
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`developer for AGIS Inc. Since 2017, Mr. Armstrong has lived and worked in Allen, Texas, a city
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`within Collin County and within the Eastern District of Texas. Prior to moving to Allen, Mr.
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`Armstrong worked from AGIS, Inc. business locations in Kansas and Missouri. Until approximately
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`2014, Mr. Armstrong was an employee of AGIS, Inc. at which point he chose to convert his working
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`relationship to that of consultant to AGIS, Inc.
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`39. Mr. Armstrong has played, and continues to play, a crucial role in developing
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`software for AGIS Inc. Mr. Armstrong is intimately involved in AGIS Inc.’s marketing and sales
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`efforts for the LifeRing and ASSIST products and solutions. Mr. Armstrong possesses knowledge
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`about the inventions covered by the Patents-in-Suit that will be relevant to this action. Mr. Armstrong
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`is responsible for developing a substantial portion of the software included in the LifeRing and
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`ASSIST solutions. Mr. Armstrong is also responsible for designing and developing client-side and
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`server-side software for the LifeRing and ASSIST solutions. Mr. Armstrong works under the direct
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`control and supervision of AGIS Inc. employee Sandel Blackwell, and works with other AGIS, Inc.
`employees such as Rebecca Clark on software development and quality assurance. Mr. Armstrong
`is expected to have documents and e-mails relevant to this action in his office in the Eastern District
`of Texas including technical, marketing, and sales documents for the LifeRing and ASSIST products
`and solutions, including documents relevant to the development, testing, maintenance, operating,
`servicing, and upgrading of the LifeRing and ASSIST products and solutions which are stored and/or
`accessible on his computer in Allen, Texas. I have confirmed with Mr. Armstrong that the Eastern
`District of Texas is more convenient for him than the Northern District of California.
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`Sandel Blackwell is the President and a Director at AGIS, Inc. and the President of
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`AGIS Software. Mr. Blackwell is responsible for managing the development of the software
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`included in the LifeRing and ASSIST solutions. Mr. Blackwell maintains regular communication
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`with AGIS Inc.’s programmers and software developers in Florida, Kansas, and Texas. Mr.
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`Blackwell manages Mr. Armstrong and regularly communicates with Mr. Armstrong in the Eastern
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`District of Texas. Mr. Blackwell has strong personal ties to Texas. He was raised in Texas, has
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`family in Texas, and attended college in Texas, and worked in Texas for many years, including as
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`the vice president for APC. Mr. Blackwell routinely travels to Texas. Mr. Blackwell travels to the
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`Eastern District of Texas to perform work in the Marshall data center. I have confirmed with Mr.
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`Blackwell that for the reasons stated above, the Eastern District of Texas is more convenient for him
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`than the Northern District of California if he is called as a witness.
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`The Eastern District of Texas is a more convenient forum than the Northern District
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`of California for all other third-party AGIS, Inc. employees and consultants who possess knowledge
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`relevant to this action. Rebecca Clark has been employed by AGIS, Inc. since 2012, and she currently
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`works in Kansas City, Kansas. Ms. Clark is a graduate of Texas A&M University at College Station,
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`Texas. Ms. Clark reports directly to Mr. Blackwell and communicates on a regular basis with Mr.
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`Armstrong in the Eastern District of Texas. Ms. Clark travels on a regular basis to the Eastern District
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`of Texas to perform work in the Marshall data center. I have confirmed with Ms. Clark that the
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`Eastern District of Texas is more convenient for him than the Northern District of California
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`Christopher Rice is a named inventor on a number of AGIS Software’s patents and a
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`consultant of AGIS, Inc. and works from Superior, CO. Mr. Rice is a software developer and
`programmer who works on the LifeRing solution. I have confirmed with Mr. Rice that the Eastern
`District of Texas is more convenient for him than the Northern District of California, and he has
`agreed to travel to the Eastern District of Texas if called on to testify.
`43. Margaret Beyer is the Corporate Secretary of AGIS, Inc. and AGIS Software. Mrs.
`Beyer works from AGIS, Inc.’s Jupiter, Florida office. Malcolm K. Beyer, III is a programmer and
`system administrator for AGIS, Inc. and works from AGIS, Inc.’s Jupiter, Florida office and Boca
`Raton, Florida. Ronald Wisneski is the Chief Financial Officer and Treasurer of AGIS, Inc. and
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`AGIS Software and works in Jupiter, Florida. George Barros is AGIS Inc.’s Director of Business
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`Development. Mr. Barros lives and works from Vienna, Virginia and keeps documents and materials
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`relevant to AGIS Inc.’s ongoing sales and marketing efforts and contract procurement for AGIS
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`Inc.’s LifeRing products and solutions in Vienna, Virginia. I have confirmed with Mrs. Beyer, Mr.
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`Wisneski, and Mr. Barros that the Eastern District of Texas is more convenient for each of them than
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`the Northern District of California
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`44.
`AGIS Software’s technical experts reside and work in Texas. Dr. Brogioli resides and
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`works in Texas with an office in Austin, Texas. Mr. Joseph McAlexander, AGIS Software’s prior
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`technical expert, resides and works in the Eastern District of Texas and possesses expert reports
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`regarding the validity of the ’970 Patent. Both Dr. Brogioli and Mr. McAlexander have confirmed
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`that the Eastern District of Texas is more convenient than the Northern District of California.
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`I have confirmed with each of the out-of-state employees and consultants, including
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`such individuals named above, that they are willing and able to travel to Marshall, Texas if called
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`on to testify, and that the Eastern District of Texas is a more convenient location (as compared to
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`the Northern District of California) to travel to if called on to testify.
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`Over the course of my career I have actively engaged in business in and around the
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`Eastern District of Texas and in the State of Texas and have longstanding personal and family
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`business connections to the Eastern District of Texas. My family has owned over 2500 acres of land
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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`Case 5:23-cv-03624-BLF Document 44-1 Filed 11/27/23 Page 9 of 9
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`in Bowie County, Texas since 1867. I have owned parcels of land in Bowie County since 1962. I
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`2 own a total of 412 acres situated approximately 6 miles south of the town of Boston, i.e., "Old
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`3 Boston," on Texas Highway 8. My property in Bowie County is currently leased to International
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`4 Paper through June 30, 2051. As described above, I founded and worked for APC in Texas from
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`5 1987 through 1999. These longstanding business and personal connections to the Eastern District of
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`6 Texas were some of the reasons I decided to form AGIS Software in Texas, establish its office in
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`7 Marshall, and expand the business to include the Marshall data center.
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`I declare under the penalty of perjury that the foregoing is true and correct. Executed this
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`16th day of October, 2023 in Jupiter, Florida.
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`DECLARATION OF MALCOLM K. BEYER, JR., CASE NO. 3:23-cv-03624-PHK
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