Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 1 of 9 PageID #: 445
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`CIVIL ACTION NO. 2:17-cv-513-JRG
`
`HUAWEI DEVICE USA INC., HUAWEI
`DEVICE CO., LTD. AND HUAWEI DEVICE
`(DONGGUAN) CO., LTD.
`
`JURY TRIAL DEMANDED
`
`Defendants.
`
`DECLARATION OF JAMES BLACKBURN IN SUPPORT OF DEFENDANTS’
`MOTION TO TRANSFER VENUE
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`I, James Blackburn, state and declare as follows:
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`1.
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`I am a member of Arnold & Porter Kaye Scholer, LLP (“APKS”), counsel of
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`record for Defendants Huawei Device USA Inc. (“Huawei USA”), Huawei Device Co., Ltd.
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`(“Huawei Device”), and Huawei Device (Dongguan) Co., Ltd. (“Huawei Dongguan”)
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`(collectively, the “Huawei Defendants”). I am a member of the Bar of the State of California
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`and have been admitted to practice in the United States District Court for the Eastern District of
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`Texas. I provide this declaration in support of Defendants’ motion to transfer the above-
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`captioned action to the United States District Court for the Northern District of California (“N.D.
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`Cal.”). I have personal knowledge of the matters stated in this declaration and would testify
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`competently and truthfully to them if called upon to do so.
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`2.
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`Attached hereto as Exhibit 1 is a true and correct copy of the “Patent Assignment
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`Abstract of Title” for United States (“U.S.”) Patent No. 8,213,970 (the “’970 Patent”) entitled
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`“Method of Utilizing Forced Alerts for Interactive Remote Communications,” retrieved from
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`1
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 2 of 9 PageID #: 446
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`http://portal.uspto.gov/pair/PublicPair, which is a publicly available website of the United States
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`Patent and Trademark Office (the “USPTO”), on June 28, 2017. The Abstract of Title for the
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`’970 Patent shows each of the recorded assignments for the ’970 Patent, including an assignment
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`by assignor AGIS Holdings, Inc. to Plaintiff AGIS Software Development LLC (“AGIS”) on
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`June 20, 2017.
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`3.
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`Attached hereto as Exhibit 2 is a true and correct copy of the “Patent Assignment
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`Abstract of Title” for U.S. Patent No. 9,408,055 (the “’055 Patent”) entitled “Method to Provide
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`Ad Hoc and Password Protected Digital and Voice Networks,” retrieved from
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`http://portal.uspto.gov/pair/PublicPair on June 28, 2017. The Abstract of Title for the ’055
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`Patent shows each of the recorded assignments for the ’055 Patent, including an assignment by
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`assignor AGIS Holdings, Inc. to AGIS on June 20, 2017.
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`4.
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`Attached hereto as Exhibit 3 is a true and correct copy of the “Patent Assignment
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`Abstract of Title” for U.S. Patent No. 9,445,251 (the “’251 Patent”) entitled “Method to Provide
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`Ad Hoc and Password Protected Digital and Voice Networks,” retrieved from
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`http://portal.uspto.gov/pair/PublicPair on June 28, 2017. The Abstract of Title for the ’251
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`Patent shows each of the recorded assignments for the ’251 Patent, including an assignment by
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`assignor AGIS Holdings, Inc. to AGIS on June 20, 2017.
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`5.
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`Attached hereto as Exhibit 4 is a true and correct copy of the “Patent Assignment
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`Abstract of Title” for U.S. Patent No. 9,467,838 (the “’838 Patent”) entitled “Method to Provide
`
`Ad Hoc and Password Protected Digital and Voice Networks,” retrieved from
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`http://portal.uspto.gov/pair/PublicPair on June 28, 2017. The Abstract of Title for the ’838
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`Patent shows each of the recorded assignments for the ’838 Patent, including an assignment by
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`assignor AGIS Holdings, Inc. to AGIS on June 20, 2017.
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`2
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 3 of 9 PageID #: 447
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`6.
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`Attached hereto as Exhibit 5 is a true and correct copy of the Certificate of
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`Formation for AGIS, retrieved from the Office of the Secretary of State of Texas, which shows
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`that AGIS was formed as a Texas limited liability company on June 1, 2017. The Certificate of
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`Formation identified AGIS Holdings Inc. as the only member of AGIS and lists the address of
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`AGIS Holdings Inc. as 192 Lighthouse Drive, Jupiter, Florida 33469.
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`7.
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`Attached hereto as Exhibit 6 is a true and correct copy of a Certificate of
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`Correction filed for AGIS, retrieved from the Office of the Secretary of State of Texas, which
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`corrects the address previously provided for AGIS Holdings Inc. The corrected address
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`identified in Exhibit 6 for AGIS Holdings Inc. is 92 Lighthouse Drive, Jupiter, Florida 33469.
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`8.
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`Attached hereto as Exhibit 7 is a true and correct copy of a printout from the
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`Texas Secretary of State’s SOSDirect Database setting forth AGIS’s corporate filing history with
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`the Texas Secretary of State. The Texas Secretary of State’s records for AGIS identify its
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`business address as 211 E. 7th Street, Suite 620, Austin, Texas 78701. This same address is
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`listed for AGIS’s registered agent, Corporation Service Company, in Exhibit 5.
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`9.
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`Attached hereto as Exhibit 8 is a true and correct copy of a printout from the
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`Texas Office of the Comptroller that lists 211 E. 7th Street, Suite 620, Austin, Texas 78701 as
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`AGIS’s mailing address. That same document also identifies 211 E. 7th Street, Suite 620,
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`Austin, Texas 78701 as the address for AGIS’s registered agent, Corporation Service Company.
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`10.
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`Attached hereto as Exhibit 9 is a true and correct copy of the Electronic Articles
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`of Incorporation filed with the Florida Secretary of State for AGIS’s managing member, AGIS
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`Holdings Inc. The Articles identify AGIS Holdings Inc.’s address as 92 Lighthouse Drive,
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`Jupiter, Florida, 33469. The Articles identify four initial officers and directors of AGIS
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`Holdings Inc. 92 Lighthouse Drive is identified as the address for three of the officers and
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`3
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 4 of 9 PageID #: 448
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`directors: Malcolm K. Beyer, Jr., Sandel S. Blackwell, and Margaret R. Beyer. The fourth
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`identified officer and director is Ronald H. Wisneski, with a listed address of 810 Saturn Street,
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`Jupiter, Florida 33477.
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`11.
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`AGIS’s First Amended Complaint alleges that AGIS’s principal place of business
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`is 100 W. Houston Street, Marshall, Texas. (D.I. 20). Attached hereto as Exhibit 10 is a true and
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`correct copy of a printout from the U.S. Business segment of the Trans Union TLOxp Database
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`identifying the businesses and corporations located at 100 West Houston Street, Marshall, Texas,
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`as of September 6, 2017. 18 different entities are identified as being located at that address, but
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`AGIS is not one of them.
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`12.
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`AGIS has no known employees in Texas, and it conducts no business in Texas. I
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`have been unable to locate any evidence of AGIS’s business activities or any reference to AGIS
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`(other than its address and references to its litigation activities) as of November 14, 2017.
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`13.
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`AGIS’s First Amended Complaint alleges that AGIS licenses the Patents-in-Suit
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`to Advanced Ground Information Systems, Inc. (“AGIS, Inc.”). (D.I. 20 ¶ 14). Attached hereto
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`as Exhibit 11 is a true and correct copy of the Electronic Restated Articles of Incorporation filed
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`with the Florida Secretary of State for AGIS, Inc. The Restated Articles identify Malcolm K.
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`Beyer, Jr. as the only initial director. 92 Lighthouse Drive, Jupiter, FL 33469 is identified as the
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`address of AGIS, Inc. and for Beyer, Jr.
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`14.
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`Christopher Rice is a named co-inventor on the ’251 and ’838 Patents and, on
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`information and belief, resides in Redmond, Washington. Attached hereto as Exhibit 12 is a true
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`and correct copy of the ’251 Patent. Attached hereto as Exhibit 13 is a true and correct copy of
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`the ’838 Patent. Exhibits 12 and 13 list Christopher R. Rice as residing in Redmond,
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`Washington, which is closer to N.D. Cal. than to E.D. Tex.
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`4
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 5 of 9 PageID #: 449
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`15.
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`Daniel J. Burns was the prosecuting attorney for at least three of the four Patents-
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`In-Suit (i.e., the ’055 Patent, the ’838 Patent, and the ’251 Patent). Attached hereto as Exhibits
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`38-40 are true and correct copies of the Power of Attorney filed, as part of the prosecution
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`histories, in the applications for the ’055 Patent, the ’838 Patent, and the ’251 Patent,
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`respectively. Exhibits 38-40 each list Daniel J. Burns as authorized to act on behalf of the
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`assignee, Advanced Ground Information Systems, Inc. Attached hereto as Exhibit 14 is a true
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`and correct copy of the practitioner information for Daniel J. Burns from the USPTO’s Office of
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`Enrollment and Discipline. Exhibit 14 shows that Daniel J. Burns resides in Santa Clara, CA,
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`which is within N.D. Cal.
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`16.
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`Prior art reference U.S. Patent No. 8,798,593 was invented by Richard D. Haney,
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`who, on information and belief, resides in Northern California. Attached hereto as Exhibit 15 is
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`a true and correct copy of U.S. Patent No. 8,798,593, which shows that Richard D. Haney resides
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`in Union City, CA, which is within N.D. Cal. Attached hereto as Exhibit 16 is a true and correct
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`copy of Richard Haney’s LinkedIn profile, which shows that he is located in the San Francisco
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`Bay Area.
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`17.
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`Attached hereto as Exhibit 17 is a true and correct copy of prior art reference U.S.
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`Patent No. 7,091,852. On information and belief, at least the following inventors of prior art
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`reference U.S. Patent No. 7,091,852 reside in N.D. Cal.: Charles Mason; Raymond Burkley;
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`John Cronin; Gordon Taras; Jack Boniface; and Steven Taylor. Attached hereto as Exhibits 18,
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`19, and 20 are true and correct copies of the LinkedIn profiles for Charlie Mason, Raymond
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`Burkley, and Gordon Taras, respectively, which show that they are located in the San Francisco
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`Bay Area.
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`5
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 6 of 9 PageID #: 450
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`18.
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`Prior art reference U.S. Publication No. 2004/0054428 was invented by Michael
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`A. Sheha, Angie Sheha and Stephen Petilli, who, on information and belief, all reside in Laguna
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`Niguel, California, which is closer to N.D. Cal. than E.D. Texas. Attached hereto as Exhibit 21
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`is a true and correct copy of U.S. Publication No. 2004/0054428. Attached hereto as Exhibits
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`22, 23, and 24 are true and correct copies of the LinkedIn profiles for Michael Sheha, Angie
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`Sheha and Stephen Petilli, respectively, which show that they are located in Orange County, CA.
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`19.
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`Prior art reference U.S. Patent No. 7,143,130, was invented by Ching-Fang Lin,
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`who is listed as residing in Simi Valley, CA, which is closer to N.D. Cal. than E.D. Tex.
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`Attached here to as Exhibit 25 is a true and correct copy of U.S. Patent No. 7,143,130.
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`20.
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`“Find My Phone” is the only application identified in the complaint that is not
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`created and provided by Google. Find My Phone is provided by Family Safety Production.
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`Attached hereto as Exhibit 26 is a true and correct copy of the Google Play store website, which
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`shows that Family Safety Production provides the “Find My Phone” application. Exhibit 26
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`identifies the developer Family Safety Production’s address as 539 Bryant St., Suite 402, San
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`Francisco, CA. Attached hereto as Exhibit 27 is a true and correct copy of Family Safety
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`Production’s Android Developer Info on the website AppBrain, which lists the same address in
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`San Francisco, CA. Exhibit 27 also identifies “Find My Phone” as one of Family Safety
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`Production’s highly ranked applications.
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`21.
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`On information and belief, Family Safety Production does business as Life360,
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`Inc. (“Life360”). Attached hereto as Exhibit 28 is a true and correct copy of Life360’s company
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`profile on the Bloomberg website. Exhibit 28 shows that Life360 is located at 539 Bryant St.,
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`Suite 402, San Francisco, CA, which is the same address as Family Safety Production.
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`6
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 7 of 9 PageID #: 451
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`22.
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`Advanced Ground Information Systems, Inc. (“AGIS Inc.”), the predecessor of
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`AGIS and the parent corporation likely controlling this suit, is well aware of the location of
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`Life360. AGIS Inc. previously litigated against Life360 regarding a parent patent to the Patents-
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`in-Suit. Attached hereto as Exhibit 29 is a true and correct copy of the Complaint in Advanced
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`Ground Information Systems, Inc. v. Life360, Inc., No. 9:14-cv-80651 (S.D. Fla. May 16, 2014).
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`In paragraph 4 of Exhibit 29, AGIS Inc. asserts that Life360 has a principal place of business at
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`539 Bryant Street, Suite 402, San Francisco, California.
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`23.
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`AGIS Inc. also previously litigated against Life360 in N.D. Cal., regarding
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`allegations of false patent marking, tortious interference with contract, intentional interference
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`with economic advantage, and unfair competition. Attached hereto as Exhibit 30 is a true and
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`correct copy of the First Amended Complaint in Life360, Inc. v. Advanced Ground Information
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`Systems, Inc., No. 4:15-cv-00151 (N.D. Cal. Jan. 26, 2015). In paragraph 2 of Exhibit 30,
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`Life360 states that it has a principal place of business at 539 Bryant Street, Suite 402, San
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`Francisco, California.
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`24.
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`An online search of Expedia reveals that there are numerous flights from Wuhan
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`Tianhe International Airport (WUH) to San Francisco International Airport (SFO) with a flight
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`time between 12 and 20 hours. WUH is the closest airport to the Huawei Device and Huawei
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`Dongguan facilities in China where their witnesses are located. Furthermore, there are some
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`nonstop flights and numerous flights from WUH to SFO that only require one stop to change
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`planes. Attached hereto as Exhibit 31 is a true and correct copy of the search results on Expedia
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`for flights from WUH to SFO, with the results sorted by shortest duration. By contrast, an online
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`search of Expedia reveals that flights from WUH to Shreveport, Louisiana require at least 2 stops
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`and have a flight time between 21 and 62 hours. Flying to Shreveport is the most convenient
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`7
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 8 of 9 PageID #: 452
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`destination to get to EDTX from WUH as it offers more flights and is roughly equidistant to the
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`EDTX courthouse when compared with Longview East Texas Regional airport. Attached hereto
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`as Exhibit 32 is a true and correct copy of the search results on Expedia for flights from WUH to
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`Shreveport, with the results sorted by shortest duration.
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`25.
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`An online search of Expedia reveals that there are numerous flights from San
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`Diego to SFO with a flight time of approximately 1.5 hours. Attached hereto as Exhibit 33 is a
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`true and correct copy of the search results on Expedia for flights from San Diego to SFO, with
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`the results sorted by shortest duration. By contrast, flights from San Diego to Shreveport have a
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`flight time of approximately 5-6 hours. Attached hereto as Exhibit 34 is a true and correct copy
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`of the search results on Expedia for flights from San Diego to Shreveport, with the results sorted
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`by shortest duration.
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`26.
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`An online search of Expedia reveals that there are numerous flights from Seattle,
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`Washington to SFO with a flight time of approximately 2 hours. Attached hereto as Exhibit 35 is
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`a true and correct copy of the search results on Expedia for flights from Seattle to SFO, with the
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`results sorted by shortest duration. By contrast, flights from Seattle to Shreveport have a flight
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`time of approximately 6-7 hours. Attached hereto as Exhibit 36 is a true and correct copy of the
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`search results on Expedia for flights from Seattle to Shreveport, with the results sorted by
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`shortest duration.
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`27.
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`The Eastern District of Texas and the Northern District of California offer
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`comparable litigation timelines, and both districts are very familiar with patent law. A true and
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`correct copy of the Combined Civil and Criminal Federal Court Management Statistics, reported
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`through June 30, 2017, is attached hereto as Exhibit 37. According to the Combined Civil and
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`Criminal Federal Court Management Statistics, it takes a median of 7.1 months from the filing to
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`Case 2:17-cv-00513-JRG Document 36-7 Filed 11/14/17 Page 9 of 9 PageID #: 453
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`disposition of a civil case and a median of 22.0 months from filing to trial of a civil case in E.D.
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`Tex. Ex. 37 at 35. By contrast, it takes a median of 7.4 months from the filing to disposition of
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`a civil case and 26.1 months from filing to trial of a civil case in N.D. Cal. Ex. 37 at 66.
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`I declare under penalty of perjury that the foregoing is true and correct. Executed in Los
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`Angeles, California on November 14, 2017.
`
`/s/ James Blackburn
`James Blackburn
`Attorney for Huawei Defendants
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`9
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