Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 1 of 9 PageID #: 1054
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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,
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`ZTE CORPORATION, ZTE (USA) INC.,
`AND ZTE (TX), INC.,
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`Plaintiff,
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`v.
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`Defendants.
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`Case No. 2:17-CV-00517-JRG
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`DEFENDANTS’ OPPOSED MOTION TO SUPPLEMENT THE RECORD IN
`SUPPORT OF MOTION TO DISMISS FOR IMPROPER VENUE,
`OR IN THE ALTERNATIVE, TO TRANSFER
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 2 of 9 PageID #: 1055
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`Defendants ZTE (USA) Inc. and ZTE (TX), Inc. (“ZTA” and “ZTX,” respectively and
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`collectively, “ZTE”) 1 respectfully submit this opposed motion to supplement the record in
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`support of their pending Motion to Dismiss for Improper Venue or, in the alternative, Motion to
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`Transfer to the Northern District of California (the “Motion to Transfer Venue”). Dkt. 38.
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`I.
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`BACKGROUND
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`On November 21, 2017, ZTE moved to transfer the above-captioned action filed by
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`AGIS Software Development LLC (“Plaintiff” or “AGIS”) to the Northern District of California.
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`See Dkt. 38. In support of a change in venue, Defendants submitted evidence that the core of the
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`accused applications in this case is provided by third-party Google LLC (“Google”), and the
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`relevant witnesses and information about those functionalities are located in and around Northern
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`California. See Dkt. 38 at 24; see also Dkt. 51 at 8-10. ZTE submitted declarations from Google
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`witnesses establishing that, for the accused functionality for Google Maps for Mobile application
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`(“GMM”) and Google’s Find My Device (formerly known as Android Device Manager), the
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`relevant source code and other information regarding these applications is confidential and
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`proprietary, and that those documents and relevant Google witnesses are located in the Northern
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`District of California. Dkt. 51-4 ¶¶ 2-3 and 51-5 ¶¶ 2-3. AGIS itself confirmed that these were
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`the core accused applications for the case when it served its Disclosure of Asserted Claims and
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`Infringement Contentions on January 19, 2018. 514 Dkt. 27, Ex. 1.
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`At the time of briefing for the Motion to Transfer Venue, AGIS dismissed the relevance,
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`location and convenience of non-party Google, arguing that “much of that information
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`1 Defendant ZTE Corporation has not yet been served or appeared, and thus the Motion to
`Dismiss for Improper Venue or in the Alternative to Transfer is on behalf of ZTX and ZTA only.
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`2
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 3 of 9 PageID #: 1056
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`[concerning the accused functionality related to Google’s Android Operating System] is publicly
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`available through either open source code or public application programming interfaces (‘API’).”
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`Dkt. 46 at 2, 24. In fact, AGIS explicitly disputed Google’s possible role as a non-party” and
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`took the position that any discovery into Google’s confidential and proprietary source code and
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`other information for GMM and Find My Device is irrelevant to the claims asserted against the
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`Android defendants, such as ZTE.2 Dkt. 46 at 25. Plaintiff further argued that:
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`• “To the extent Google witnesses may have relevant information--which AGIS believes
`they do not have--Defendants’ suggestion that relevant Google witnesses are located in
`California is mere speculation.” Dkt. 46 at 7.
`• “Defendants’ statements that . . . third-party employees with relevant knowledge, including
`Google witnesses, are located in or near California, without more, is insufficient.” Dkt. 52
`at 7.
`• “As discussed above, the relevance of the listed [Google witnesses] is doubtful.” Dkt. 46
`at 26.
`• “Google’s possible role as a non-party in this case--the extent of which is disputed by
`AGIS--should not be a determining factor to transfer venue of a case.” Dkt. 46 at 25.
`• “Although AGIS has accused functionality related to Google’s Android Operating System,
`AGIS expects to submit infringement contentions that do not invoke Local Patent Rule 3-
`1(g), and that they rely only on publicly-available open source code or public APIs.” Dkt.
`46 at 24.
`• “As for Google, to date, AGIS has not relied on any confidential Google code in its
`infringement contentions, but rather, relied upon publicly available source code.” Dkt. 52
`at 8.
`• “The Northern District of California is not appreciably closer to the sources of proof than
`the Eastern District of Texas.” Dkt. 46 at 25.3
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`New evidence has recently emerged confirming Defendants’ argument that the location
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`and convenience of non-party Google weighs in favor of transfer to the Northern District of
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`2 AGIS asserts the same claims against all Android Defendants LG Electronics, Inc. (“LGEKR”),
`Huawei Device USA Inc. et al. (“Huawei”), HTC Corporation (“HTC”), and ZTE in the two
`consolidated cases (Case No. 17-cv-513 (Huawei) and Case No. 17-cv-514 (LGEKR, HTC, and
`ZTE).
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` As of August 14, 2018, AGIS has offered its own source code for inspection outside the Eastern
`District of Texas, specifically in New York City, New York. Alternatively, since May 23, 2018,
`source code from ZTE has been available for inspection in California.
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 4 of 9 PageID #: 1057
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`California. On August 23, 2018 and August 29, 2018, AGIS served deposition and document
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`subpoenas on Google in both of the consolidated cases against Android Defendants, AGIS
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`Software Development LLC v. Huawei Device USA Inc., et al., No. 2:17-cv-513-JRG (E.D. Tex.)
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`and AGIS Software Development LLC v. HTC Corp., No. 2:17-cv-514-JRG (E.D. Tex.). See
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`Notice of Subpoenas to Google LLC attached as Exhibit A.
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`AGIS’s subpoena undermines the credibility of its previous efforts to discount the
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`relevance of Google’s witnesses, source code and other information to this action.
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`Notwithstanding AGIS’s representations that AGIS’s infringement contentions rely only on
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`“publicly available open source code or public APIs,” Dkt. 46 at 24 and Dkt. 52 at 8, AGIS’s
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`subpoenas seek the confidential and proprietary source code for Google Maps and Find My
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`Device. AGIS also seeks from Google other technical documents that show the operation,
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`design, development, functionality, features, testing, and manufacture of Google Maps and Find
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`My Device. Furthermore, AGIS also seeks the communication protocols used with Android
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`Applications between one or more Google Servers and/or one or more other Android Devices
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`and the source code for Google Servers.
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`Indeed, the subpoenas confirm that the key sources of evidence regarding the operation,
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`design, and function of the applications identified in AGIS’s Infringement Contentions reside
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`with Google in and around the Northern District of California. Because Google’s documents and
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`witness testimony helps resolve critical issues regarding the accused applications, ZTE
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`respectfully submit that AGIS’s service of the subpoenas on Google confirms the
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`appropriateness of transferring the present litigation to the Northern District of California
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`pursuant to 28 U.S.C. § 1404(a).
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 5 of 9 PageID #: 1058
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`II.
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`ARGUMENT
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`When resolving a challenge to the propriety of venue, this Court enjoys broad discretion
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`to allow the moving party to supplement the record with additional facts and evidence. See, e.g.,
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`Murungi v. Touro Infirmary, No. 6:11-cv-0411, 2011 WL 3206859, at *2 (W.D. La. June 29,
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`2011) (noting the broad discretion to consider supplemental evidence when ruling on a motion to
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`transfer venue); accord Ambraco, Inc. v. Bossclip B.V., 570 F.3d 233, 238 (5th Cir. 2009) (noting
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`the Court’s broad discretion to consider supplemental evidence when ruling on a Rule 12(b)(1)
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`or 12(b)(3) motion). Exercise of such discretion is appropriate when new information emerges
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`that can assist the Court’s consideration of the transfer motion. See, e.g., Nationwide Mutual Ins.
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`Co. v. The Overlook, LLC, No. 4:10-cv-00069, 2010 WL 2520973, at *10 (E.D. Va. June 17,
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`2010) (granting motion to supplement a transfer motion because it assisted the court’s
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`consideration of the matter).
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`In the present matter, Defendants respectfully submit that the subpoena on Google will
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`advance the Court’s consideration of the Motion to Transfer Venue by, inter alia, demonstrating
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`that the relative ease of access to sources of proof and convenience for witnesses factors favor
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`transfer, and confirming that AGIS’s arguments downplaying the relevance of Google’s
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`documents and witnesses was an argument of convenience during transfer briefing that AGIS has
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`abandoned now that it actually must litigate the merits of its claims.
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`In Defendants’ Motion to Transfer Venue, Defendants argued that relevant documents,
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`including highly proprietary source code, and witnesses with knowledge relating to the
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`operation, design, and function of the third-party Accused Applications are located in the
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`Northern District of California or at locations far more convenient to the Northern District of
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`California than to the Eastern District of Texas. See Dkt. 38 at 24; see also Dkt. 51 at 8-10. In its
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 6 of 9 PageID #: 1059
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`opposition, Plaintiff repeatedly suggested that the relevant Google documents are already
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`publicly available, and thus should not be considered under the access to sources of proof factor.
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`Dkt. 46 at 24 (“Although AGIS has accused functionality related to Google’s Android Operating
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`System, AGIS expects to submit infringement contentions that do not invoke Local Patent Rule
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`3-1(g), and that they rely only on publicly-available open source code or public APIs.”); Dkt. 52
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`at 8 (“As for Google, to date, AGIS has not relied on any confidential Google code in its
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`infringement contentions, but rather, relied upon publicly available source code.”)
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`The subpoenas to Google, however, establish that Plaintiff’s arguments should not be
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`credited. Specifically, the document subpoena seeks, among other requests, the source code
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`related to the accused functionalities of Google Maps, Find My Device, and Android Device
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`Manager, and documents sufficient to show the structure, operation, design, development,
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`functionality, features, testing, and manufacture of the accused functionalities of Google Maps,
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`Find my Device, and Android Device Manager. These document requests confirm that AGIS
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`does not actually believe that its infringement case will rely solely on publicly available Google
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`documents, regardless of whatever AGIS put in its initial infringement contentions. Moreover,
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`AGIS seeks the production of such documents in the Northern District of California, further
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`confirming that the relevant documents in the instant case are located in the Northern District of
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`California.
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`ZTE has consistently emphasized the importance of third party discovery in this case,
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`especially from Google. With respect to the convenience of the parties and witnesses factor, ZTE
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`made it clear that “evidence from third-parties, like Google, will be relevant” because the cited
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`Google functionalities are “non-public code, and are maintained internally by Google engineers
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`in California.” Dkt. 51 at 9. In its Opposition, Plaintiff again dismissed the relevance of Google
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 7 of 9 PageID #: 1060
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`witnesses as “mere speculation.” Dkt. 46 at 7, 26. Furthermore, AGIS suggested that many of
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`Google’s potential witnesses reside in Texas. Dkt. 46 at 25; see also Dkt. 52 at 7. Nevertheless,
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`AGIS’s deposition subpoena, which was noticed in the Northern District of California, seeks
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`testimony explaining the source code for Google Maps and Find My Device, as well as
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`testimony on the structure, operation, design, development, functionality, features, testing, and
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`manufacture for the accused features of Google Maps and Find My Device. Thus, the deposition
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`subpoena shows that Google’s witnesses are not only relevant but crucial to understand the
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`operation of the accused features of Google Maps and Find My Device, and that those witnesses
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`are located in the Northern District of California.
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`When considered in this context, AGIS’s position that it “has no sources of proof in the
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`proposed transferee district,” Dkt. 46 at 25, is simply not true. AGIS does have a source of proof
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`in the Northern District of California--Google--and the evidence AGIS now seeks is precisely the
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`evidence ZTE identified in its transfer motion and continues to point to. It is not appropriate for
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`AGIS to discount relevant Google documents and testimony for purposes of the transfer analysis,
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`yet simultaneously seek a deposition and documents from Google through a subpoena. See In re
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`Microsoft Corp., 630 F.3d 1361, 1364 (Fed. Cir. 2011) (“The Supreme Court has long urged
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`courts to ensure that the purposes of jurisdictional and venue laws are not frustrated by a party’s
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`attempt at manipulation.”). Accordingly, the Google subpoena demonstrates that relevant
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`evidence in this action resides in the Northern District of California and only further confirms the
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`appropriateness of transferring the present litigation to the United States District Court for the
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`Northern District of California pursuant to 28 U.S.C. § 1404(a).
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 8 of 9 PageID #: 1061
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`III. CONCLUSION
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`For the foregoing reasons, Defendants respectfully submit that the Court grant their
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`motion to supplement the record in support of its pending Motion to Transfer Venue.
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`Dated: September 17, 2018
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`Respectfully submitted,
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`/s/ Lionel M. Lavenue
`Lionel M. Lavenue
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`Phone: (571) 203-2700
`Fax: (202) 408-4400
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`ATTORNEY FOR DEFENDANTS
`ZTE (USA) Inc. and ZTE (TX), Inc.
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`Case 2:17-cv-00517-JRG Document 81 Filed 09/17/18 Page 9 of 9 PageID #: 1062
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7, the undersigned certifies that counsel have conferred, on
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`September 14, 2018, on whether Plaintiff opposes the motion and relief requested herein. Plaintiff
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`opposes the motion.
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`/s/ Lionel M. Lavenue
`Lionel M. Lavenue
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on this September 17th of 2018. All other counsel not
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`deemed to have consented to service in such manner will be served via facsimile transmission
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`and/or first class mail.
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`/s/ Lionel M. Lavenue
`Lionel M. Lavenue
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