Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 1 of 13 PageID #: 2935
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:21-cv-00072-JRG
`(Lead Case)
`
`CASE NO. 2:21-cv-00024-JRG
`(Member Case)
`
`CASE NO. 2:21-cv-00026-JRG
`(Member Case)
`
`CASE NO. 2:21-cv-00029-JRG
`(Member Case)
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`LYFT, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER,
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`WHATSAPP, INC.
`
`DEFENDANT UBER TECHNOLOGIES, INC.’S OPPOSED MOTION TO
`COMPEL AND RENEWED MOTION TO STAY
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 2 of 13 PageID #: 2936
`
`
`
`I.
`
`INTRODUCTION AND BACKGROUND
`
`Defendant Uber Technologies, Inc. (“Uber”) respectfully requests that the Court order
`
`Plaintiff AGIS Software Development LLC (“AGIS”) to produce all information upon which it
`
`will rely to establish that it alone has standing to assert U.S. Patent Nos. 7,630,724 (“’724 Patent”),
`
`10,299,100 (“’100 Patent”), and 10,341,838 (“’838 Patent”) (“Contested Patents”) within one
`
`week from the date of the Court’s order.
`
`Standing is a threshold issue. As such, in a Motion to Stay filed April 23, 2021, Uber
`
`notified the Court that it believed that one of the two co-inventors, Christopher Rice, had assigned
`
`his rights to the Contested Patents to Microsoft Corporation, and, therefore, AGIS lacks standing
`
`to assert the patents. See Dkt. 25. Uber asked the Court to stay the case and order discovery and
`
`briefing focused on this threshold issue. The Court denied Uber’s motion on June 15, 2021, noting
`
`that “[d]iscovery has been open for nearly a month,” and “Uber has not filed a motion to dismiss
`
`due to lack of standing.” Dkt. 85 at 4. The Court also stated that it “will consider expedited briefing
`
`on a motion to dismiss filed by Uber due to lack of standing.” Id.
`
`AGIS has ignored its obligation to produce discovery that addresses this issue and has
`
`thwarted Uber’s attempts to obtain discovery on this threshold issue so that Uber can expeditiously
`
`bring a motion to dismiss. Indeed, AGIS has known about this issue since Uber raised it by letter
`
`on April 2, 2021, three weeks before its Motion to Stay. Dkt. 25-7. Without addressing the
`
`substance of the letter, AGIS responded by calling Uber’s claims “frivolous,” and disputing that
`
`the Microsoft Employment Agreement cited in Uber’s letter was the same agreement executed by
`
`Mr. Rice (see Dkt. 25-8), an argument it repeated in its opposition to Uber’s prior motion (see Dkt.
`
`42 at 1). On the first day of discovery, Uber served Microsoft with a subpoena, seeking, among
`
`other things, Mr. Rice’s employment agreement with Microsoft. Additionally, on the first day of
`
`discovery, Uber served AGIS with an interrogatory (Interrogatory No. 10) seeking all facts
`
`
`
`1
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 3 of 13 PageID #: 2937
`
`
`
`supporting AGIS’s assertion that it is a sole owner of the Contested Patents.
`
`Microsoft timely responded to the subpoena on July 16, 2021 and produced Mr. Rice’s
`
`employment agreement as well as its moonlighting policy and other documents. See Exs. 1 (July
`
`19, 2021 M. Reiter Letter to A. Fabricant), 2 (Rice Employment Agreement). As Uber had
`
`predicted in its Motion to Stay, and contrary to AGIS’s protests to the contrary, Mr. Rice’s
`
`employment agreement produced by Microsoft is identical in all relevant respects to the one
`
`attached to Uber’s Motion to Stay. Compare Dkt. 25-4, with Ex. 2. In that employment agreement
`
`with Microsoft,
`
`
`
`
`
`
`
`In contrast to third-party Microsoft, AGIS has refused to provide timely and complete
`
`discovery on this threshold standing issue. AGIS provided virtually no substantive response to
`
`Uber’s Interrogatory No. 10, stating only that
`
`
`
`
`
` Despite AGIS’s obligation to
`
`produce all information that bear on a claim or defense, and despite having (1) identified Mr. Rice
`
`as a current consultant of AGIS, Inc. who may only be contacted through AGIS’s counsel and
`
`(2) representing to the Court that Mr. Rice would voluntarily appear for trial (Dkt. 82-2 ¶ 18), as
`
`of July 16, AGIS had produced no documents from Mr. Rice, or otherwise, that address Mr. Rice’s
`
`employment with Microsoft, his assignment to Microsoft, Microsoft’s ownership interest, or any
`
`other documents that AGIS will rely on to rebut Uber’s claim that Microsoft is a co-owner of the
`
`Contested Patents.
`
`On July 19, Uber wrote to AGIS and provided AGIS with the documents received from
`
`
`
`2
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 4 of 13 PageID #: 2938
`
`
`
`Microsoft and requested that AGIS supplement its discovery within a week. After AGIS did not
`
`respond to Uber’s letter, counsel for Uber emailed counsel for AGIS requesting a response; in
`
`response, AGIS stated on July 27 that it was “conducting discovery on the questions raised” in the
`
`July 19 letter and stated it would “endeavor to supplement or update [Uber] on the progress of [its]
`
`ongoing discovery efforts on or before August 13.” Since that response, and pursuant to the
`
`Discovery Order in this case (Dkt. 79), Uber has made numerous requests for a meet and confer
`
`with lead and local counsel; in a clear attempt to delay resolution of this threshold issue, and in
`
`violation of this Court’s Local Rules, AGIS has steadfastly refused each time. AGIS asserted that
`
`no dispute existed between the parties since it was “cooperating” and had made a small
`
`supplemental production of selected time sheets and expense forms from Mr. Rice and a consulting
`
`agreement Mr. Rice executed with AGIS. But that small production, which lacks any reference to
`
`Microsoft, does not diminish the very real dispute that does exist and requires a meet and confer
`
`as the Local Rules dictate. The parties’ dispute is further demonstrated by AGIS’s refusal to collect
`
`information from Mr. Rice and assertion that Uber must subpoena Mr. Rice, which Uber did on
`
`August 6, 2021.
`
`Uber is in the dark. Discovery has now been open for over two and a half months, and
`
`AGIS has known of this threshold standing issue for over four months. Yet AGIS has still not
`
`provided any evidence to rebut Uber’s assertions that Microsoft is a co-owner of the Contested
`
`Patents. AGIS refuses to meet and confer. And AGIS refuses to say when it will provide a date
`
`certain by when it will have completely produced any relevant information, preventing Uber from
`
`filing a motion to dismiss.
`
`Uber respectfully requests that the Court order AGIS immediately supplement its discovery
`
`to produce all documents and identify all facts that AGIS intends to rely on to rebut that Microsoft
`
`
`
`3
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 5 of 13 PageID #: 2939
`
`
`
`is a co-owner of the Contested Patents. Alternatively, AGIS must confirm that it has no additional
`
`evidence relevant to this issue in its possession. Because AGIS has purposefully delayed in its
`
`discovery obligations, and given the accelerated schedule by which this case is proceeding, Uber
`
`also renews its request for a stay pending resolution of this threshold issue.
`
`II.
`
`LEGAL STANDARD
`
`AGIS is required to “produce . . . all documents . . . that are relevant to the pleaded claims
`
`of defenses involved in this action.” Dkt. 79 ¶ 3(b). “The rules of discovery ‘are to be accorded
`
`a broad and liberal treatment to effect their purpose of adequately informing litigants in civil
`
`trials.’” EVS Codec Techs., LLC v. OnePlus Tech. (Shenzhen) Co., Ltd., No. 2:19-CV-00057-JRG,
`
`2020 WL 6365514, at *1 (E.D. Tex. Apr. 9, 2020) (quoting Herbert v. Lando, 441 U.S. 153, 176
`
`(1979)). The Federal Rules of Civil Procedure provides that, “[i]nformation within this scope of
`
`discovery need not be admissible in evidence to be discoverable,” and thus “the relevance for
`
`something to be discoverable is lower than that of the relevance required for something to be
`
`admissible.” Id. at *2 (quoting Fed. R. Civ. P. 26(b)(1)). “Once the moving party establishes that
`
`the materials requested are within the scope of permissible discovery, the burden shifts to the party
`
`resisting discovery to show why the discovery is irrelevant, overly broad, or unduly burdensome
`
`or oppressive, and thus should not be permitted.” Id. at *1 (quoting SSL Servs., LLC v. Citrix Sys.,
`
`Inc., No. 2:08-cv-158-TJW, 2010 WL 547478, at *2 (E.D. Tex. Feb. 10, 2010)). As early as April
`
`2, 2021, when Uber wrote to AGIS regarding Microsoft’s co-ownership (Dkt. 25-7), and at least
`
`when Uber filed its Motion to Stay (Dkt. 25), AGIS was on notice that the information requested
`
`was within the scope of AGIS’s discovery obligations. AGIS has ignored those obligations.
`
`
`
`4
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 6 of 13 PageID #: 2940
`
`
`
`III. ARGUMENT
`
`A.
`
`AGIS must immediately produce discovery relevant to the threshold
`standing issue.
`
`On July 19, 2021, within a business day of receiving the documents from Microsoft, Uber
`
`provided to AGIS Mr. Rice’s Microsoft employment agreement, which unequivocally shows that
`
` In fact,
`
`
`
`
`
`
`
` uses the same language that the Federal Circuit has consistently found to
`
`be an automatic assignment. See Omni MedSci, Inc. v. Apple Inc., No. 2021-1715, 2021 WL
`
`3277220, at *4 (Fed. Cir. Aug. 2, 2021) (collecting cases); see also SiRF Tech., Inc. v. Int’l Trade
`
`Comm’n, 601 F.3d 1319, 1326 (Fed. Cir. 2010) (finding that “[t]he Employee assigns . . .” is one
`
`of automatic assignment). Likewise,
`
`
`
`
`
`
`
`
`
`With the Microsoft production, Uber explained that AGIS had produced nothing of
`
`substance that addresses the standing issue and asked that AGIS provide all information upon
`
`which it intends to rely to rebut Microsoft’s co-ownership of the Contested Patents. See Ex. 1.
`
`Under the Court’s Discovery Order in this case, AGIS was required to meet and confer after it
`
`received Uber’s July 19 letter and subsequent communications requesting complete production;
`
`thereafter, AGIS was required to provide Uber with a written statement that identifies “(1) the
`
`requested items that will be disclosed, if any, and (2) the reasons why any requested items will not
`
`be disclosed.” Dkt. 79 ¶ 9(a). As explained, AGIS refused to meet and confer, asserted it had
`
`
`
`5
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 7 of 13 PageID #: 2941
`
`
`
`begun “conducting discovery,”1 was “cooperating,” and belatedly complained that Uber’s
`
`correspondence failed to comply with the Discovery Order. Four months after it received notice
`
`of the standing issue, and over two and a half months after discovery opened, AGIS still has not
`
`stated what information it will and will not produce or why, other than to assert that it will not
`
`collect information from Mr. Rice absent a subpoena.
`
`This response violates this Court’s Local Rules. See, e.g., L.R. CV-7(h) (“An unreasonable
`
`failure to meet and confer violates Local Rule AT-3 and is grounds for disciplinary action.”).
`
`Simply put—a party cannot unilaterally assert no dispute exists and thereby avoid its obligation to
`
`meet and confer. That is exactly what AGIS has done. Additionally, the fact that AGIS challenged
`
`its obligation to obtain information from Mr. Rice—despite its representations to the Court that
`
`Mr. Rice was a willing witness—demonstrates the presence of a dispute, a lack of alignment
`
`between the parties, and purposeful game-playing and delay. Indeed, AGIS uses Mr. Rice as both
`
`a sword (to support venue) and a shield (to resist discovery). At bottom, AGIS’s dilatory tactics
`
`have prevented Uber from bringing its motion to dismiss, thereby prejudicing Uber as the parties
`
`expend more resources on potentially needless litigation in connection with the Contested Patents.
`
`Uber, therefore, respectfully requests that the Court order AGIS to immediately produce
`
`all documents and identify any other information upon which it will rely to rebut Microsoft’s
`
`ownership interest in the Contested Patents and to demonstrate that it alone has standing to assert
`
`the Contested Patents. Such information should include, but not be limited to, (i) documents that
`
`support any allegation that Microsoft excluded Mr. Rice’s AGIS activities from his assignment,
`
`(ii) documents that support any allegation that Microsoft agreed that Mr. Rice’s AGIS activities
`
`
`1 To the extent this discovery involves subpoenas to third parties, AGIS is obligated to notify
`Uber of those subpoenas prior to service. See Fed. R. Civ. P. 45(a)(4). Uber has received no
`such notice.
`
`
`
`6
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 8 of 13 PageID #: 2942
`
`
`
`were excluded from his assignment, (iii) documents that support any allegation that Mr. Rice
`
`obtained approval to “moonlight” for AGIS, and (iv) documents that support any allegation that
`
`each of the conditions exempting the assignment obligation were present. To the extent not
`
`otherwise fully supplemented, AGIS must provide a complete response to Interrogatory No. 10.
`
`B.
`
`AGIS’s gamesmanship supports reconsideration of Uber’s requested stay.
`
`AGIS’s delay and game-playing support the stay Uber previously requested. AGIS now
`
`has in its possession the employment agreement signed by Mr. Rice, which shows that
`
`
`
`
`
` AGIS, moreover, has long known of this issue, but chose to do nothing; AGIS should
`
`not be rewarded for laying behind the log. See, e.g., Clear with Computers, LLC v. Hyundai Motor
`
`Am., Inc., 2011 WL 11562328 (E.D. Texas July 5, 2011) (finding party “chose to lay behind the
`
`log” and striking defensive theory). Neither can AGIS now cry prejudice as a result of a stay; any
`
`delay is of AGIS’s own making. Moreover, Mr. Rice’s employment agreement demonstrates the
`
`seriousness of this issue. It is no longer “speculative” as AGIS argued in opposition to Uber’s
`
`Motion to Stay (Dkt. 42 at 5); the parties (and now the Court) have Mr. Rice’s actual Microsoft
`
`employment agreement. Claim construction briefing on all patents is set to begin in a month
`
`(September 7); allowing the parties to resolve this threshold issue, which affects six of the nine
`
`patents collectively asserted against the four defendants, indisputably conserves judicial and party
`
`resources.
`
`IV. CONCLUSION
`
`For the reasons stated above, Uber respectfully requests that the Court grant Uber’s motion
`
`to compel. Additionally, Uber respectfully renews its request that the Court grant a stay until the
`
`Court resolves this threshold standing issue.
`
`
`
`
`
`
`
`7
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 9 of 13 PageID #: 2943
`
`
`
`Respectfully submitted,
`
`Dated: August 10, 2021
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`Texas State Bar No. 16759900
`mreiter@gibsondunn.com
`Robert A. Vincent
`Texas State Bar No. 24056474
`rvincent@gibsondunn.com
`Nathan R. Curtis
`Texas State Bar No. 24078390
`ncurtis@gibsondunn.com
`Ashbey N. Morgan
`Texas State Bar No. 24106339
`anmorgan@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, TX 75201-6912
`Telephone: 214.698.3360
`Facsimile: 214.571.2907
`
`
`
`By:
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
`Email: melissa@gilliamsmithlaw.com
`
`
`Attorneys for Defendant Uber Technologies, Inc.
`d/b/a Uber
`
`
`
`8
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 10 of 13 PageID #: 2944
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 10, 2021, the foregoing was electronically filed in
`
`compliance with Local Rule CV-5(a) and served via the Court’s electronic filing system on all
`
`counsel who have consented to electronic service on this 10th day of August, 2021.
`
`
`
`
`
`
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
`
`
`
`9
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 11 of 13 PageID #: 2945
`
`
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to Local Rule CV-7(h) and (i), I certify that on July 19, 2021, I sent a letter to
`
`Plaintiff regarding its discovery obligations related to the standing issue discussed in this motion
`
`asking for a response by July 26, 2021. Plaintiff failed to respond. On July 27, 2021, I sent an
`
`email to Plaintiff following up on my July 19 letter after receiving no response and no
`
`supplementation of discovery, requesting a lead and local meet and confer, as required by the Local
`
`Rules. That same day, Plaintiff responded refusing to offer a time to meet and confer, instead,
`
`stating it was “conducting discovery” and “endeavor[ed] to supplement or update [Uber] on the
`
`progress of [its] ongoing discovery efforts on or before August 13.” I responded noting Plaintiff’s
`
`obligation under the Discovery Order to meet and confer, and additionally, provide a written
`
`statement that “identifies (1) the requested items that will be disclosed, if any, and (2) the reasons
`
`why any requested items will not be disclosed.” Dkt. 79 ¶ 9(a). On July 28, 2021, Plaintiff again
`
`refused to provide a time to meet and confer and maintained that it was “cooperating with [our]
`
`request.”
`
`On July 29, 2021, I responded to Plaintiff that its cryptic and vague response does not
`
`satisfy its obligations under the Discovery Order, and again asked for Plaintiff’s availability to
`
`meet and confer. On August 2, 2021, Plaintiff again stated it was “cooperating” and offered
`
`availability to meet and confer on August 6. That same day, I responded with specific times that
`
`we were available for to meet and confer on three different days during the week of August 2. On
`
`August 4, 2021, Plaintiff responded again stating that it was “complying” with the requests and
`
`that there “is no dispute to meet and confer about.” Plaintiff again refused to provide a time for a
`
`meet and confer.
`
`Plaintiff has acted in bad faith by its continued refusal to engage in a meet and confer,
`
`which has prevented the parties from reasonably addressing the deficiencies associated with
`
`
`
`10
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 12 of 13 PageID #: 2946
`
`
`
`Plaintiff’s discovery regarding this threshold standing issue, and forced Uber to bring this motion,
`
`which Uber has designated as “opposed.”
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
`
`
`
`11
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 13 of 13 PageID #: 2947
`Case 2:21-cv-00072-JRG-RSP Document 119 Filed 08/12/21 Page 13 of 13 PagelD #: 2947
`
`