Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 1 of 13 PageID #: 3235
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
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`§
`Case No. 2:21-cv-00072-JRG
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`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE
`IN OPPOSITION TO DEFENDANT UBER TECHNOLOGIES, INC.,
`D/B/A UBER’S OPPOSED MOTION TO COMPEL AND
`RENEWED MOTION TO STAY (DKT. 117)
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`
`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
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`Defendant.
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 2 of 13 PageID #: 3236
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`TABLE OF CONTENTS
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`Page(s)
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`I.
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`II.
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`INTRODUCTION ...........................................................................................................1
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`LEGAL STANDARD .....................................................................................................1
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`A.
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`B.
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`Motion to Compel ................................................................................................1
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`Motion to Stay .....................................................................................................2
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`III.
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`ARGUMENT ..................................................................................................................3
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`A.
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`B.
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`Defendant’s Motion to Compel Must be Denied ...................................................3
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`Defendant’s Renewed Motion to Stay Must be Denied .........................................6
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`IV.
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`CONCLUSION ...............................................................................................................8
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`i
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 3 of 13 PageID #: 3237
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Beattie v. Madison County Sch. Dist.,
`254 F.3d 595 (5th Cir. 2001) ................................................................................................. 2
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`Clinton v. Jones,
`520 U.S. 681 (1997) .............................................................................................................. 2
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`EchoStar Techs. Corp. v. TiVo, Inc.,
`No. 5:05-cv-81, 2006 WL 2501494 (E.D. Tex. July 14, 2006) ............................................... 3
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`GeoTag, Inc. v. Frontier Commn’s Corp.,
`No. 2:10-cv-265-JRG, 2013 WL 12141427 (E.D. Tex. June 26, 2013) .............................. 1, 2
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`Herbert v. Lando,
`441 U.S. 153 (1979) .............................................................................................................. 1
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`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) .............................................................................................................. 2
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`Lodsys v. Brother Int’l Corp.,
`No. 2:11-cv-90, 2013 U.S. Dist. LEXIS 51336 (E.D. Tex. Jan 14, 2013) ............................... 3
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`Realtime Data, LLC v. Hewlett Packard Enter. Co.,
`No. 6:16-cv-00086-RWS-JDL, 2017 WL 3712916 (E.D. Tex. Feb. 3, 2017) ......................... 3
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`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) ................................................................................... 2
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`Team Worldwide Corp. v. Wal-Mart Stores, Inc.,
`No. 2:17-cv-000235-JRG, 2018 WL 2722051 (E.D. Tex. June 6, 2018) ................................ 2
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`UltimatePointer, L.L.C. v. Nintendo Co.,
`No. 6:11-cv-496-LED, 2014 WL 12515338 (E.D. Tex. June 17, 2014) .................................. 3
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`ii
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 4 of 13 PageID #: 3238
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
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`undersigned counsel, hereby submits this response in opposition to Defendant Uber Technologies,
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`Inc., d/b/a Uber’s (“Uber” or “Defendant”) Opposed Motion to Compel and Renewed Motion to
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`Stay (Dkt. 117) (the “Motion”).
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`I.
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`INTRODUCTION
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`Defendant asks this Court to compel AGIS to produce documents related to its motion to
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`stay and renews its motion to stay. As a preliminary matter, the parties are not at an impasse
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`regarding ongoing discovery and Defendant’s Motion is unnecessary and premature. AGIS has
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`produced documents and supplemented its interrogatory response in accordance with Defendant’s
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`requests and continues to conduct discovery related to this matter. Moreover, AGIS maintains that
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`Defendant’s arguments regarding standing are unfounded.
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`Second, this Court has already denied Defendant’s motion to stay until “resolution of an
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`alleged standing issue.” Dkt. 85 at 3. As the Court noted in its order, “there are still two other
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`patents asserted against Uber as well as several other defendants with other patents issued against
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`them.” Id. These circumstances have not changed such that Defendant’s renewed motion is
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`warranted and no additional facts affect the Court’s decision at this point.
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`Accordingly, AGIS respectfully requests that the Court deny Defendant’s Motion to
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`Compel and Renewed Motion to Stay.
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`II.
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`LEGAL STANDARD
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`A. Motion to Compel
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`The rules of discovery are “accorded a broad and liberal application to affect their purpose
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`of adequately informing litigants in civil trials.” GeoTag, Inc. v. Frontier Commn’s Corp., No.
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`2:10-cv-265-JRG, 2013 WL 12141427, at *1 (E.D. Tex. June 26, 2013) (citing Herbert v. Lando,
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`1
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 5 of 13 PageID #: 3239
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`441 U.S. 153, 176 (1979)). “A district court has broad discretion in all discovery matters.” Id.
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`(citing Beattie v. Madison County Sch. Dist., 254 F.3d 595, 606 (5th Cir. 2001)).
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`In this Court, “a request for court intervention is not appropriate until the participants have
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`met and conferred, in good faith, and concluded, in good faith, that the discussions have
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`conclusively ended in an impasse, leaving an open issue for the court to resolve.” Local Rule CV-
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`7(h). “Good faith requires honesty in one’s purpose to discuss meaningfully the dispute, freedom
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`from intention to defraud or abuse the discovery process and faithfulness to one’s obligation to
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`secure information without court intervention.” Id. In addition, this Court requires that any
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`discovery-related motion be preceded by a joint report “of no more than 2 pages” which “shall be
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`filed by the earlier of 48 hours following that meeting or 24 hours before said hearing.” Standing
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`Order Regarding “Meet and Confer” Obligations Relating to Discovery Disputes.
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`B. Motion to Stay
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`“The district court has the inherent power to control its own docket, including the power
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`to stay proceedings.” Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D.
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`Tex. 2005) (citing Landis v. N. Am. Co., 299 U.S. 248, 254 (1936)); see Team Worldwide Corp. v.
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`Wal-Mart Stores, Inc., No. 2:17-cv-000235-JRG, 2018 WL 2722051, at *2 (E.D. Tex. June 6,
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`2018) (citing Clinton v. Jones, 520 U.S. 681, 706 (1997)) (“Absent some overwhelming legal
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`requirement or showing of manifest injustice, this Court will not intervene in a district court’s
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`management of its calendar or scheduling of events in a matter before that court.”). Management
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`of the court’s docket requires “the exercise of judgment, which must weigh competing interests
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`and maintain an even balance.” Landis, 299 U.S. at 254-55.
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`Courts typically consider three things when deciding whether to stay litigation:
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`“‘(1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the non-
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`moving party; (2) whether a stay will simplify issues in question and trial of the case; and
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 6 of 13 PageID #: 3240
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`(3) whether discovery is complete and whether a trial date has been set.’” UltimatePointer, L.L.C.
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`v. Nintendo Co., No. 6:11-cv-496-LED, 2014 WL 12515338, at * (E.D. Tex. June 17, 2014) (citing
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`Lodsys v. Brother Int’l Corp., No. 2:11-cv-90, 2013 U.S. Dist. LEXIS 51336, at *42 (E.D. Tex.
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`Jan 14, 2013)). “Essentially, courts determine whether the benefits of a stay outweigh the inherent
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`costs based on these factors.” EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-cv-81, 2006 WL
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`2501494, at *1 (E.D. Tex. July 14, 2006). The party seeking the stay bears the burden of showing
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`a stay is appropriate. Realtime Data, LLC v. Hewlett Packard Enter. Co., No. 6:16-cv-00086-
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`RWS-JDL, 2017 WL 3712916, at *3 (E.D. Tex. Feb. 3, 2017).
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`III. ARGUMENT
`Defendant’s Motion to Compel Must be Denied
`A.
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`Defendant fails to demonstrate that its motion to compel is warranted. On June 2, 2021,
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`Defendant served its first set of interrogatories. See Ex. 1, Uber’s First Set of Interrogatories. On
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`July 19, 2021, Defendant requested supplementation of Interrogatory No. 10 by a unilaterally
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`imposed date of July 26. See Ex. 2, Email from M. Reiter to AGIS, dated July 27, 2021. In
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`response, AGIS informed Defendant that it was conducting discovery on the requests set forth in
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`Interrogatory No. 10 and therefore would supplement its response to Interrogatory No. 10 on or
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`before August 13, 2021. Ex. 3, Email from E. Iturralde to M. Reiter, dated July 27, 2021. On
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`August 2, 2021, AGIS produced a set of documents in response to Defendant’s request for
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`supplementation of Interrogatory No. 10. Ex. 4, Email from AGIS to Uber, dated August 2, 2021.
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`Of particular importance, AGIS’s production included a
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` Ex. 5, AGISSOFTWARE_0007890, “AGIS-Rice Agreement”). Despite
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`serving a document subpoena on Microsoft “[o]n the first day of discovery,” Defendant waited
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 7 of 13 PageID #: 3241
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`nearly two months until August 5, 2021 to serve document and deposition subpoenas on
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`Christopher Rice. Ex. 6, Notice of Subpoenas to Christopher R. Rice. On August 9, 2021, AGIS
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`served another supplemental document production and continues to conduct discovery on the
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`subject matter of this Interrogatory. Ex. 7, Email from AGIS to Uber, dated August 9, 2021. On
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`August 13, 2021, Plaintiff supplemented its response to Uber’s Interrogatory No. 10 as per the
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`stated schedule. Ex. 8, Email from E. Iturralde to Uber, dated August 13, 2021; Ex. 9, Plaintiff
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`AGIS Software Development LLC’s First Supplemental Responses to Uber’s First Set of Rogs
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`(Nos. 1-10), dated August 13, 2021.
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`Despite AGIS’s continuous efforts in conducting discovery, Defendant maintains that a
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`dispute remains such that the instant Motion is necessary. However, in response to Defendant’s
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`emails, AGIS has maintained that it endeavors to supplement its document productions and
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`discovery responses as part of its ongoing discovery efforts. AGIS has not “refused” to produce
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`relevant discovery and Defendant misrepresents the circumstances under which AGIS continues
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`to engage in meaningful discovery. Defendant continues to assert that AGIS’s discovery efforts
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`are insufficient and has continued to threaten AGIS with a motion to compel as early as July 27th,
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`despite its admissions that its “July 19 letter started the 14-day clock.” Ex. 10, Email from
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`M. Reiter to E. Iturralde, dated July 27, 2021. AGIS has not denied any of Defendant’s requests
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`for discovery nor has it asserted that the discovery sought by Defendant was improper. As stated
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`numerous times by AGIS, AGIS is continuing its discovery efforts to ensure that the discovery
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`sought by Defendant is produced. Contrary to Defendant’s allegations, AGIS has not “refused”
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`to meet and confer. Because Plaintiff is cooperating with Defendant’s requests and because
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`Plaintiff has not denied Defendants any discovery requests, this motion to compel is premature
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`and unnecessary.
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 8 of 13 PageID #: 3242
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`The facts demonstrate that AGIS is the sole owner of the Asserted Patents. Ex. 9 at 26-28.
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` The Asserted Patents were later assigned to AGIS following a
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`corporate reorganization plan executed in 2017. Id.
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`On July 13, 2004, Christopher R. Rice executed a
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 9 of 13 PageID #: 3243
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`Mr. Rice’s work for AGIS, Inc. occurred exclusively on AGIS, Inc. computers and AGIS,
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`Inc. equipment and on time invoiced only to AGIS, Inc. Ex. 9 at 26-28. Mr. Rice submitted
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`timecards indicating the hours and descriptions of work performed for AGIS, Inc. in accordance
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`with the AGIS-Rice Agreement. Ex. 11, AGISSOFTWARE-0007867 through – 0007901. To
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`date, Mr. Rice has not pursued any business activities or employment opportunities which are
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`competitive with any business activities of AGIS, Inc. Ex. 9 at 26-28.
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`Defendant’s delay in waiting until August 5, 2021 to serve Mr. Rice with subpoenas and
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`AGIS’s cooperation in timely supplementing its interrogatory responses and document
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`productions are inconsistent with Defendant’s bases for bringing this premature motion.
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`Defendant has not, in “good faith,” concluded that the discussions have “ended in an impasse,
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`leaving an open issue for the court to resolve.” Accordingly, any attempts to “compel” documents
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`by Defendant are premature and unnecessary in light of AGIS’s ongoing discovery efforts. As
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`such, AGIS respectfully requests that Defendant’s motion to compel be denied.
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`B.
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`Defendant’s Renewed Motion to Stay Must be Denied
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`Defendant has not shown that its renewed motion to stay is warranted, particularly where
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`none of the circumstances under which Defendant submitted its original motion to stay have
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`changed such that a renewed motion is necessary.
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`On April 23, 2021, Uber filed a motion to stay pending “resolution” of what it purports is
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`a standing issue. Dkt. 25. On June 15, 2021, the Court denied Uber’s motion to stay, stating that
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 10 of 13 PageID #: 3244
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`it will not “stay the case to resolve this alleged issue.” Dkt. 85 at 4. The circumstances that
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`surround Uber’s motion to stay remain unchanged. There are “still two other patents asserted
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`against Uber as well as several other defendants with other patents issued against them.” Id. at 3.
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`As noted by the Court, “[a] stay will unduly prejudice and present a clear tactical
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`disadvantage” to AGIS “by delaying adjudication, including regarding patents and issues not
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`affected by Uber’s motion.” Dkt. 85 at 3. This remains unchanged.
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`Second, a stay will not simplify the issues in this case. Further noted by the Court, any
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`proposed simplification with respect to the purported issues presented by Defendant are “minimal
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`with respect to the several other patents and defendants in this case.” Id.
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`Moreover, discovery is not set to close until October 22, 2021 and the Court has set forth
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`dates for the Markman hearing in addition to trial. The parties have begun claim construction,
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`including the submission of claim terms and constructions. Accordingly, a stay in this case would
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`result in duplicative efforts.
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`Lastly, while Defendant rehashes much of its motion to dismiss regarding standing, it has
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`yet to “file[] a motion to dismiss due to lack of standing.” Id. at 4. While the Court has stated it
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`will “consider expedited briefing on a motion to dismiss,” it again stated that it “will not stay the
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`case to resolve this alleged issue.” Id. Nonetheless, Defendant persists in its renewed motion to
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`stay the case, despite all of the Court’s statements in its denial of Defendant’s motion to stay.
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`Defendant cannot deny that its motion seeks a stay of the entire case, despite conceding that the
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`alleged standing issues affect only a number of the Asserted Patents. Moreover, no other
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`defendants have joined in Defendant’s motion nor filed similar motions of their own. Accordingly,
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`Defendant has not met its burden to establish a stay is warranted here and Defendant’s renewed
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`motion to stay should be denied.
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 11 of 13 PageID #: 3245
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`IV. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court deny Defendant’s
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`Opposed Motion to Compel and Renewed Motion to Stay (Dkt. 117).
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`Dated: August 23, 2021
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`Respectfully submitted,
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` /s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
` Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 12 of 13 PageID #: 3246
`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 12 of 13 PagelD #: 3246
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`Case 2:21-cv-00072-JRG-RSP Document 133 Filed 08/24/21 Page 13 of 13 PageID #: 3247
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 23, 2021, a true and correct copy of the above and
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`foregoing document has been served by email on all counsel of record.
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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