Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 1 of 8 PageID #: 5152
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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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`v.
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`T-MOBILE USA, INC., and T-MOBILE
`US, INC.
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`AGIS SOFTWARE DEVELOPMENT LLC
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`v.
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`UBER TECHNOLOGIES, INC., d/b/a UBER
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`CASE NO. 2:21-cv-00072-JRG
`(Lead Case)
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`CASE NO. 2:21-cv-00026-JRG
`(Member Case)
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`UBER TECHNOLOGIES, INC.’S OBJECTIONS TO THE SEPTEMBER 3, 2021
`REPORT AND RECOMMENDATION DENYING UBER’S MOTION
`TO DISMISS U.S. PATENT NO. 10,341,838 FOR IMPROPER VENUE
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 2 of 8 PageID #: 5153
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`Defendant Uber Technologies, Inc. (“Uber”) respectfully objects to the Magistrate’s
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`Report and Recommendation (“Report”) denying Uber’s Motion to Dismiss U.S. Patent No.
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`10,341,838 (“the ’838 patent”) for Improper Venue. For the reasons stated below, the conclusion
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`of the Report should be reversed and Uber’s motion granted.
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`In response to the Complaint filed by Plaintiff AGIS Software Development LLC
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`(“AGIS”), Uber moved to dismiss based on multiple grounds, including improper venue as to the
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`’838 patent. Dkt. 24. With respect to improper venue and the ’838 patent, Uber explained that in
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`its Complaint, AGIS had failed to present facts that plausibly alleged Uber committed an act of
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`infringement in the District with respect to the ’838 patent. Indeed, the “Jurisdiction and Venue”
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`section of the Complaint, provides only boilerplate language regarding an act of infringement:
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`“Uber has transacted business in the Eastern District of Texas, and has committed acts of direct
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`and indirect infringement in the Eastern District of Texas.” Dkt. 1 ¶ 5; see also id. ¶ 26.1 In the
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`“Infringement of the ’838 Patent” section (COUNT IV) of the Complaint, AGIS alleged that Uber
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`“has and continues to” directly and indirectly infringe at least claim 1 of the ’838 patent. Id. 78-
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`80. In paragraph 82, AGIS purported to support that allegation by reciting the entirety of claim 1
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`of the ’838 patent and beginning that recitation with the phrase “Defendant directly infringes
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`and/or indirectly infringes by practicing [language of claim 1].” Id. ¶ 82.
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`Claim 1, however, recites “[a] method performed by one or more servers each having one
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`or more processors, the method comprising: …” Id. Because claim 1 recites a method performed
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`by one or more servers, and because Uber has no servers in the Eastern District of Texas, AGIS
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`1 Although the Complaint defines “Accused Products” to include “Uber, Uber Driver, Uber Eats,
`Uber Fleet, Uber Freight, Uber Eats Orders, and Uber Eats Man[a]ger Applications and the related
`services and/or servers for the applications” (id.), AGIS has dropped Uber Eats, Uber Eats
`Manager, Uber Eats Orders, and Uber Freight.
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 3 of 8 PageID #: 5154
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`failed to identify an act of infringement in this District, whether by Uber directly or indirectly, and
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`Count IV of AGIS’s complaint must be dismissed for improper venue.
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`I.
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`AGIS Has Not Alleged Any Facts Supporting an Act of Infringement in this District
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`As this Court is well aware, “[f]or purposes of determining whether venue is proper in a
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`district other than one in a state in which a defendant is incorporated, a court must determine,
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`among other things, ‘where the defendant has committed acts of infringement.’” Valeant Pharm.
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`North America LLC v. Mylan Pharm. Inc., 978 F.3d 1374, 1378 (Fed. Cir. 2020). AGIS bears the
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`burden to establish venue. In re ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir. 2018). That
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`burden is not carried by boilerplate allegations but must be supported with facts showing that venue
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`is proper. Westech Aerosol Corp. v. 3M Co., 927 F.3d 1378, 1382 (Fed. Cir. 2019).
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`A.
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`AGIS’s Allegations Are Not Directed to Texas or to the ’838 Patent Claims
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`Both in its Complaint and in its briefing in response to Uber’s motion to dismiss, AGIS
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`failed to identify a single act of infringement in this District, whether performed by Uber itself or
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`by Uber’s customers, that ties to the elements of claim 1 of the ’838 patent. First, as to Uber, in
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`support of its motion, Uber submitted the Declaration of Jeff Rapipong, wherein Mr. Rapipong
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`explained that “[n]one of the servers that Uber uses for its ride-sharing, food delivery and freight
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`brokerage technology are located in Texas.” Dkt. 24-2 ¶ 2. AGIS did not directly challenge Mr.
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`Rapipong’s declaration. Instead, AGIS asserted, and the Report accepted, that Uber “publicly
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`disclosed that it engages in a ‘classic hybrid cloud approach’ which utilizes co-located data centers
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`located in the United States and multiple third-party cloud computing services.” Dkt. 43 at 8; Dkt.
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`142 at 6. AGIS further asserted, and the Report accepted, that Uber has a “massive network”
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`consisting of “tens of millions of Drivers, consumers, restaurants, shippers, carriers, and dockless
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`e-bikes and e-scooters, as well as underlying data, technology, and shared infrastructure” that it
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`“collect[s], use[s], and process[es] a variety of personal data, such as email addresses, mobile
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 4 of 8 PageID #: 5155
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`phone numbers, profile photos, location information” and reliance on “third-party service
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`providers to host or otherwise process some of our data and that of platform users.” Id.
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`Based on these assertions, AGIS concluded, and the Report apparently also accepted, that
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`the “physical infrastructure used by [Uber] appears to be much broader than just the ‘servers,’ as
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`submitted by Mr. Rapipong and [Uber].” Id. But none of these assertions tie any of the so-called
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`“massive network” to Texas, much less the sole claim identified in the Complaint—claim 1—of
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`the ’838 patent. In fact, by focusing on this alleged “massive network,” while disregarding that
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`the claim focuses only on operating one or more servers, both AGIS and the Report erroneously
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`side-step what it takes to allegedly infringe the ’838 patent and thereby properly establish venue.
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`In response to Uber’s motion, AGIS relied on Seven Networks, LLC v. Google LLC, 315
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`F. Supp. 3d 933, 943 (E.D. Tex. 2018), where this Court held that “not all of the alleged infringing
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`activity needs to have occurred within the District so long as some act of infringement took place
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`there.” (Emphasis in original; citations omitted). But here, AGIS has failed to allege any act of
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`infringement committed by Uber in this District, and the Report erred when it likewise failed to
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`recognize the absence of any such facts. AGIS’s references to Uber’s broad “infrastructure” does
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`not translate to plausible allegations that any part of that infrastructure actually exists in this
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`District or is tied to the elements of claim 1 of the ’838 patent, particularly in view of the unrebutted
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`Rapipong declaration. Thus, as in Westech Aerosol, 927 F.3d at 1382, where the Federal Circuit
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`found that the plaintiff failed to plead any facts showing that the defendant had a regular and
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`established place of business located in the district, AGIS has failed to plead (or otherwise identify)
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`any fact showing Uber committed an act of infringement in this District. And to be clear, neither
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`in its motion nor in these objections, does Uber suggest that AGIS must satisfy its burden to prove
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 5 of 8 PageID #: 5156
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`infringement on the merits; rather, AGIS must present facts that plausibly support its allegation of
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`infringement and, thereby, proper venue.
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`B.
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`AGIS’s Indirect Infringement Allegations Are Equally Flawed
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`AGIS also argued, again relying on Seven Networks, that it need not establish venue only
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`through acts of direct infringement, and that allegations of indirect infringement can support venue.
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`Dkt. 43 at 9. In support of this argument, AGIS asserted that “customers and end-users of Uber’s
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`Accused Products can access the Uber servers from this District” and that Uber has “instruct[ed]
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`users of the Accused Products to perform at least the method of claim 1 in the ’838 Patent.” Id.
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`AGIS referred to “training videos, demonstrations, brochures, installations, and/or user guides” as
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`well as paragraph 87 of its Complaint where it alleged that “the Uber, Uber Driver, and Uber Eats
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`Applications provides and stores the phone number of users and drivers in the memories of their
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`respective phones (e.g. through communication with a server).” Dkt. 43 at 15-16 & n.2. This
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`latter allegation—the storing of phone numbers—is not an element of the ’838 patent claim 1,
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`which Uber explained in its Reply. Dkt. 51 at 2-3. Indeed, “phone number” appears nowhere in
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`the claim language of the ’838 patent. Removing this non-element from the argument leaves AGIS
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`with only boilerplate allegations that Uber induces customers to infringe. 2 But “conclusory
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`allegations or legal conclusions masquerading as factual conclusions will not suffice to prevent a
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`motion to dismiss.” McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356 (Fed. Cir. 2007). As
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`with its direct infringement arguments, AGIS’s indirect infringement arguments ignore entirely
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`that the sole identified claim in the Complaint recites a method performed by one or more servers.
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`With the servers all located outside of this District, AGIS cannot plausibly allege that an Uber
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`2 In its motion to dismiss, Uber also challenged the sufficiency of AGIS’s pleading of indirect
`infringement. Dkt. 24 at 35-36. The Report only addressed the motion “with respect to the defense
`of improper venue.” Dkt. 142 at 1.
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 6 of 8 PageID #: 5157
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`customer in this District performs the method (or any part of the method) using Uber’s servers.
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`And the one example AGIS provided—storing phone numbers—again, is not a claim limitation.
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`Thus, to the extent the Report relied on AGIS’s indirect infringement claims, such reliance was in
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`error.
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`C.
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`AGIS Must Demonstrate Venue for Each Patent Independently
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`Finally, the Report notes “that although Uber challenges venue with respect to the ’838
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`Patent, Uber has not alleged improper venue with respect to other patents at issue in this matter.”
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`Dkt. 142 at 6. That Uber did not challenge venue with respect to the other four asserted patents is
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`of no matter. AGIS must separately establish venue for each asserted patent. Quartz Auto Techs.
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`LLC v. Lyft, Inc., 2021 WL 1177886, at *3 (W.D. Tex. Mar. 29, 2021) (dismissing one of five
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`asserted patents based on lack of proper venue for that one patent); Digit. Equip. Corp. v. Elec.
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`Memories & Magnetics Corp., 452 F. Supp. 1262, 1266 (D. Mass. 1978) (“[A plaintiff] must
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`establish proper venue as to each patent allegedly infringed.”); see also Datascope Corp. v. SMEC,
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`Inc., 561 F. Supp. 787, 789 (D.N.J. 1983). In its briefing, AGIS did not challenge this statement
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`of law. Thus, to the extent the Report sought to reinforce its decision, even if in part, on Uber’s
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`challenge to venue related to the ’838 patent alone, Uber’s focused venue challenge provides no
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`such reinforcement.
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`* * *
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`AGIS failed in its Compliant and its briefing to identify a single act of infringement,
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`whether by Uber directly or indirectly through its customers, that occurred in this District with
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`respect to the ’838 patent. Venue is therefore improper as to the ’838 patent and dismissal
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`appropriate. The Report erred in its review of the asserted allegations, unrebutted facts and
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`unrebutted law. Uber, therefore, respectfully requests that the Court reverse the Report’s
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`conclusion and grant Uber’s Motion to Dismiss the ’838 Patent for Improper Venue.
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 7 of 8 PageID #: 5158
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`Dated: September 16, 2021
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`By:
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`/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
`
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
`Email: melissa@gillamsmithlaw.com
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`Attorneys for Defendant Uber Technologies,
`Inc. d/b/a Uber
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`Case 2:21-cv-00072-JRG-RSP Document 155 Filed 09/16/21 Page 8 of 8 PageID #: 5159
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 16, 2021, the foregoing was electronically filed in
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`compliance with Local Rule CV-5(a) and served via the Court’s electronic filing system on all
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`counsel who have consented to electronic service on this 16th day of September, 2021.
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`/s/ Mark N. Reiter
`Mark N. Reiter
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