Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 1 of 6 PageID #: 5861
`Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 1 of 6 PagelD #: 5861
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`EXHIBIT 2
`EXHIBIT 2
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`Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 2 of 6 PageID #: 5862
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`September 20, 2021
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`VIA ELECTRONIC MAIL
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`Mark Reiter
`Direct: +1 214.698.3360
`Fax: +1 214.571.2907
`MReiter@gibsondunn.com
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`Alfred R. Fabricant
`Fabricant LLP
`411 Theodore Friend Road, Suite 206 South Rye, NY 10580
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`Re:
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`AGIS Software Development LLC v. Uber Technologies Inc. d/b/a Uber, No. 2:21-cv-
`00072 (E.D. Tex.)
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`Dear Counsel:
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`Pursuant to Section 9 of the Discovery Order (Dkt. 79), we write regarding AGIS’s First
`Amended Disclosure of Asserted Claims and Infringement Contentions (“Amended
`Infringement Contentions”). Despite having now had considerable access to Uber’s source
`code, AGIS has failed to cure the numerous deficiencies Uber first raised in its letter dated
`June 2, 2021. Furthermore, through the Amended Infringement Contentions, which were
`served pursuant to paragraph 3(a)(i) of the Discovery Order (Dkt. 79), AGIS continues to assert
`unsupported, inconsistent and untenable theories of infringement. This letter is focused on
`AGIS’s infringement theories with respect to providing and anonymizing users’ contact
`information, including phone numbers, email addresses, and IP addresses as well as AGIS’s
`failure to provide any support for its allegations that Uber Fleet infringes any of the asserted
`patents.
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`AGIS’s infringement contentions for certain claim elements flatly contradict contentions
`asserted for other claim elements. For example, claim 7 of U.S. Patent No. 7,031,728 (the
`“’728 Patent”) and claim 9 of U.S. Patent No. 7,630,724 (the “’724 Patent”) require that the
`phone number of the other users in the network be provided to and/or stored on the user’s
`device. See, e.g., Cl. 7, ’728 Patent (“providing and storing in each of the participant cellular
`phones one or more cellular phone telephone numbers, each cellular phone number of which
`relates to a different symbol of each of the participants in the communication network”); Cl.
`9, ’724 Patent (“accessing a database in each cell phone that includes cellular telephone
`numbers of each of the participating users having similarly equipped cellular phones, said
`database including the generation of one or more symbols associated with a particular
`participating user”). On the other hand, claim 1 of U.S. Patent No. 10,299,100 (the “’100
`Patent”) requires that the mobile device does not have access to the phone number of another
`participant in the network. See, e.g., Cl. 1, ’100 Patent (“wherein the mobile device does not
`have access to a phone number associated with a computing device corresponding to the first
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`Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 3 of 6 PageID #: 5863
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`September 20, 2021
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`vehicle, an Internet Protocol (IP) address associated with the computing device corresponding
`to the first vehicle, and an e-mail address associated with the computing device corresponding
`to the first vehicle”); see also Cl. 16, ’724 Patent.
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`Likewise, claim 9 of the ’724 patent requires that the network participants exchange IP
`addresses. Cl. 9, ’724 Patent (“exchanging IP addresses using SMS or other digital message
`format between and among each of the network participant users so that communications
`between participants is established via IP or transmission of a network participant’s IP address
`to a server which then transmits data to other network participants using the IP address
`previously”). But, in contrast, claim 1 of the ’100 Patent requires that the network participants
`do not have access to each other’s IP addresses.
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`Despite the differences in the aforementioned claim limitations, in its Amended Infringement
`Contentions, AGIS points to the same voice calling (or messaging) feature of the rider and
`driver apps to assert that the apps (1) provide and store user phone numbers and IP addresses
`and (2) do not provide and store user information. For example, for the claim limitations that
`require the phone numbers, AGIS asserts:
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`For ’728 patent, claim 7:
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`• Riders and drivers have “the Uber app” installed on their mobile phones. Amended
`Infringement Contentions at C-3.
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`• “The Uber Accused Products practice providing and storing in each of the participant
`cellular phones one or more cellular telephone phone numbers, each cellular phone
`number of which relates to a different symbol of each of the participants in the
`communication network.” Amended Infringement Contentions at C-21.
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`• “Uber collects the phone number of each driver and passenger when they join the Uber
`network. Uber stores and provides the phone numbers in the Uber apps . . . .” Amended
`Infringement Contentions at C-22.
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`For ’724 patent, claim 9:
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`• “Each of the driver’s and the passenger’s mobile phones [are] installed with the Uber
`app and Uber driver app . . . .” Amended Infringement Contentions at B-3.
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`• “The Uber Accused Products perform a computer implemented method . . . of:
`accessing a database in each cell phone that includes cellular telephone numbers of
`each of the participating users . . . .” Amended Infringement Contentions at B-21.
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`Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 4 of 6 PageID #: 5864
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`• “The Uber apps meet this limitation because they access cellular telephone numbers of
`the riders/drivers of the Uber platform/network. On information and belief, the
`telephone numbers are stored on one or more databases either locally or remotely on a
`Uber server(s) for access by the Uber apps.” Amended Infringement Contentions at B-
`21.
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`• “In the rider app, the device receives pickup and trip information including driver
`contact and picture data and stores the data in data structures.” Amended Infringement
`Contentions at B-22.
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`• “In the driver app, the device receives pickup and trip information including rider
`contact and picture data and stores the data in data structures.” Amended Infringement
`Contentions at B-23.
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`• “The Uber Accused Products infringe directly and/or indirectly by . . . exchanging IP
`addresses using SMS or other digital message format between and among each of the
`network participant users . . ..” Amended Infringement Contentions at B-30.
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`At the same time, AGIS’s contentions allege that the “Uber Accused Products” do not obtain
`and store phone numbers and contact information.
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`For ’724 patent, claim 16:
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`• “On information and belief, communications between riders/drivers do not require
`knowledge of the drivers/riders’ identity or phone number.” Amended Infringement
`Contentions at B-57.
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`For ’100 patent, claim 1:
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`• “Uber provides the Uber app for passengers and Uber Driver app for drivers.”
`Amended Infringement Contentions at D-3.
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`• “The Uber Accused Products infringe directly and/or indirectly . . . wherein the mobile
`device does not have access to a phone number associated with a computing device
`corresponding to the first vehicle, an Internet Protocol (IP) address associated with the
`computing device corresponding to the first vehicle . . . .” Amended Infringement
`Contentions at D-44.
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`• “The Uber app for the rider does not have access to the driver’s phone number
`associated with the driver’s account. The Uber app for the rider also does not have
`access to the driver’s email address or driver’s IP address associated with the driver’s
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`Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 5 of 6 PageID #: 5865
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`device through the Uber app. For example, the passenger does not have any
`information of the driver (such as email address, IP address, and contact number) and
`this information is not available through the Uber app for the rider.” Amended
`Infringement Contentions at D-44.
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`• “The rider app does not have access to a driver’s IP address or email address.”
`Amended Infringement Contentions at D-46.
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`These allegations are clearly inconsistent. The “Uber Accused Products” cannot, at the same
`time, store and exchange and not store and exchange rider/driver phone numbers, IP addresses
`and other contact information. Having reviewed Uber’s source code for multiple days, AGIS
`must choose among these inconsistent theories of infringement. AGIS’s continued assertion
`of these inconsistent positions forces Uber to unnecessarily expend time and resources on
`claims AGIS knows it will not and cannot assert. AGIS must immediately identify which
`theory it will pursue and the claims it is dropping.
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`Separately, and despite having had access to Uber’s source code for Uber Fleet, AGIS has
`failed to chart Uber Fleet as required by P.R. 3-1(c). This defect was initially raised in our
`June 2, 2021 letter. As we explained in that letter, a plaintiff can only use a single chart for
`multiple products “if separate charts would be identical for each product.” UltimatePointer,
`LLC v. Nintendo Co., No. 6:11-CV-496, 2013 WL 12140173, at *3 (E.D. Tex. May 28, 2013).
`If a plaintiff chooses to “designate and chart only an exemplar accused infringing product,
`Plaintiff must provide an explanation of the technical and functional identity of the products
`represented,” and “compare each exemplar product to each asserted patent on a claim by claim,
`element by element basis.” Id.; see also Traxcell Techs., LLC v. Huawei Techs. USA Inc., No.
`2:17-CV-00042-RWS-RSP, 2017 WL 6559256, at *5 (E.D. Tex. Dec. 21, 2017) (“Traxcell’s
`contentions do not chart each accused product or otherwise identify how each accused product
`is technically or functionally equivalent to a charted product, as required by the rules. There is
`no way for the defendants to channel discovery or prepare for claim construction without such
`an indication.”). AGIS continues to ignore its obligations under the local patent rules to
`separately chart each of the accused products even though it has now had considerable access
`to the source code and served amended contentions. Because AGIS has failed to explain
`how/why Uber Fleet allegedly infringes in its Amended Infringement Contentions, Uber
`considers that product no longer in the case. Uber will seek a protective order from the Court
`should AGIS continue to demand discovery of Uber Fleet.
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`AGIS’s failure to provide adequate contentions has prejudiced Uber, particularly given the
`upcoming close of expert and fact discovery and exchange of expert reports. Please confirm
`that AGIS will promptly remedy these deficiencies and seek leave of the Court to supplement
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`Case 2:21-cv-00072-JRG-RSP Document 172-2 Filed 10/20/21 Page 6 of 6 PageID #: 5866
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`its contentions, or let us know when you are available to meet and confer so we can raise this
`issue with the Court.
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`Sincerely,
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`/s/ Mark Reiter
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`Mark Reiter
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`cc: Samuel F. Baxter
` McKool Smith, P.C.
`
`104 E. Houston Street, Suite 300
` Marshall, Texas 75670
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