Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 1 of 14 PageID #: 6214
`
`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-00026-JRG
`(Member Case)
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`
` §
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`
`§
`§
`§
`§
`§
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER,
`
`
`DEFENDANT UBER TECHNOLOGIES, INC.’S MOTION TO STAY PENDING
`PATENT OFFICE PROCEEDINGS REGARDING THE ASSERTED PATENTS
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 2 of 14 PageID #: 6215
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`
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
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`Page
`
`Background ..........................................................................................................................1 
`
`Legal Standard .....................................................................................................................2 
`
`III. 
`
`Argument .............................................................................................................................3 
`
`A. 
`
`B. 
`
`C. 
`
`AGIS Will Not Suffer Undue Prejudice ................................................................. 3 
`
`The IPRs and Reexams Will Simplify or Eliminate Issues, Reducing the
`Burden on the Parties and This Court ..................................................................... 4 
`
`The Stage of the Case Favors a Stay ....................................................................... 6 
`
`IV. 
`
`Conclusion ...........................................................................................................................7 
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`
`
`
`i
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`

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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 3 of 14 PageID #: 6216
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`3rd Eye Surveillance, LLC v. Stealth Monitoring, Inc.,
`No. 6:14-cv-162-JDL, 2015 WL 179000 (E.D. Tex. Jan. 14, 2015) .........................................2
`
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-CV-00359-JRG, 2021 WL 465424 (E.D. Tex. Feb. 9, 2021) ....................................7
`
`Cellular Commc’ns Equip., LLC v. Samsung Elecs. Co., Ltd.,
`No. 6:14-cv-759, 2015 WL 11143485 (E.D. Tex. Dec. 16, 2015) ............................................4
`
`Customedia Techs., LLC v. DISH Network Corp.,
`No. 2:16-cv-129-JRG, 2017 WL 3836123 (E.D. Tex. Aug. 9, 2017) ...................................5, 6
`
`e-Watch Inc. v. Apple, Inc.,
`No. 2:13-cv-1061-JRG-RSP, 2015 WL 12915668 (E.D. Tex. Mar. 25, 2015) .........................6
`
`Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd.,
`No. 2:15-cv-00011-RSP, 2016 WL 1162162 (E.D. Tex. Mar. 23, 2016) ..................................2
`
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985)....................................................................................................5
`
`Evolutionary Intelligence, LLC v. Millennial Media, Inc.,
`No. 5:13-cv-04206-EJD, 2014 WL 2738501 (N.D. Cal. June 11, 2014) ..................................3
`
`Image Processing Techs., LLC v. Samsung Elecs. Co., Ltd.,
`No. 2:16-cv-505-JRG, 2017 WL 7051628 (E.D. Tex. Oct. 25, 2017) ......................................6
`
`KIPB LLC v. Samsung Elecs. Co.,
`No. 2:19-CV-00056-JRG-RSP, 2019 WL 6173365 (E.D. Tex. Nov. 20, 2019) .......................3
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................2
`
`NFC Tech. LLC v. HTC Am.,
`No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ..........................2, 5, 6
`
`Norman IP Holdings, LLC v. TP-Link Techs., Co.,
`No. 6:13-cv-384, 2014 WL 5035718 (E.D. Tex. Oct. 8 2014) ..................................................5
`
`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) .......................................................................................3
`
`Veraseal LLC v. Costco Wholesale Corp.,
`No. 2:17-cv-00713-RWS-RSP, 2018 WL 4524122 (E.D. Tex. May 18, 2018) ........................3
`
`ii
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`

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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 4 of 14 PageID #: 6217
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`
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`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)..............................................................................................3, 4
`
`Zillow, Inc. v. Trulia, Inc.,
`No. C12-1549-JLR, 2013 WL 5530573 (W.D. Wa. Oct. 7, 2013) ............................................4
`
`
`
`iii
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`

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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 5 of 14 PageID #: 6218
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`Defendant Uber Technologies, Inc. (“Uber”) respectfully requests that the Court stay
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`Plaintiff AGIS Software Development LLC’s (“AGIS”) case against Uber based on validity
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`challenges at the United States Patent and Trademark Office (“USPTO”) covering the asserted
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`claims of all five patents asserted by AGIS against Uber.
`
`I.
`
`BACKGROUND
`
`AGIS filed its complaint against Uber on January 29, 2021. See Compl. (No. 2:21-cv-
`
`00026, Dkt. 1). In that complaint, AGIS asserts that Uber infringes U.S. Patent Nos. 7,031,728
`
`(“the ’728 patent”); 7,630,724 (“the ’724 patent”); 8,213,970 (“the ’970 patent”); 10,299,100
`
`(“the ’100 patent”); and 10,341,838 (“the ’838 patent”). Prior to filing its complaint against Uber,
`
`AGIS filed a suit against Google LLC asserting the ’970 (and other) patents. See AGIS Software
`
`Development LLC v. Google LLC, No. 2:19-cv-00361 (E.D. Tex.).
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`Reexamination of the ’970 Patent. On May 15, 2020, Google filed a Request for Ex Parte
`
`Reexamination of the ’970 patent, challenging claims 2 and 10‒13—the same claims AGIS alleges
`
`Uber infringes.1 The USPTO granted the request on July 27, 2020, finding a substantial new
`
`question of patentability. On August 19, 2021, the challenged claims were finally rejected on
`
`multiple bases. Recently, on October 19, 2021, in response to the rejection, AGIS amended the
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`two challenged independent claims. 10/19/2021 Amendment (Ex. 1) at 3‒4, 6‒7, 9. As a result,
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`all claims of the ’970 patent asserted against Uber are affected by the pending reexamination.
`
`Inter Partes Review of the ’100 and ’838 Patents. On July 23, 2021, Uber filed three IPR
`
`petitions, one challenging claims 1‒23 of the ’100 patent, one challenging claims 24‒31 of the
`
`’100 patent, and one challenging claims 1‒26 of the ’838 patent. See IPR2021-01306;
`
`
` 1 Claims 1 and 3-9 were previously found unpatentable in an IPR proceeding filed by Google.
`See Google LLC v. AGIS Software Dev., LLC, IPR2018-01079, Final Written Decision (P.T.A.B.
`Nov. 19, 2019).
`
`1
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`

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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 6 of 14 PageID #: 6219
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`IPR2021-01307; IPR2021-01308. Between the three petitions, all claims of the ’100 and
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`’838 patents asserted by AGIS against Uber have been challenged. AGIS’s Patent Owner’s
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`Preliminary Responses are due on November 9, 2021 (regarding the ’838 patent) and November
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`12, 2021 (regarding the ’100 patent), and the PTAB will issue its institution decisions no later than
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`three months later.
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`Reexamination of the ’728 and ’724 Patents. On June 24, 2021, co-defendant WhatsApp
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`filed IPR petitions challenging all asserted claims of the ’728 and ’724 patents. On October 7,
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`2021, based on a settlement agreement between WhatsApp and AGIS, the IPR proceedings were
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`terminated. Promptly thereafter, on October 22, 2021, Uber filed Requests for Ex Parte
`
`Reexamination of the ’728 and ’724 patents that cover each of the claims of the ’728 and
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`’724 patents asserted against Uber by AGIS. See Appl. No. 90/014,889; Appl. No. 90/014,890.
`
`The USPTO must act on the requests for reexamination by January 22, 2021.
`
`II.
`
`LEGAL STANDARD
`
`“A district court has the inherent power to control its own docket, including the power to
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`stay proceedings before it.” Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-cv-
`
`00011-RSP, 2016 WL 1162162, at *1 (E.D. Tex. Mar. 23, 2016); see also Landis v. N. Am. Co.,
`
`299 U.S. 248, 254 (1936) (“[T]he power to stay proceedings is incidental to the power inherent in
`
`every court to control the disposition of the causes on its docket with economy of time and effort
`
`for itself, for counsel, and for litigants.”). “A stay is particularly justified when ‘the outcome of a
`
`PTO proceeding is likely to assist the court in determining patent validity or eliminate the need to
`
`try infringement issues.’” Ericsson, 2016 WL 1162162, at *1 (quoting NFC Tech. LLC v. HTC
`
`Am., No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015); see also 3rd
`
`Eye Surveillance, LLC v. Stealth Monitoring, Inc., No. 6:14-cv-162-JDL, 2015 WL 179000, at *1
`
`2
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`

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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 7 of 14 PageID #: 6220
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`(E.D. Tex. Jan. 14, 2015); Evolutionary Intelligence, LLC v. Millennial Media, Inc., No. 5:13-cv-
`
`04206-EJD, 2014 WL 2738501, at *2 (N.D. Cal. June 11, 2014).
`
`In deciding whether to stay litigation pending IPR or ex parte reexamination, courts
`
`typically consider three factors: “(1) whether a stay will unduly prejudice or present a clear tactical
`
`disadvantage to the nonmoving party, (2) whether a stay will simplify the issues, and (3) whether
`
`discovery is complete and whether a trial date has been set.” Veraseal LLC v. Costco Wholesale
`
`Corp., No. 2:17-cv-00713-RWS-RSP, 2018 2018 WL 4524122, at *1 (E.D. Tex. May 17, 2018)
`
`(citing Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex. 2005));
`
`KIPB LLC v. Samsung Elecs. Co., No. 2:19-CV-00056-JRG-RSP, 2019 WL 6173365, at *1
`
`(E.D. Tex. Nov. 20, 2019) (the stay analysis is “substantially the same” for IPR and ex parte
`
`reexamination proceedings).
`
`III. ARGUMENT
`A.
`
`AGIS Will Not Suffer Undue Prejudice
`
`AGIS will not suffer any undue prejudice if the Court stays the case. “[W]hether the
`
`patentee will be unduly prejudiced by a stay in the district court proceedings . . . focuses on the
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`patentee’s need for an expeditious resolution of its claim.” See VirtualAgility Inc. v.
`
`Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014). To start, the ’728 patent—from which
`
`all of the remaining asserted patents descend—was filed in 2004 and issued in 2006. And, despite
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`AGIS filing many other lawsuits over the last decade and a half, including ones asserting the
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`’728 patent, AGIS waited until 2021 to file suit against Uber, thus demonstrating a lack of urgency.
`
`Next, according to AGIS, the patents were developed to “give users situational awareness
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`superior to systems provided by conventional military and first responder radio systems.” Compl.
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`(No. 2:21-cv-00026, Dkt. 1) ¶ 23. These users, AGIS explains in the complaint, are “first
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`responders, law enforcement, and military personnel.” Id. ¶ 24. In contrast, Uber provides
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`3
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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 8 of 14 PageID #: 6221
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`ridesharing services. Moreover, the fact that AGIS did not move for a preliminary injunction
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`further demonstrates that AGIS will not suffer any prejudice if the case is stayed pending resolution
`
`of the USPTO proceedings. Zillow, Inc. v. Trulia, Inc., No. C12-1549-JLR, 2013 WL 5530573,
`
`at *6 (W.D. Wa. Oct. 7, 2013) (“It is well-established that the delay inherent in the reexamination
`
`process by itself does not constitute undue prejudice. . . . [A]ttempts by a patentee to argue undue
`
`prejudice are undermined if the patentee has elected not to pursue preliminary injunctive relief.”).
`
`AGIS is a patent assertion entity that does not compete with Uber. As such, monetary
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`relief will sufficiently compensate AGIS for any damages, and a “stay will not diminish the
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`monetary damages to which [AGIS] will be entitled if it succeeds in its infringement suit—it only
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`delays realization of those damages and delays any potential injunctive remedy.” VirtualAgility,
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`759 F.3d at 1318. The “mere delay in collecting those damages does not constitute undue
`
`prejudice.” Cellular Commc’ns Equip., LLC v. Samsung Elecs. Co., Ltd., No. 6:14-cv-759, 2015
`
`WL 11143485, at *2 (E.D. Tex. Dec. 16, 2015) (internal citation omitted).
`
`Uber, by contrast, would suffer undue prejudice in the absence of a stay, because it would
`
`continue to incur the expense and burden of defending against infringement allegations of patent
`
`claims that the USPTO may invalidate or that may emerge from the proceedings amended. AGIS
`
`has already sought to amend all asserted claims of the ’970 patent. Thus, at a minimum, the
`
`’970 patent will emerge from reexamination in amended form. There is no reason for Uber to
`
`continue incurring the expense of litigating patent claims that are in the process of being amended.
`
`Accordingly, this factor favors granting this motion to stay.
`
`B.
`
`The IPRs and Reexams Will Simplify or Eliminate Issues, Reducing the
`Burden on the Parties and This Court
`
`Uber has been diligent in pursuing USPTO review of the asserted patents and a stay of this
`
`litigation. Uber filed its IPR petitions covering the ’100 and ’838 patents on July 23, 2021. Uber
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`4
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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 9 of 14 PageID #: 6222
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`filed the ex parte reexamination requests covering the ’728 and ’724 patents approximately two
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`weeks after WhatsApp terminated its pending IPR petitions covering the same patents. And the
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`’970 reexamination has been pending since before AGIS filed its complaint against Uber. Within
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`one business day of filing the EPR requests, Uber filed the present motion.
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`“[T]he most important factor bearing on whether to grant a stay in this case is the prospect
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`that the [Patent Office] review proceeding will result in simplification of the issues before the
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`Court.” NFC Tech., 2015 WL 1069111, at *4. The IPR petitions and reexam requests collectively
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`cover all asserted claims in this case. Cancellation of all of the asserted claims would completely
`
`resolve the case, and cancellation of some asserted claims would reduce the number of claims
`
`remaining for expert discovery, dispositive motions briefing and, ultimately, trial.
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`Further, the IPR petitions and EPR requests present several prior art grounds that were not
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`previously considered by the USPTO. In fact, as noted above, AGIS has already amended claims
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`in one reexamination proceeding in response to a final rejection. Therefore, “[s]taying this case
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`has the potential to simplify the issues before the Court,” and potentially, resolve the issues
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`altogether. Customedia Techs., 2017 WL 3836123, at *2. “[A] stay has the potential to decrease
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`the burdens on the Court and the parties, and any potential costs, delay, or prejudice resulting from
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`postponing the resolution of the case are outweighed by the benefits of a stay.” Id.
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`Moreover, “[a] stay is particularly justified when the outcome of a PTO proceeding is likely
`
`to assist the court in determining patent validity or eliminate the need to try infringement issues.”
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`NFC Tech., 2015 WL 1069111, at *1. As the Federal Circuit and this Court have observed, “an
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`auxiliary function [of the PTO proceeding] is to free the court from any need to consider prior art
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`without the benefit of the [PTO]’s consideration.” Norman IP Holdings, LLC v. TP-Link Techs.,
`
`Co., No. 6:13-cv-384, 2014 WL 5035718, at *2 (E.D. Tex. Oct. 8 2014) (quoting In re Etter,
`
`756 F.2d 852, 857 (Fed. Cir. 1985)).
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`5
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`

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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 10 of 14 PageID #: 6223
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`According to the USPTO’s most recent reexamination statistics, 92% of requests for
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`ex parte reexamination are granted and, of those, 79% result in either the cancellation or
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`modification of at least some claims. See USPTO Ex Parte Reexamination Filing Data (Ex. 2)
`
`at 1‒2. Similarly, 56% of IPR petitions are instituted, with the majority of claims in those instituted
`
`proceedings being found to be unpatentable. See USPTO IPR Data (Ex. 3) at 3, 16. Therefore, it
`
`is highly likely that the USPTO proceedings will impact this case significantly. Even if they
`
`invalidate only some of the claims, the proceedings will have narrowed the issues and will also
`
`add prosecution history that may inform the construction of claim terms, as well as infringement
`
`and invalidity issues. See NFC Tech., 2015 WL 1069111, at *7 (“[A]ny disposition by the PTAB
`
`is likely to simplify the proceedings before this Court.”).
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`Thus, this factor weighs in favor of a stay.
`
`C.
`
`The Stage of the Case Favors a Stay
`
`As noted above, Uber diligently pursued USPTO review of the asserted patents and a stay
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`of this litigation. As such, staying the case now would avoid duplicative litigation. See e-Watch
`
`Inc. v. Apple, Inc., No. 2:13-cv-1061-JRG-RSP, 2015 WL 12915668, at *3 (E.D. Tex. Mar. 25,
`
`2015) (finding defendant promptly renewed its motion to stay by filing within two days of PTAB’s
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`decision). Jury selection in this case is scheduled to occur on March 7, 2022, which is still several
`
`months away. Expert reports have not yet been exchanged and the Court has not yet issued a
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`Markman decision. Fact discovery has not closed and dispositive and Daubert motions have not
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`yet been filed. See Image Processing Techs., LLC v. Samsung Elecs. Co., Ltd., No. 2:16-cv-505-
`
`JRG, 2017 WL 7051628, at *2 (E.D. Tex. Oct. 25, 2017) (granting renewed motion to stay in
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`which jury selection was scheduled to occur less than two months after the renewed motion). A
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`significant amount of work remains for the parties and the Court, and a stay will avoid the
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`unnecessary expense and effort associated with this work. See Customedia Techs., LLC v. DISH
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`6
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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 11 of 14 PageID #: 6224
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`Network Corp., No. 2:16-cv-129-JRG, 2017 WL 3836123, at *2–3 (E.D. Tex. Aug. 9, 2017)
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`(granting an opposed motion to stay after briefing on motions in limine and summary judgment
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`had concluded).
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`Furthermore, earlier this year, this Court stayed the related case against Google pending
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`resolution of EPRs on the asserted patents in that case, including the ’970 patent asserted against
`
`Uber here, notwithstanding that the motion to stay was filed “with discovery complete, pretrial
`
`briefing submitting, and jury selection pending.” AGIS Software Dev. LLC v. Google LLC, No.
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`2:19-CV-00359-JRG, 2021 WL 465424, at *3 (E.D. Tex. Feb. 9, 2021). This Court explained that
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`“[s]ince all the asserted claims of all Asserted Patents, pending before this Court, are now subject
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`to granted EPRs the prejudice to AGIS is outweighed by the benefit of such parallel review.” Id.
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`The same benefits may accrue here, given that USPTO review has been sought against all claims
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`asserted against Uber.
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`Thus, this factor also weighs in favor of a stay.
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`IV. CONCLUSION
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`For the foregoing reasons, Uber submits that good cause exists for staying all claims and
`
`issues pending the outcome of all USPTO proceedings.
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`
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`7
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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 12 of 14 PageID #: 6225
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`Dated: October 25, 2021
`
`
`By:
`
`
`
`
`
`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
`
`
`/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
`
`
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`8
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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 13 of 14 PageID #: 6226
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 25, 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.
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`
`
`
`
`
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
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`9
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`Case 2:21-cv-00072-JRG-RSP Document 180 Filed 10/25/21 Page 14 of 14 PageID #: 6227
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(h) and (i), I certify that on October 22, 2021, counsel for
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`Uber conferred with Counsel for Plaintiff, who stated Plaintiff opposes the foregoing motion.
`
`/s/ Mark N. Reiter
`Mark N. Reiter
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`10
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