Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 1 of 14 PageID #: 6837
`
`
`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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`
`
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`
`
`§
`§
`§
`§
`§
`§
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` §
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`§
`§
`§
`§
`§
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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
`OPPOSED MOTION TO COMPEL PRIOR LITIGATION DOCUMENTS
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`
`
`

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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 2 of 14 PageID #: 6838
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`
`I.
`II.
`III.
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`IV.
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`
`
`TABLE OF CONTENTS
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`Page 
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`BACKGROUND ................................................................................................................ 1
`LEGAL STANDARD ......................................................................................................... 4
`LITIGATIONS RELATED TO THE ASSERTED PATENTS ......................................... 5
`A.
`The Requested Documents Are Relevant and Important ........................................ 5
`B.
`Order and Appropriate Redactions ......................................................................... 6
`CONCLUSION ................................................................................................................... 7
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`AGIS SHOULD BE COMPELLED TO PRODUCE DOCUMENTS FROM PRIOR
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`Third-Party Confidentiality Concerns Can Be Addressed though the Protective
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`
`
`i
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`

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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 3 of 14 PageID #: 6839
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`
`TABLE OF AUTHORITIES
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`Page(s)
`
`CASES
`Abstrax v. Hewlett-Packard Co.,
`2:14-cv-158-JRG, 2015 WL 11197823 (E.D. Tex. Jan. 29, 2015) ............................................6
`Advanced Ground Information Systems, Inc. v. Life360, Inc.,
`No. 9:14-cv-80651 (S.D. Fl.) .....................................................................................................1
`AGIS Software Development LLC v. Google LLC et al.,
`No. 2:19-cv-00361 (E.D. Tex.) ..................................................................................................2
`AGIS Software Development LLC v. Huawei Device USA Inc. et al.,
`No. 2:17-cv-00513 (E.D. Tex.) ..................................................................................................2
`EVS Codec Techs., LLC v. OnePlus Tech. (Shenzhen) Co., Ltd.,
`No. 2:19-CV-00057-JRG, 2020 WL 6365514 (E.D. Tex. Apr. 9, 2020) ..............................4, 5
`Herbert v. Lando,
`441 U.S. 153 (1979) ...................................................................................................................4
`Huawei Techs. Co. v. Huang,
`No. 4:17-CV-00893, 2018 WL 3862061 (E.D. Tex. Aug. 14, 2018) ........................................7
`Infernal Tech., LLC v. Microsoft Corp.,
`2:18-cv-00144-JRG, 2019 WL 5388442 (E.D. Tex. May 3, 2019) .......................................5, 6
`Pioneer Corp. v. Samsung SDI Co.,
`2:07-CV-170-DF (E.D. Tex.), Dkt. 204 (Sep. 16, 2008 Order).................................................6
`Pioneer Corp. v. Samsung SDI Co.,
`2:07-CV-170-DF (E.D. Tex.), Dkt. 204 (Sept. 16, 2008 Order) ...............................................5
`Spacetime 3D, Inc. v. Samsung Electronics Co., Ltd.,
`2:19-cv-00372-JRG (E.D. Tex.), Dkt. 96 (Nov. 23, 2020 Order) .............................................6
`SSL Servs., LLC v. Citrix Sys., Inc.,
`No. 2:08-cv-158-TJW, 2010 WL 547478 (E.D. Tex. Feb. 10, 2010) ........................................5
`Stephenson v. Caterpillar Inc.,
`No. 216CV00071JRGRSP, 2018 WL 11351531 (E.D. Tex. Oct. 30, 2018) .............................2
`TIVO Inc. v. Verizon Commc’ns, Inc. et al.,
`2:09-cv-00257-JRG (E.D. Tex.), Dkt. 298 (June 8, 2012 Order) ..............................................6
`Tivo Inc. v. Verizon Communications,
`No. 2:09-cv-257 (E.D. Tex.), Dkt. 298 (June 8, 2012 Order) ....................................................7
`RULES
`Fed. R. Civ. P. 26 .............................................................................................................................4
`
`ii
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`

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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 4 of 14 PageID #: 6840
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`Defendant Uber Technologies, Inc. (“Uber”) requests that the Court order Plaintiff AGIS
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`Software Development LLC (“AGIS”) to produce a limited set of relevant documents from prior
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`litigations involving the Asserted Patents: infringement and invalidity contentions, technical and
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`damages-related expert reports, and transcripts and exhibits from all expert depositions. These
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`documents are all highly relevant to this case, in which AGIS asserts patents from the same family,
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`including some of the very same patents, against Uber as it previously asserted against defendants
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`such as Life360, Huawei, LG, Apple, HTC, ZTE, and Google. For example, the requested
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`documents will show how AGIS interprets these patents, as well as to issues of infringement,
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`invalidity, and damages. AGIS’s sole objection to producing these documents—that they are
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`subject to the Protective Orders filed in those cases—can be accommodated by an Order from this
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`Court requiring production subject to the strict requirements of the Protective Order in this case,
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`or by applying redactions where appropriate. Uber therefore respectfully requests that the Court
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`order production of these documents.
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`I.
`
`BACKGROUND
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`On January 29, 2021, AGIS sued Uber for allegedly infringing five patents: U.S. Patent
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`Nos. 7,031,728; 7,630,724; 8,213,970; 10,299,100; and 10,341,838. Two of five Asserted Patents
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`(the ’728 and ’970 patents) have been previously litigated, and the remaining patents are part of
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`the same family.
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`In May 2014, Advanced Ground Information Systems, Inc. (a sister company of current
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`plaintiff AGIS) sued Life360, Inc. in the Southern District of Florida, alleging infringement of
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`the ’728 patent and three other related patents. See Advanced Ground Information Systems, Inc.
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`v. Life360, Inc., No. 9:14-cv-80651 (S.D. Fl.). The case proceeded to trial in March 2015, and the
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`jury found that the asserted patents were not infringed. Following trial, the Court held that the
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`plaintiff’s infringement case was exceptionally weak and granted the defendant’s motion for
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`1
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`attorneys’ fees under 35 U.S.C. § 285.
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`In June 2017, AGIS (after acquiring the Asserted Patents from AGIS, Inc.) filed five related
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`cases against Huawei, LG, Apple, HTC, and ZTE, alleging infringement of the ’970 patent among
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`several other related patents. See AGIS Software Development LLC v. Huawei Device USA Inc. et
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`al., No. 2:17-cv-00513 (E.D. Tex.). These cases all settled.
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`Beginning in November 2019, AGIS filed another set of three related cases against Google,
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`Samsung, and Waze Mobile, alleging infringement of several related patents, including the ’970
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`patent. See AGIS Software Development LLC v. Google LLC et al., No. 2:19-cv-00361 (E.D.
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`Tex.). On February 9, 2021, after summary judgment briefing, this Court granted the defendants’
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`motion to stay pending ex parte reexamination of all asserted patents.
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`Uber has repeatedly requested relevant documents from these prior litigations:
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` May 28, 2021 – At the outset of discovery, Uber wrote AGIS specifically requesting
`production of documents from these prior litigations, including pleadings, briefing,
`infringement and invalidity contentions, expert reports, and expert deposition transcripts and
`exhibits. AGIS did not respond.
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` July 30, 2021 – Uber followed up on its request by letter. AGIS did not respond.
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` September 16, 2021 – Soon after the September 14, 2021 deadline for substantial completion
`of document production, Uber wrote to AGIS noting that AGIS’s production of prior litigation
`documents was deficient.
`
` September 21, 2021 – AGIS finally responded and represented to Uber for the first time that it
`did not have any materials from the prior litigations containing third-party confidential
`information1 and stated that it intended to produce the prior litigation materials in its possession
`the following week.
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` September 22, 2021 – Uber responded the next day noting AGIS’s unjustified delay in
`producing these materials, noting that AGIS has in its possession relevant materials from the
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`1 AGIS’s destruction of relevant documents may be improper spoliation. See Stephenson v.
`Caterpillar Inc., No. 216CV00071JRGRSP, 2018 WL 11351531, at *5 (E.D. Tex. Oct. 30, 2018)
`(“The duty to preserve generally applies when a party has notice that the evidence is relevant to
`the litigation or should have known that the evidence may be relevant to future litigation.”).
`Mr. Malcom Beyer, AGIS’s CEO, testified that AGIS suspected Uber of infringing by at least
`2016, well before the Apple cases were filed. See Ex. A (10/22/2021 Tr.) at 168:15–17.
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`
`2
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`

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`prior litigations, and stating that AGIS must seek any permissions necessary from any third
`parties. Uber also requested to meet and confer. AGIS did not respond.
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` October 4, 2021 – Uber wrote to AGIS seeking confirmation that AGIS had produced all
`documents in AGIS’s possession, custody, or control relating to the prior litigations. AGIS
`did not respond.
`
` October 8, 2021 – Uber wrote to AGIS again asking for confirmation that AGIS had produced
`all documents in AGIS’s possession, custody, or control relating to the prior litigations, and
`asking to meet and confer. AGIS did not respond.
`
` October 11, 2021 – Defendants wrote to AGIS to note AGIS’s continued refusal to produce
`relevant prior litigation documents, noting that AGIS had failed to produce any transcripts from
`the Google cases (including for AGIS’s witnesses) and had selectively produced only certain
`of its own expert reports (e.g., AGIS had produced its validity reports but not the corresponding
`invalidity reports).
`
` October 11–12, 2021 – AGIS finally responded that it was “unaware” of the missing materials
`that were “inadvertently” withheld, and stated that Defendants must contact relevant third
`parties for permission to produce the remaining materials, indicating for the first time that
`AGIS had done nothing since the beginning of discovery to seek permission to produce these
`materials. AGIS stated that for the Google cases, it would be unduly burdensome to redact
`third-party confidential information from those materials.
`
` October 14, 2021 – Uber wrote AGIS noting its failure to respond to Uber’s various
`correspondence and requested a meet and confer.
`
` October 15, 2021 – AGIS represented that it had already produced the prior litigation
`documents in AGIS’s possession, custody or control, and that pursuant to the PO in the prior
`litigations, AGIS has no third party confidential information in its possession, custody, or
`control.
`
` October 18, 2021 – The parties held a lead and local meet and confer, in which AGIS repeated
`its representation that it had already produced the prior litigation materials in its possession,
`with the exception of documents from the Google cases containing third-party confidential
`information. AGIS also informed Uber that it still had not sought any permission from any
`third parties to produce prior litigation documents, but agreed to do so.
`
` November 1, 2021 – The parties held a lead and local meet and confer, and informed Uber that
`counsel for the third parties in the Google cases had not responded to their request to produce
`the relevant materials.2 AGIS confirmed that its only objection to production of these materials
`
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`2 Also, when Uber discovered that AGIS had done nothing to contact the relevant third parties,
`Uber’s counsel reached out to also seek permission for AGIS to produce these documents.
`Google’s counsel responded just before the close of business today that it does not consent to
`production of its confidential information in this case. Uber will continue to speak with Google’s
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`3
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`

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`was its obligations under the protective orders in the Google cases.
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`
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`Despite AGIS’s representations that it had produced all materials in its possession from the
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`prior litigations, AGIS’s recent productions indicate those representations were mistaken. For
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`example, AGIS produced its validity expert reports from the Apple and Google sets of cases—
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`which reports are designated RESTRICTED – ATTORNEYS’ EYES ONLY—on September 29,
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`2021. But contrary to its prior, repeated representations that it had produced all of the prior
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`litigation materials it had from the Apple cases, it finally produced just days before the close of
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`fact discovery one of the invalidity reports from the Apple cases that was not marked confidential
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`at all, and thus entailed no confidentiality concerns and should have been produced long ago. And
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`AGIS still has not produced the other invalidity report from the Apple cases nor any invalidity
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`reports from the Google cases. It is apparent that, despite the limited, self-serving production of
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`selected documents, AGIS still has not produced relevant documents from these prior litigations,
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`including infringement and invalidity contentions, expert reports on both technical and damages
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`issues, expert deposition transcripts, and exhibits to the foregoing. That is the limited universe of
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`relevant materials Uber seeks from the prior litigations.
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`II.
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`LEGAL STANDARD
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`AGIS is required to “produce . . . all documents . . . that are relevant to the pleaded claims
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`or defenses involved in this action.” Discovery Order (Dkt. 79) ¶ 3(b). “The rules of discovery
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`‘are to be accorded a broad and liberal treatment to effect their purpose of adequately informing
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`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
`
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`counsel to better understand their concern, but given the present deadline for motions to compel,
`Uber files the present motion with the understanding that at least portions thereof may be mooted.
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`4
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`

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`within this scope of discovery need not be admissible in evidence to be discoverable,” Fed. R. Civ.
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`P. 26(b)(1), and thus “the relevance for something to be discoverable is lower than that of the
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`relevance required for something to be admissible,” EVS Codec Techs., 2020 WL 6365514, at *2.
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`“Once the moving party establishes that the materials requested are within the scope of permissible
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`discovery, the burden shifts to the party resisting discovery to show why the discovery is irrelevant,
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`overly broad, or unduly burdensome or oppressive, and thus should not be permitted.” EVS Codec
`
`Techs., 2020 WL 6365514, 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)). “Plaintiffs’ prior litigation positions
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`regarding the same claims asserted in this case are relevant to the claims and defenses in this case.”
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`Infernal Tech., LLC v. Microsoft Corp., 2:18-cv-00144-JRG, 2019 WL 5388442, at *2 (E.D. Tex.
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`May 3, 2019).
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`III. AGIS SHOULD BE COMPELLED TO PRODUCE DOCUMENTS FROM PRIOR
`LITIGATIONS RELATED TO THE ASSERTED PATENTS
`A.
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`The Requested Documents Are Relevant and Important
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`All of the information requested by Uber is highly relevant to Uber’s defenses in this
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`litigation. As noted above, AGIS does not object to production of these materials on ground of
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`relevance; only that they are subject to the Protective Order in the Google cases.
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`Contentions, Reports, and Deposition Transcripts. This Court has repeatedly held that
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`infringement contentions and infringement expert reports concerning the asserted patent are
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`relevant, and has ordered their production. See, e.g., Infernal Tech., 2019 WL 5388442, at *2; see
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`also Pioneer Corp. v. Samsung SDI Co., 2:07-CV-170-DF (E.D. Tex.), Dkt. 204 (Sep. 16, 2008
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`Order) at 2 (ordering production of “all infringement and invalidity contentions (including
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`exhibits)” in prior litigation). For example, here, the requested technical information will reveal
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`how AGIS has previously interpreted two of the patents asserted in this case, as well as related
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 9 of 14 PageID #: 6845
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`patents. The same logic applies to the depositions of expert witnesses. The depositions pertain to
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`AGIS’s interpretation of the patents and its infringement and validity theories just as much as its
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`experts’ reports. See Abstrax v. Hewlett-Packard Co., 2:14-cv-158-JRG, 2015 WL 11197823, at
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`*4 (E.D. Tex. Jan. 29, 2015) (ordering production of all disputed documents from prior litigation,
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`“including any deposition exhibits or transcripts, or any pleadings,” except for video of non-party’s
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`manufacturing process).
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`Damages Reports. This Court has recognized that “the production of expert discovery
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`from cases with comparable or arguably comparable licenses [is] proper and need[s] to occur . . . .”
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`See Spacetime 3D, Inc. v. Samsung Electronics Co., Ltd., 2:19-cv-00372-JRG (E.D. Tex.), Dkt. 96
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`(Nov. 23, 2020 Order) at 3. Indeed, this Court has recognized the importance of prior license
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`agreements even if they merely “relat[e] to the accused products.” Id. at 2–3; see also TIVO Inc.
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`v. Verizon Commc’ns, Inc. et al., 2:09-cv-00257-JRG (E.D. Tex.), Dkt. 298 (June 8, 2012 Order)
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`at 2 (ordering production of expert damages report from prior litigation regarding patent that was
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`prior art to the current patent-in-suit). As noted above, the prior litigations have resulted in several
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`licenses to the Asserted Patents, and AGIS’s prior positions regarding the value of the Asserted
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`Patents are highly relevant to understanding those licenses.
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`B.
`
`Third-Party Confidentiality Concerns Can Be Addressed though the
`Protective Order and Appropriate Redactions
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`AGIS’s sole objection to producing these documents—that it cannot do so because of its
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`obligations regarding third-party confidential information in the Google cases—can be remedied
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`through applying the Protective Order in this case and through redactions where appropriate. As
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`this Court has previously noted in ordering production of prior litigation materials, “there is no
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`reason why [this] confidential information cannot be adequately protected via the Protective Order
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`governing this case.” Infernal Technology LLC v. Microsoft Corp., 2019 WL 5388442, *2 (E.D.
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`6
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`

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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 10 of 14 PageID #: 6846
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`Tex., May 3, 2019); see also Pioneer Corp. v. Samsung SDI Co., 2:07-CV-170-DF (E.D. Tex.),
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`Dkt. 204 (Sep. 16, 2008 Order) at 3 (ordering the withholding party to contact the third party to
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`attempt to obtain consent, but nevertheless ordering production of the materials). The materials
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`can be produced RESTRICTED ‒ ATTORNEYS’ EYES ONLY, which prevents any in-house
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`counsel from accessing the information. Protective Order ¶ 9, Dkt. No. 96.
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`Moreover, any confidentially concerns can be addressed through AGIS’s “ability to
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`produce any information . . . in a reasonably redacted format.” Huawei Techs. Co. v. Huang, No.
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`4:17-CV-00893, 2018 WL 3862061, at *5 (E.D. Tex. Aug. 14, 2018). AGIS has objected that
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`redacting confidential information is overly burdensome, but has never articulated what that
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`burden would be for the limited set of documents requested by Uber’s motion. Indeed, it has
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`already produced unredacted confidential documents from the prior litigations that are helpful to
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`its case, such as its prior validity reports, while withholding other documents, such as adverse
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`invalidity reports. In any event, this Court has rejected this very complaint in ordering production
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`of prior litigation documents. See Tivo Inc. v. Verizon Communications, No. 2:09-cv-257, (E.D.
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`Tex.), Dkt. 298 (June 8, 2012 Order) (ordering production of prior damages testimony); see also
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`id. Dkt. 260 at 5 (withholding party objecting that “it would be burdensome to redact the third
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`party confidential information”).
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`IV. CONCLUSION
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`There is no dispute that this relevant information is in AGIS’s possession, and that it has
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`produced at least a subset of this information already. Given that AGIS’s confidentiality concerns
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`can be addressed by the Protective Order and appropriate redactions, Uber respectfully requests
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`AGIS to produce these highly relevant documents.
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`7
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`

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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 11 of 14 PageID #: 6847
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`Dated: November 3, 2021
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`
`
`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
`
`
`
`
`
`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
`
`
`Attorneys for Defendant Uber Technologies, Inc.
`d/b/a Uber
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`
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`8
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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 12 of 14 PageID #: 6848
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 3, 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 196 Filed 11/03/21 Page 13 of 14 PageID #: 6849
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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 18, 2021, and November
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`1, 2021, counsel for Uber, with Mark Reiter as lead counsel and Melissa Smith as local counsel,
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`met and conferred with counsel for Plaintiff, with Alfred Fabricant as lead counsel and Jennifer
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`Truelove as local counsel. The parties were unable to reach agreement and have reached an
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`impasse, leaving the open issues for the court to resolve. The motion is opposed by Plaintiffs.
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`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
`s/ Melissa Smith
`Melissa Smith
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`10
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`Case 2:21-cv-00072-JRG-RSP Document 196 Filed 11/03/21 Page 14 of 14 PageID #: 6850
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned hereby certifies that, under Local Rule CV-5(a)(7)(B), the foregoing
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`document is filed under seal pursuant to the Court’s Protective Order entered in this matter.
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`
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`/s/ Mark N. Reiter
`Mark N. Reiter
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`11
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