Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 1 of 11 PageID #: 7176
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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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`LYFT, 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-00024-JRG
`(Member Case)
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`CASE NO. 2:21-cv-00026-JRG
`(Member Case)
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`DEFENDANT LYFT, INC.’S OPPOSED MOTION TO COMPEL DOCUMENT
`PRODUCTION, WRITTEN DISCOVERY, AND DEPOSITIONS
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 2 of 11 PageID #: 7177
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`Lyft respectfully requests this Court to compel AGIS to provide the following discovery:
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`(1) production of damages expert reports from litigations involving the same patents;
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`(2) an additional deposition day with named inventor Malcolm K. Beyer, Jr. who is the
`named inventor on all five asserted patents, 30(b)(6) designee for over ninety topics for
`Plaintiff and over eighty topics for third-party AGIS, Inc.;
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`(3) complete responses to Lyft’s Interrogatory Nos. 1, 2, 8, 11, 15, 18, and 21
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`STATEMENT OF LAW
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`Federal Rule of Civil Procedure 26(b) allows discovery of any matter “relevant subject
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`matter involved in the pending action” if it would be admissible as evidence or “appears
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`reasonably calculated to lead to the discovery of admissible evidence.” “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.
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`2:19-cv-00057-JRG, 2020 WL 6365514, at *1 (E.D. Tex. Apr. 9, 2020) (quoting Herbert v.
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`Lando, 441 U.S. 153, 176 (1979)). The Federal Rules of Civil Procedure provides that,
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`“[i]nformation within this scope of discovery need not be admissible in evidence to be
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`discoverable,” 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.” Id. at *2 (quoting Fed. R. Civ. P. 26(b)(1)).
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`“Once the moving party establishes that the materials requested are within the scope of
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`permissible discovery, the burden shifts to the party resisting discovery to show why the
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`discovery is irrelevant, overly broad, or unduly burdensome or oppressive, and thus should not
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`be permitted.” Id. at *1 (quoting SSL Servs., LLC v. Citrix Sys., Inc., No. 2:08-cv-158-TJW,
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`2010 WL 547478, at *2 (E.D. Tex. Feb. 10, 2010)).
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`ANALYSIS
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`I.
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`AGIS’s Failure to Produce Relevant Materials from Past Litigations
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`The parties do not dispute that damages expert reports from other cases involving the
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 3 of 11 PageID #: 7178
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`same patents are relevant. For example, in response to Lyft’s Interrogatory No. 21 concerning
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`valuations of the asserted patents (discussed further below), Plaintiff specifically identifies its
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`forthcoming damages expert report as relevant to valuation. The sole dispute is whether the
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`burden to produce such materials with confidential material redacted outweighs their probative
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`value and whether Plaintiff’s delay and representations during the course of this litigations have
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`materially prejudiced Lyft such that an extension to the schedule is needed to attempt to collect
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`these materials from third parties.
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`On June 25, 2021, Lyft specifically requested production of documents from prior
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`litigations involving the asserted patents, following the Court’s Discovery Order requiring the
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`parties to produce all relevant documents without awaiting a discovery request. On October 12,
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`three weeks before close of discovery, Plaintiff agreed to produce some materials from previous
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`cases, but continued to withhold damages expert reports it claimed contained third-party
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`confidential information. To address Plaintiff’s concerns, Lyft obtained agreements from
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`previous defendants for Plaintiff to produce third-party confidential material under the Protective
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`Order entered in this case, but after securing these agreements, on the day before close of
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`discovery, Plaintiff informed Lyft that it no longer possessed or controlled the requested expert
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`reports. Plaintiff also confirmed that would not produce redacted versions of the damages expert
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`reports from the Google, Waze, and Samsung lawsuits.
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`In light of the undisputed relevance of the damages expert reports within Plaintiff’s
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`control, Lyft moves the Court to compel production of redacted damages expert reports
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`concerning any of the asserted patents within in Plaintiff’s possession or control and in light of
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`Plaintiff first disclosing in the final days of discovery that it no longer had damages expert
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`reports from certain cases, an extension of discovery for the limited purposes of attempting to
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`obtain these materials from third parties.
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`This and other courts have confirmed both the relevance of past litigation materials and
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`the reasonableness of redacting confidential information rather than refusing production. See,
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`e.g., Huawei Techs. Co. v. Huang, 2018 WL 3862061, at *5 (E.D. Tex. Aug. 14, 2018) (ordering
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`production of documents in a “reasonably redacted format” to address concerns of confidential
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`information); Ford Motor Co. v. Versata Software, Inc., 316 F. Supp. 3d 925, 943 (N.D. Tex.
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`2017) (rejecting argument that redacting expert reports was unduly burdensome). 
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`II.
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`AGIS’s Failure to Provide Sufficient Deposition Time with Named Inventor and
`Designee on Over 170 30(b)(6) topics
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`Mr. Beyer is the named inventor on all five of the asserted patents in this case, and was
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`designated by Plaintiff to cover nearly all of Lyft’s 30(b)(6) topics—over ninety topics for
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`Plaintiff and over eighty topics for affiliated company AGIS, Inc. The topics on which Mr. Beyer
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`was designated covered an enormous breadth of subject matter, including the development of
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`AGIS’s products, sales and marketing of AGIS’s products, validity of the asserted patents,
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`priority dates of the asserted patents, corporate structure of Plaintiff and its affiliates, conception
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`and reduction to practice of the alleged inventions, secondary considerations of non-obviousness,
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`licenses of the asserted patents, document preservation and retention, pre-suit investigation of
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`Lyft’s products, allegations against Lyft in Plaintiff’s complaint, and financial operations of both
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`Plaintiff and AGIS, Inc. Plaintiff allowed only ten hours of deposition time with Mr. Beyer for
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`defendants Lyft, Uber, and T-Mobile combined—giving each defendant just 3.3 hours to cover
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`his 30(b)(1) deposition and over 170 30(b)(6) topics. Defendants agreed to proceed with an
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`initial ten hours, while objecting to the time restriction and agreeing to meet and confer with
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`Plaintiff for additional time.
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`Unsurprisingly, Mr. Beyer was unprepared to address many of the over 170 topics that he
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`was designated to cover—stating, for example, that he did not know when AGIS, Inc. was
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`profitable and that he did not know details about AGIS’s product demonstrations or when
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`products were launched. Mr. Beyer talked slowly and regularly fell into telling literal war stories
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`rather than answering the questions asked. As a result, defendant Uber had not finished
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`questioning Mr. Beyer at the end of the initial ten hours and Plaintiff’s counsel refused to allow
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`further questions. To date, Lyft has not asked Mr. Beyer a single deposition question despite him
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`being designated on nearly all of the 30(b)(6) topics served by Lyft, including some topics served
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`solely by Lyft. Plaintiff only offer of an additional three hours of deposition time with Mr. Beyer
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`on a limited number of topics to be shared by all three defendants is insufficient.
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`In light of Plaintiff’s refusal to offer a reasonable amount of additional deposition time
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`with Mr. Beyer—the named inventor on all asserted patents and the designee on over 170 topics
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`covering nearly every aspect of the case—Lyft respectfully moves the Court for one additional
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`day to depose Mr. Beyer in his individual capacity, on the over ninety 30(b)(6) topics for
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`Plaintiff, and on the over 80 30(b)(6) topics for AGIS, Inc. Although some of the testimony
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`elicited by co-defendant Uber will be applicable to Lyft, there are still substantial subject areas
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`where time did not permit questioning to occur, including, for example, the factual basis of
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`Plaintiff’s allegations against Lyft, the priority dates of the patents, the advantages of the asserted
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`patents over prior art or non-infringing alternatives, marketing and advertising of AGIS’s
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`products, secondary considerations of non-obviousness, document retention and preservation,
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`and AGIS’s relationship with Christopher Rice, a co-inventor who has not yet been deposed.
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`This and other courts have found similar requests reasonable. See, e.g., Genband US LLC
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`v. Metaswitch Networks Corp., 2:14-cv-00033-JRG-RSP (E.D. Tex. May 21, 2015) (granting
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`motion to compel additional deposition time for witness designated in multiple capacities); Kress
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 6 of 11 PageID #: 7181
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`v. Pricewaterhouse Coopers, LLP, No. 2:08-cv-0965 LKK AC, 2013 WL 2421704, at *4 (E.D.
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`Cal. June 3, 2013); In re Blue Cross Blue Shield Antitrust Litigation, No. X2:13-cv-20000-RDP,
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`2017 WL 10410066, at *2-3 (N.D. Ala. Apr. 25, 2017); JSR Micro, Inc. v. QBE Ins. Corp., No. C-
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`09-03044 PJH (EDL), 2010 WL 1338152, at *6 (N.D. Cal. Apr. 5, 210) ; Indianapolis Airport
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`Authority v. Travelers Property Cas. Co. of America, No. 1:13–cv–01316–JMS–TAB, 2015 WL
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`4458903, at *5 (S.D. Ind. Jul. 21, 2015).
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`III. AGIS’s Failure to Respond to Lyft’s Interrogatories
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`A. Lyft’s Interrogatory No. 1
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`Lyft’s Interrogatory No. 1 is straightforward—“Identify all Persons who would
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`financially benefit from a recovery by AGIS in this lawsuit.” This request is relevant to at least
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`the hypothetical negotiation and bias. Instead of answering this question, AGIS provides a
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`summary of its allegations against Lyft unrelated to financial benefit and citations to documents
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`spanning over seven thousand pages. Ex. A. It is not clear which persons or entities identified
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`within these documents would financially benefit from a recovery by AGIS in this lawsuit, and
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`AGIS’s response improperly applies Rule 33(d), because the burden to ascertain this information
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`from the large volume of cited documents would be much higher for Lyft. In a supplemental
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`response served hours before close of discovery, Plaintiff again dodged the question by listing
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`the shareholders of Plaintiff’s parent rather than all those who would benefit financially.
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`B. Lyft’s Interrogatory No. 2
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`Interrogatory No. 2 seeks an identification of communications with Third Parties
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`regarding the asserted patents. This is relevant to at least Plaintiff’s assertion of the patents,
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`valuation, and licensing. Despite initially providing no substantive response to this interrogatory,
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`Lyft learned through other avenues of discovery that Plaintiff (or its predecessor) had reached
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 7 of 11 PageID #: 7182
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`out to companies and government agencies seeking licenses, that a sale had been contemplated,
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`and that analyses of the patents had been requested. In a supplemental response served hours
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`before close of discovery, Plaintiff selectively identified an incomplete list of third parties to
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`whom Plaintiff discussed its patents that is inconsistent with testimony provided by Plaintiff.
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`C. Lyft’s Interrogatory No. 8 and 15
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`Interrogatory Nos. 8 and 15 seek an identification of when the LifeRing was publicly
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`disclosed, used, sold, or offered for sale and associated revenues, costs, and profits. This
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`information is relevant to at least the validity of the asserted patents (especially in light of alleged
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`priority dates years apart), value of the alleged inventions, whether the inventions drive
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`consumer demand, and profits associated with the alleged invention. In its response, Plaintiff
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`incorporates its response to Interrogatory No. 4 which concerns priority dates and does not
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`discuss the public disclosure or sale of products embodying the alleged invention. In a
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`supplemental response served hours before close of discovery, Plaintiff identified four and a half
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`pages of produced documents that it purports to be responsive under Rule 33(d), but because the
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`burden for Lyft to ascertain this information from the large volume of documents would be much
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`higher than for Plaintiff, the use of Rule 33(d) in this manner is improper.
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`D. Lyft’s Interrogatory No. 11
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`Interrogatory No. 11 seeks a description of Plaintiff’s document retention and
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`preservation processes. This information is particularly relevant since AGIS has been in near
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`continuous litigations involving its patents since 2017, and Lyft recently learned that certain
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`materials from past lawsuits have not been preserved. Plaintiff’s only response is that it “has
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`taken reasonable steps to preserve and retain relevant documents and information,” but in
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`discussing with Plaintiff’s counsel it became apparent that preservation efforts may be
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 8 of 11 PageID #: 7183
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`insufficient. In a supplemental response served hours before close of discovery, Plaintiff sought
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`to avoid a substantive response by answering on behalf of AGIS Software and not AGIS Inc.
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`despite heavily relying on information from AGIS, Inc. throughout its responses. Plaintiff cannot
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`use its corporate structure as both a sword and shield. To the extent it intends to rely on evidence
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`from AGIS, Inc. to support its case, it must confirm relevant materials have been preserved.
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`E. Lyft’s Interrogatory No. 18
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`Interrogatory No. 18 seeks an identification of the written description support for the
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`elements of each asserted claim. This is relevant to at least each claim’s priority date and the
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`scope of each claim, and Plaintiff provided no substantive response until hours before close of
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`discovery, when Plaintiff provided an incomplete response limited to certain claims elements for
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`the ’724, ’728, and ’970 Patents and improperly listing huge swaths of specifications as
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`providing the alleged written description for narrow claim elements.
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`F. Lyft’s Interrogatory No. 21
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`Interrogatory No. 21 seeks an identification of any valuation of the asserted patents. This
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`is relevant at least to the determination of damages, and Plaintiff only cited its forthcoming
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`damages expert report, confirming the relevance of damages expert reports from the Google,
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`Waze, and Samsung within Plaintiff’s control as well as previous expert reports that have not
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`been preserved.1 As discussed above, any damages expert reports within Plaintiff’s control,
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`should be identified and produced with appropriate redactions.
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`CONCLUSION
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`For the foregoing reasons, Lyft respectfully requests the Court grant Lyft’s motion.
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`1 Plaintiff’s counsel confirmed destruction of previous valuations provided in past expert reports.
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 9 of 11 PageID #: 7184
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`Date: November 3, 2021
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`Respectfully submitted,
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`/s/ Jeremy J. Taylor
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`Jeremy J. Taylor
`Sarah J. Guske
`Arya Moshiri (Pro Hac Vice)
`Baker Botts L.L.P.
`jeremy.taylor@bakerbotts.com
`sarah.guske@bakerbotts.com
`arya.moshiri@bakerbotts.com
`101 California St., Suite 3600
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Facsimile: (415) 291-6300
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`Danny David
`Michelle J. Eber
`Baker Botts L.L.P.
`danny.david@bakerbotts.com
`michelle.eber@bakerbotts.com
`910 Louisiana Street
`Houston, TX 77002
`Telephone: (713) 229-1234
`Facsimile: (713) 229-1522
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`Kurt Pankratz
`Bethany R. Salpietra
`Megan LaDriere White
`Baker Botts L.L.P.
`kurt.pankratz@bakerbotts.com
`bethany.salpietra@bakerbotts.com
`megan.ladriere@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
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`Jennifer C. Tempesta
`Baker Botts L.L.P.
`jennifer.tempesta@bakerbotts.com
`30 Rockefeller Plaza, 44th Floor
`New York, NY 10112
`Telephone: (212) 408-2571
`Facsimile: (212) 259-2571
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 10 of 11 PageID #: 7185
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`Lauren J. Dreyer (Pro Hac Vice)
`Baker Botts L.L.P.
`lauren.dreyer@bakerbotts.com
`700 K Street NW
`Washington, DC 2000
`Telephone: (202) 639-7823
`Facsimile: (202) 639-1153
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`Brianna Potter (Pro Hac Vice)
`Baker Botts L.L.P.
`brianna.potter@bakerbotts.com
`1001 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 739-7556
`Facsimile: (650) 739-7656
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`Deron R. Dacus
`The Dacus Firm, P.C.
`ddacus@dacusfirm.com
`821 ESE Loop 323, Suite 430
`Tyler, Texas 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 581-2543
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`Attorneys for Defendant Lyft, Inc.
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`Case 2:21-cv-00072-JRG-RSP Document 199 Filed 11/03/21 Page 11 of 11 PageID #: 7186
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have consented
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`to electronic services are being served with a copy of this document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) on this the November 3rd, 2021.
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`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(h) and (i), I certify that on November 3, 2021, counsel for
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`Lyft conferred with Counsel for Plaintiff, who stated Plaintiff opposes the foregoing motion.
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`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
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